Is a parked page considered "commercial use" under US Trademark law?

[steveatvillas]

Hello all.

I need an answer to a very specific issue that has been brought to my attention...

Under Federal US Trademark Law (NOT UDRP) is a monetized/parked domain considered use in commerce?

I am told that current case law does not support this interpretation, even though it seems counter-intuitive to me.

I've read through the appropriate sections of the Lanham Act that define commercial use, but I can't find any citations or further info that directly apply to monetized/parked domains. I think I need to look at how the courts are interpreting monetization/parking.

If anyone can steer me in the right direction to find some precedents or refinements to the code IN RE this, I would be most grateful.

Again, to be clear, I'm interested in a definition/interpretation of the US Trademark Law as to what constitutes "use in commerce", not UDRP panels' decisions.

Thanks in advance,

Steve

 

[Theo]

Is your question related to obtaining a trademark, citing commercial use? Or about defending a domain's ownership from being contested?

 

[steveatvillas]

Hey Theo.

Neither, actually.

I own a Non-US trademark and a domain of the same term, and I want to apply for USPTO protection. I am being told that unlike other jurisdictions where a parked domain does constitute "use in commerce", the same does not apply under US trademark law.

Therefore, a domain that is parked is not considered a bona-fide commercial use, and the USPTO application may fail. In other words, the site must be developed and offer a bona-fide good or service, not links to other sites.

It seems to me that if I am earning revenues via PPC, this is a use in commerce. But, until I can find a clear and correct interpretation, I'm just guessing, and my logic may very well be faulty.

 

[theinvestor]

Steve,

If the revenue is worthwhile...and you want USPTO protection. I would just develop a mini site with google ads. Problem solved and revenue won't change.

 

[steveatvillas]

Thanks for that, I've already contemplated this if it's the only way to do it.

But I'd still like to know if this really is the case. It's more than a benefit/cost thing, and I can't seem to find any answer one way or the other.

Maybe a few court cases where this issue has been disputed, or further legislation to refine what constitutes "use in commerce"?

 

[jberryhill]

Word Mark CLUBDICE.COM
Goods and Services IC 035. US 100 101 102. G & S: Advertising and directory services, namely promoting the services of others engaged in providing online gambling services, by providing a directory of gambling service providers, placing advertisements in such directory, and providing such directory via a global computer network. FIRST USE: 20020619. FIRST USE IN COMMERCE: 20020619
Mark Drawing Code (1) TYPED DRAWING
Serial Number 76423350
Filing Date June 20, 2002
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition March 11, 2003
Registration Number 2721033
Registration Date June 3, 2003
Owner (REGISTRANT) Name Administration Inc. CORPORATION BR.VIRGIN ISLANDS Box 10518 A.P.O. Grand Cayman CAYMAN ISLANDS
Attorney of Record John B. Berryhill
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

 

[steveatvillas]

Thanks John:

In the interim I've been reading up on the commercial-use-in-commerce requirement not only as defined in The Lanham Act, but in numerous cases I've dug up.

And yep, ClubDice.com sure looks like a parked page to me, by gosh.

I know that Name Administration pretty much runs their own parked operation, so may I infer that this holds for other commercial parking companies like Fabulous, SEDO, TrafficZ, etc.?

The answer seems brutally obvious to me. And it looks like I received some misdirection, inasmuch as I am the holder of the mark, and the owner of the domain as well.

Thanks again.

Steve

 

[allroundguy]

Whatever the name under wich You operate,
TM-registered or not:

*** Have Revenue - Pay Tax ...***
Always.
There is no way out.
If You create an income stream, You are either employed or an entrepreneur.

USPTO and IRS and WIPO have each their own (basic) rules and (Court or other) rulings.
Parked pages are indeed basically not really full-grown commercial activity.
Revenue originated via parked pages does not come from the parked pages, but from the company that hosts the pages.
Advertisers pay that company, and they pay then Your affiliate %.
That's income, and the IRS is in Your downline ...

