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Is this a legit way to use trademark type domains?

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DomainPairs

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I've just set up a site to list domains that I own which may have trade mark associations. Is this a sensible approach?

http://www.speedylists.com/

I believe that a list like this will be a useful service to the TM owners and provide me with a bit of traffic (not related to the TM owners).

I've only put one URL in this list at the moment, but I will add more if it looks like a sensible service.
 

draqon

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ummmm...maybe i am misunderstanding your intentions, but this seems like perhaps one of the riskiest, least logical things you can do. You are listing domains you own, and then specifically mentioning people whose trademarks might be infringed upon by those domains? Thats the legal equivalent of pointing a gun at your head.
 

DrWho

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Yikes! :eek: draqon is correct. :) Put up web content that is in no way related the TM name.
 

DomainPairs

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I wasn't sure about this, but Google and the telephone directory don't seem to be considered as infringing TMs.

I'm not competing with the tms, and I don't believe that I'm using the name in "bad faith". There are also multiple users of the same name. I thought that I may be in the same situation as a site like Google that listed TM URLs and had advertising on its pages.
 

draqon

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If i own a domain called Halls.com, and on my website i specifically mention the Halls Medicine Company that makes cough medicine, and they have a trademark on the word Halls, then I am indeed infringing on a trademark.

Google isnt infringing on anything cuz there is no company with the word Google as a trademark, that people would be misled into thinking they were reaching when they type google.com into their browser. Google and the phone book are making a legitimate use of their domain, while listing trademark owners whose marks are infringed by your domain, is not acceptable.
 

DomainPairs

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The web site is www.speedylists.com, and I think this is too generic to be trademarked.

Is the problem that I am using a URL that may have multiple trade marks from different companies as an alias? I'm not misleading the surfer, as I offer him a quick route to the site he is looking for rather than misdirecting him.

Can I infringe on all of the trade marks at the same time? If not, then surely no single one has precedence.
 

draqon

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speedylist.com is perfectly fine, but thats not the issue here.

What worries me is this site:

http://www.halms.com

At your Halms.com domain you list the owners of trademarks for the phrase "halm" and "halms" and then say, "you probably wanted to go to this companies site when you visited halms.com". That is not an acceptable use of a domain.
I cant register Cocacola.com and then put up a link that says "Click here to Visit Coca-cola Corporations Official Site".
 

DomainPairs

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Thanks for the replies Dragon.

I understand the CocaCola situation - that's a fairly unique name.

The halms situation is a bit different. It is a bunch of initials that are used by a number of unrelated sites. Surely an index of these sites would be a useful service to all concerned.

I'm also don't really understand the trademark situation. If it is OK for all these unrelated sites to use the same trademark (and I don't actually know if it is a trademark), why is it wrong for me to provide an index of these sites.

On a tecnical note - www.halms.com is aliased to the site www.speedylists.com. I don't know if this makes any difference - probably not considering the meaning of the word alias, but what if I used URL forwarding instead?

Sorry to be a bit thick here, but it seemed a waste to leave all these useful domains unused.
 

DomainPairs

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I've done a bit more research into this, and it seems there are a number of other sites that do the same thing. HelpMeFind for example. The difference is that they don't use referring names to get traffic.

I've also added another couple of entries

www.hilsea.com (Hilsea is a suburb of Portsmouth, England)
www.SnowEagle.com

I assume that these names cannot be trademarked.


The DNS pointers for the new aliases haven't resolved yet, the original link is OK though

http://www.speedylists.com
 

hiOsilver

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This is not really a legal opinion, as I am not an attorney. However, I think that what DomainPairs is doing is providing a legitimate service that benefits everyone. Also, there is the potential that one of the linked companies will decide that it wants the name and make an offer for it. As long as DP is not greedy (i.e. he keeps the price he would accept low compared to the cost to the TM owner to pursue litigation), then I think that there is not too much risk in what he is doing.

TrafficAvenue, now defunct, was actually doing this with other people's domain names. I listed my names on the TA site and directed the traffic to the site. When a buyer wanted my traffic, he would pay for it. When the traffic was not being used, I had a page up that included links to other sites, usually related to the domain name. TA took a % of the revenue when the name traffic was being leased.

