I hate to disagree with John. I have a problem with the idea of snapping up expired trademarked domain names as a legitimate business practice.
Well, I merely posted a quote. Whether there is, or is not, a trademark, and whether the domain is, or is not, used for competitive G&S obviously makes a difference.
One can fail to renew one's domain name, just as one can fail to renew one's federal trademark registration, or fail to pay maintenance fees for a patent, or fail to pay one's rent on a store in the shopping mall.
Now, if you don't renew the lease on your shoe store, the landlord will evict you, and I can certainly move into the space and open a new shoe store. We see this all of the time in the real world.
Maintenance of rights requires some diligence on the part of the person who claims those rights.
I probably should have quoted the larger context, and note the bold portion:
http://domains.adrforum.com/domains/decisions/114434.htm
Respondent waits for domain names incorporating common words, generic terms, short terms and useful phrases to be released after their registration has lapsed. Then Respondent immediately registers those names and uses each of them to host a generic portal web site, presumably gaining revenue from banner advertisements and affiliate links. This activity has not been found to be bad faith registration or use under the UDRP unless the selection of the domain name and the manner in which it is used are related to its correspondence to Complainant's trademark. It has been held that a party is entitled to conduct a business of capturing generic domain names which become available in the marketplace, often through failure to renew registration. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001); First American Funds v. Ult. Search, D2000-1840 (WIPO Apr. 20, 2001); GLB Services Interactivos S.A. v. Ultimate Search, Inc., D2002-0189 (WIPO May 29, 2002).
One recent example that crossed my desk is that of a top-five global pharmaceutical company which allowed the generic name of <drug>.com to expire. They are the leading manufacturer of this drug, which they sell under a particular trademark, but the domain name in question is on the INN list (International Non-Proprietary Name) of pharmaceuticals. It is, by definition, a generic term.
First, their in-house counsel sent a threat. I told him to go pound sand. Then, they went through two successive outside firms to send threats, and I've told them both to go pound sand.
In order to allow a domain name to expire, you have to ignore repeated renewal notices from the registrar, and then fail to take advantage of the redemption period during which the domain is de-activated and you are the only person on the planet with the right to renew it. It takes a determined sort of lapse of diligence to "inadvertently" fail to renew a domain name. Most of the time, they will claim that the renewal notices weren't received because the contact information was stale. Translation: they were in breach of the registration contract terms requiring them to maintain current and correct contact data, and thus were not entitled to registration of the domain name during the period their data was out of date.
If I want to keep trespassers off of my land, it is up to me to put up signs, a fence, etc. It is up to me to go after trespassers. It is not the rest of the world's business to police my rights.
As long as we're on the subject of fish, consider:
http://www.arb-forum.com/domains/decisions/94870.htm
<keywestseafoodmarket.com>
Now, whether "Key West Seafood Market" is, or is not, distinctive of any particular seafood market in Key West, is not a simple question. Since it was a default by the Respondent, the panelist went ahead and ordered "cancellation" of the domain name.
This was back in the days when I would pick up UDPR cancelled names, and turn them into tombstones to the stupidity of "cancellation" as a UDRP remedy.
So, I put up one of my "UDRP Cancelled Names" pages:
http://web.archive.org/web/20001206203000/http://www.keywestseafoodmarket.com/
A few months later, I was contacted by the attorney for the Key West Seafood Market people. She was very nice, and I agreed to transfer the domain name to her client, having had my chuckle. I changed the page to this:
http://web.archive.org/web/20020604032141/http://www.keywestseafoodmarket.com/
Then, I set the whois data to that of a domain name already registered by her client, and sent them complete instructions for transferring the domain name to themselves. After a LOT of back-n-forth email over a period of several months, it became clear that they were simply too ignorant of the basics of registering a domain name to competently take control of the name. I'm not saying they were objectively "stupid" in any sense, as nobody is born knowing how to manage a domain name, but it was clear that it was like trying to hand a set of car keys to someone who didn't know the first thing about driving a car.
Another thing to keep in mind with these "inadvertent expirations" is that domain names can be registered for terms of TEN FREAKING YEARS!
What idiot... What utter clueless moron... invests a pile of money into his business, buys or leases property, enters into secured loans on inventory for years at a time... and then waits until the last minute to renew his/her domain name on a year-to-year basis.
There just has to be some level at which a domain registrant is held to a standard of care for looking after their own interest.
Am I entitled to drive down the street looking for pedestrians to run over? No. Am I liable for running over some guy who gets drunk and then dashes out into the highway in front of my car in the middle of the night? No.
I have seen people work dawn to night poring over lists of dropping names, and carefully managing a budget for acquiring them, targeting them, and maintaining them. People who pop up out of the woodwork with "I'm too stupid to renew a domain name, even when there are several second-chances" are a time-consuming and distracting nuisance. On top of that, the volume of such claims which are not entirely honest, requires time to evaluate and sort out the good, the bad, and the ugly. Some of these people behave as if they have the right to offload the burden and cost of their own irresponsibility upon others, and when they behave arrogantly and imperiously about it, then, absolutely I set the flamethrower on flambe' to a crispy crunch.
SamsSaltwaterFish.com
This is the example given for this post, I do not see this in the dictionary. Even though someone may say it is "generic", it can in fact be a TM.
Bingo. That is THE biggest problem encountered in DNForum threads on TM issues generally - whether or not "X" is "generic". The term "generic" has a very narrow definition in trademark law; much narrower than what quite a few DNForum posters seem to grasp.
"Sam's Saltwater Fish" is not generic. It might, or might not, be distinctive, depending on how many people named Sam are using their name as an indicator of source or origin of goods and services relating to saltwater fish in a relevant market.
I guess what's got me going here are situations involving what are called "arbitrary" marks. These are words which have a generic meaning, but are arbitrarily applied to G&S in a non-generic or descriptive sense. My favorite example is "Shell" for petroleum products. It's one thing to say "You shouldn't re-register
trademarked names" but that ignores that a
name is
half of what makes a
trademark. A trademark is:
(Name) + (Goods and/or Services)
So, if Shell Oil allows shell.com to expire, and you pick it up and use it to sell seashells, you have
every right to do that, regardless of whether "SHELL" is a trademark, and a very strong and famous one, for petroleum products.