However, in many countries, if income is under a certain limit, it may be tax-free.
Domain parking usually returns only a few $'s, so tax upon that bit should not be a problem.
Hint: Setting up Your own page and selling banner space usually yields better returns.
You will need to pay more tax, then.
But You pocket more too ...
I love to pay tax.

 

[domaingenius]

Steve


Not long ago we were sued by a very large US corporation under the Lanham Act (cannot say anymore since signed confidentiality agreement) and in that they pleaded that the use of the domain for parking (PPC) was commercial use. Although this never went to trial the Judge did ,during our verbal conference calls, seem to accept that it satisfied the hurdle of commercial use, although it hasnt been put in writing anywhere as was all "settled".
I would say that it would be very very hard to try and sustain an argument that revenue obtained from PPC was not commercial use.

Regards

DG

Hello all.

I need an answer to a very specific issue that has been brought to my attention...

Under Federal US Trademark Law (NOT UDRP) is a monetized/parked domain considered use in commerce?

I am told that current case law does not support this interpretation, even though it seems counter-intuitive to me.

I've read through the appropriate sections of the Lanham Act that define commercial use, but I can't find any citations or further info that directly apply to monetized/parked domains. I think I need to look at how the courts are interpreting monetization/parking.

If anyone can steer me in the right direction to find some precedents or refinements to the code IN RE this, I would be most grateful.

Again, to be clear, I'm interested in a definition/interpretation of the US Trademark Law as to what constitutes "use in commerce", not UDRP panels' decisions.

Thanks in advance,

Steve

 

[jberryhill]

I would say that it would be very very hard to try and sustain an argument that revenue obtained from PPC was not commercial use.

Most folks who answer the question in the negative fail to take into account that advertising goods and services of others is itself a commercial service.

DNForum doesn't allow inline images, but take a look at this billboard:

http://www.zone5.com/images/clarksonTalkingBillboard.jpg

Do you see a trademark being used other than the one in the ad?

 

[Biggie]

Most folks who answer the question in the negative fail to take into account that advertising goods and services of others is itself a commercial service.

DNForum doesn't allow inline images, but take a look at this billboard:

http://www.zone5.com/images/clarksonTalkingBillboard.jpg

Do you see a trademark being used other than the one in the ad?

"LAMAR"

i was going to say, before you explained.... that google does the same thing as a parking page, in that it refers people to other sites with links.
if it is considered "commercial use" then so would a parking page.


imo...

 

[BELLC1]

I don't think "LAMAR" qualifies. The billboard is on a structure owned or leased by LAMAR, but the 12x40 space the billboard itself occupies is what the client rents, not the frame around it.

 

[Theo]

If I tattoo company names or even write them on my own skin with a marker and get paid for it, does this constitute a commercial use of my body that would allow me to trademark my entity?

 

[steveatvillas]

Yeah, the more research I do, and with the great, learned, comments from all of you it's becoming clear where the misinformation occurred.

1. If applying to USPTO directly, for protection of an existing use, the "commercial-use-in-commerce requirement" comes into play, if not applying for "intention to use".

2. It appears that the commercial-use-in-commerce requirement really becomes important in the event of a dispute between parties claiming the same or similar mark in same Class.

3. Most judges are allowing a wide breadth of interpretation as to commercial use.

4. It's abundantly clear that parked pages, even through an upstream parking company further using their upstream advertising provider (Google, Yahoo, etc.) are deemed a bona-fide use in commerce for the domain owner, in my case the Applicant for the mark.

5. In my case, I already have the mark in another jurisdiction, which, together with USA are signatories of the Madrid & Paris Agreements. As such, I will be applying for expansion of the mark according to international convention, and the "requirement" is subsumed in the original mark.

But, ya gotta admit, it is an interesting point for all of us, when it comes time to take the decision to TM our domains as business ventures.

 

[carlton]

... but the 12x40 space the billboard itself occupies is what the client rents, not the frame around it.