In any case, I never heard from any of the parties that I was forwarding traffic to. Most people like to have traffic forwarded to their sites for free.

Speaking of CocaCola, I own wwwCocaCola.com. I did get a C&D letter from their attorneys. They were not even willing to reimburse me for nominal cost, not even reg fee. So, I refused to transfer name to them. I told the lawyers that I would simply let the name expire, so they agreed to leave me alone. I no longer reg names like wwwTRADEMARK.com, at least not obvious ones.

So, stay away from the big companies that own lots of lawyers and you should be able to provide a legitimate service and make a few bucks. Also, be prepared to respond to some C&D letters, and don't panic if you do receive one.
 

DomainPairs

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Thanks for that comment hiOsilver (nice nostalgic name there :D), it's started the new year off well for me. Everybody seemed so negative about my ideas. I'm not greedy, just ambitious. This means - be realistic about individual names, but do a lot of them.

I have got some names for the big litigious companies as well, but felt I needed to learn a bit before I used those.

What did you do with the traffic - did you just send it to a ppc program or did you try to work it. I thought that by having individual pages for each domain it gave me a chance to target the traffic.
 

crabby

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One might easily conclude it is an infringing use of someone else's trademark, on face value.

The point is, you'd probably lose the names in a UDRP.
 

DomainPairs

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The thing that I don't understand is this.

If there are 3 different companies using the same trademark, why don't 2 of them have their sites taken away from them. If they don't, then what is wrong woth a site that helps a surfer to chose between the 3.
 

draqon

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DomainPairs, it all boils down to the definition of "legitimate use" of the domain. If there are 3 companies that share a trademark, only one of them can own the domain at any time. That company is allowed to use the domain as long as it is making a fair and legitimate use of the domain to sell products or provide information about itself.

Listing companies that share the trademark is not a legitimate use because it is likely to spread confusion in the mind of visitors over who owns the domain. Therefore you would lose the WIPO UDRP.
 

DomainPairs

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I really am having problems with the logic of trademarks.

There is no confusuion over who owns the domain - I do at the moment. I also am assuming that the trademarks or other rights (it seems that should be rites these days) do not cover the provision of internet information lists.

It seems that the best approach is to do what I want and try to get out of any problems as cheaply and easily as possible. What I was hoping was that I could structure things to try to avoid these difficulties.

American trade mark law and registration seems to be getting to the point where one should have a warning on the intro page of a site saying that Americans are not allowed to enter because of trade mark restrictions.
 

hiOsilver

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My first experience with this was when I owned ChicagoMagazine.com. I did not know that there was a "Chicago Magazine" at the time (they were using ChicagoMag.com for their website). When I started getting a lot of hits, I put up a page with some banner ads, including one to my commercial site, www.hiosilver.com . Then I found Chicago Magazine website. So, I added a link to their site, figuring that I was doing them a favor.

Next I received a C&D from their lawyer. I told them that I spent $150 regging the name and developing the site. They paid me $150 and I transferred the name. The C&D letter included the threat of the $100,000 damages for violating the anti-Cybersquatting act. I pointed out that I was not acting in bad faith. In other words, no big deal.

Now, when I was setting up pages via TrafficAvenue, it worked like this:

Let's say that I create a page for NewJerseyMagazine.com. I could have links to: njmonthly.com, njwedding.com, newark.com or whatever. Along with each link was a brief description about each linked site.

When the traffic was not being purchased, the directory page I created appeared, along with some info about TrafficAvenue.

I derived revenue by having someone purchase the traffic (typically at rates from $.01 to $.02 per click through. So, perhaps a bookstore in New Jersey wanted the traffic, and when anyone typed NewJerseyMagazine.com into their browser, they went directly to the bookstore site.