"Use in Commerce" = yes. I believe that is what Berryhill is saying. Whether owned or leased, your domain portal serves a commerical use acting as a vehicle for advertisers to display their products/services to consumers.

In other words, a "parking page" is actually a functional, commercially viable website providing business services exactly like the yellow pages, newspaper ads, tv station commercials, or a billboard. As a business advertising medium, there is no distinction from these other ones. The fact that Parked.com or other parking hosts provide the underlying technology does not diminish the legitimacy of your domain page displaying relevant advertisers. Yellow Pages is an aggregator of advertiser content, and so is every "parked" page ... no difference. The fact that some people don't like (or understand the value being offered in a parked page) is insignificant.

A domain ad page is a commercial enterprise with operational costs, revenue generation, a business model, etc. ("parking" is actually kind of a misnomer insinuating the domain is inactive).

If a domain ad page infringes on an established trademark, that is a completely seperate consideration that has no bearing on the discussion of parked pages as legitimate commercial use. Newspaper/TV/Billboard/Yellow Page ads cannot violate trademarks either so that problem in not particular to domain parking pages or relevant to an examination of "commercial use".

 

[steveatvillas]

I don't think "LAMAR" qualifies. The billboard is on a structure owned or leased by LAMAR, but the 12x40 space the billboard itself occupies is what the client rents, not the frame around it.

What JB is saying is that LAMAR is a trademarked provider of the commercial-use-in-commerce, in this case advertising space. It is quite likely that the advertiser used an ad agency to arrange for placement, collects payment, takes its commission and disburses the rest to LAMAR.

This is a direct analog of a monetised domain name, that is also trademarked. The owner of the domain has trademarked that name, and is further offering space on its site for advertisers, via an upstream provider of advertisers. Upstream provider charges the advertiser, pays the monetising company it's cut, monetiser pays the owner of the domain real estate.

And that, dear friends, is a use in commerce.

Q.E.D.

Although, given the dregs that we are being paid by our monetizing companies, it hardly feels like commerce!

 

[Theo]

The real question is, without an explicit rendering of services e.g. via a contract agreement or an actual point of sale, does the mere inclusion of ad feeds from a PPC provider constitute "commercial use"? If I stick ad banners in my yard does that make me a commercial services provider?

 

[domaingenius]

If I stick ad banners in my yard does that make me a commercial services provider?

I would say it would depend exactly what you were advertising ,for whom and on what terms.

DG

 

[steveatvillas]

Well, very broadly, according to the Lanham Act and later legislation and case law, if a fee was paid for a good or service it's a commercial use.

I'm not sure how to apply this to the banner in your front yard, though.

With monetizing companies, or even Google Adsense for Publishers, there is an agreement (TOS) as to the parties, and there is consideration ($) for a service performed.

 

[EnricoSchaefer]

Trademarks can be used by domainers willing to go on offense to protect and increase the value of their domains.

You would likely be able to educate an examining attorney at the USPTO that the parking page is use in commerce. The issue then becomes whether a judge would agree if it ever went to litigation. Just because the examining attorney agrees, does not mean you win that issue in court.

One key issue is whether you are using the domain name as a 'mark' to distinguish your goods and services in the market of "advertising and directory services." The other thing to be aware of is that generic or descriptive domains used in their descriptive sense are tougher to register, although most of those will describe a particular 'thing' or service, not advertising services in general.

Regardless, filing trademarks for your most valuable parked domains (1) adds monetary value (2) provides protection against UDRP or ACPA threats and (3) adds legitimacy all around. Domainers need to shift gears from attacking trademark laws (which won't likely change) to taking advantage of trademark law. We have posted previously on this issue "Of Domainers and Trademarks: Is it Time to Rethink the Bias Against Trademark Rights?."

With all the talk of developing domains, it is time for domainers to start thinking about using trademark law to their advantage. Yes, domainers can have trademark rights too. We live in a world where intangible property continues to become more important and more valuable. .... For those domainers willing to take the next step, development can actually create trademark rights in the domain. Those trademark rights can be transferred with the domain, adding value to the overall sale.