I think that you should try what you want to do, but just use good judgment and don't be greedy. For example, I sold TampaBayMagazine.com to Tampa Bay Magazine for $1000, even though the owner of the magazine was an attorney. He was glad to get the name for $1000, as he could not hire a TM attorney for that small sum. Also, he was in dispute with a web developer who had put up a site for his magazine at TampaBayMag.com. So, I did him a favor by not letting the web developer get ahold of the name. After I agreed to sell to the magazine for $1000, the web developer offered me $2000 for the name. I refused.
 

draqon

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DomainPairs,

you know who owns the domain cuz you bought it, and I know who owns it because I can use 'whois'. But the average internet surfer who types in Halms.com certainly does not know that you own it. If he sees a list of companies that have Halm or Halms trademarks, quite possibly he will think that those companies own the domain. This mistake might seem harmless to you, but companies who want the domain can argue that you are infringing on their trademarks.

As a domain owner, its in your best interest for you to make it seem that you have never heard of any companies that share a similar name to your domain.

Your idea of using referral URL's to gather traffic and then redirect visitors to related sites is a cool idea, but it doesnt stand on solid legal ground. If you insist on doing it, at least make sure there is very clear text that says that you are not related to any of those companies. That will help you...slightly.
 

Ari Goldberger

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This is a very interesting approach you have. It certainly carries risks. This opinion is NOT my advice to undertake any approach, to continue what you're doing or to abandon it.

Here's my quick view of the how it plays under the UDRP.

Under the UDRP, the question is whether or not the registration of a non-common word domain name, which is used to list sites of parties who have trademarks for the name, constitutes bad faith registration and use. I think the question is whether or not you are using the name to confuse users looking for the tm site. I agree that your site does not, per se, confuse, but the tm owner may bring up the concept of initial interest confusion -- meaning users are confused for a short time. However, again, you correct that by giving the user the referrer URL. Certainly, however, by putting up those URLs you are waiving any possible argument that you do not have knowledge of the trademark owner, and are allowing them to make the argument that you are, essentially, profiting off their mark. If the tm is a unique mark, like xerox, I think it is clear you can't register xerox.com and redirect to their official site, and make money off of pop-ups. The question you ask is whether it's ok if there's more than one tm holder.

But, then there's the case of ralph-lauren-polo.com which remarkable went in favor of the domain owner, who did not even file a response! Because the respondent had pointed the domain name to Ralph Lauren's web site (the complainant), the panel held that it was not being used in bad faith.

http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0148.html

Nevertheless, I think most panelists would see this as bad faith use, likely finding that you are confusing users to benefit commercially, despite the fact that you are not really confusing anyone in the end. They'll just see it as dirty business, I think, if the name is not a common word.

I would disagree, however. In fact, where there are multiple tm owners, the argument can be made you help everyone since, if the domain were owned by just one of the competing tm owners, they would get all the traffic at the expense of others and the consumers looking for those other sites.

As for legitimate interest, the question will be whether or not you can use a domain name that is not a common word for a bona fide service. I think many panelists would say no. If the domain name, however, is a common word or geographic term, I think there's a good argument you have a legitimate interest.

In conclusion, I agree with those who consider this to be a very risky application. Although very clever, and probably not a violation of the UDRP if it is strictly applied, it will certainly invite trademark holders to attack you. You cannot plead ignorance since your use admits knowledge of the marks. Of course, directories list sites, but it is the domain name that raises the obvious problem. Where a case is brought, Panelists will likely rule in favor of the tm owner where the domain name does not incorporate a common word or term. However, you can always point to the Ralph Lauren case for help.

ONe twist on your approach is to simply have a statement on the sites that invites parties to place a free directory listing on the URL. This has multiple benefits:
1- tm owner consents to use and won't be able to sue you;
2- the tm owners consented use can help you argue bona fide use and, thus, legitimate interest
3- tm owner will be happy with listing and maybe place your URL on its literature increasing your traffic. (along this line, perhaps, you could offer third-level or subdomains.

Just some random thoughts. I cannot recommend any strategy. These all contain substantial risks because of the value of domain names incorporating trademarks to the corresponding tm owners. They will often spend money on litigation to get these valuable assets, and you will be forced to spend money to defend them.
 
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