Avoiding Legal Issues When Choosing A Domain Name

Kimla

Member
I have seen a lot of people asking questions and tips on how to avoid legal issues when registering a domain. So, I ran across this article today and thought I'd share it with you all.
 

Swisslist

Member
Couldn't a person take 30 minutes out of their day and run the domain name through search bars? Use every web browser you can think of with every extension you can think of, and that should be good enough to see if yours is in use.
 

JackD

Active Member
Country flag
Just a domain name being registered and in use somewhere else do not make it a legal infringement is you use the same domain name in a different extension. If the name is not trademarked, you should have no legal issues at all. If the name is trademarked, you still might be able to use it in a different category than that being used as the trademark. Hence Apple is a TM for a tech company and they will defend their TM vigorously but Apple Market which is also trademarked can use the word Apple in their food outlet market and have no problems. That is why it is very important to use a Trade Mark search for domain names and if you think there may be issues, do a UDRP search to see if how the trade mark is defended. Of course I only spend this amount of time on Domain Names that are very valuable. On a domain name that will only sell for $xx or low $xxx, it is not worth the time spent for this kind of in-depth research.
 

marsh

Active Member
Quite some insight @JackD. Does it therefore mean that if a name is trademarked, it can still be used, but with a different extension? I guess this would only bring issues if two entities were competing in the same industry and targeting the same demography. I don't spend too much time on research though.
 

JackD

Active Member
Country flag
issues if two entities were competing in the same industry and targeting the same demograph
This is correct. If the domain was identical with different extensions but targeting the same audience, then you could have problems with the TM holder.

I usually search http://www.wipo.int/branddb/en/ for TM's and many times there are multiple TM's but in different categories and in different countries. Different categories is the key. Still not fool proof but it will help once you get use to navigating the website.
 

Akbar

New Member
Country flag
so I saw few domains like feast.in, breeze.in, pears.in in the whois record they show trademark details... so the domains which show the trademark details are a no go?
 

JackD

Active Member
Country flag
It requires more investigation if it shows TM data. According to WIPO there are 7 TM registrations of Breeze (the only one I checked), all in Japan and representing their "Marks" or Logos. So if you do not copy their Mark, you should be okay. I also check other extensions. There are 28 other extensions registered. Of the nine that I looked at, 2 resolved to different companies not Trademarked, 2 didn't resolve and 5 were for sale. Based on this, I would have bought Breeze.in if it were available.

Disclaimer: The information given here is my opinion. I am not a Trademark lawyer.
 

JackD

Active Member
Country flag
One other thing I would like to mention here. I follow UDRP disputes regularly to try to keep myself up to date on how the process works (just in case). In the last two months there have been two domain sales above $50,000 each from high volume sellers to new owners. In one case a UDRP was filed within 6 weeks of the sale completing and the other was filed 3 months of the sale completing. In both cases, the buyers lost the disputes, the domains were transferred to the TM holders and the buyers lost their money and their domains. So if you are looking at purchasing a high dollar domain (and only you can say what high dollar is to you) please do your research first and if still unsure, contact a TM lawyer for his/her advice. Last year I bought 5 domains with what I thought was a common noun in the name. The TM holder emailed me 3 months later with a cease order to stop using the names (they didn't want them, just wanted me to stop using them). Since they were hand regged, I was only out $50 as I dropped them immediately. I normally do not do a lot of research for a domain I hand reg.
 

Akbar

New Member
Country flag
Hmm thanks for sharing.. should really do a little research... I din't no all about this.. Thanks Jack!
 

ritchie

Active Member
Last year I bought 5 domains with what I thought was a common noun in the name. The TM holder emailed me 3 months later with a cease order to stop using the names (they didn't want them, just wanted me to stop using them). Since they were hand regged, I was only out $50 as I dropped them immediately. I normally do not do a lot of research for a domain I hand reg.
Wow, but what reason did the TM holder have for that and in any case, was there any chance of you challenging this request? Quite some insight in here because I think most people don't do a lot of due diligence when it comes to domain names. Thanks for sharing all that info.
 
Last edited:

JackD

Active Member
Country flag
what reason did the TM holder have for that and in any case, was there any chance of you challenging this request?

The TM was "Realtor". I registered 5 domains with the word "realtor" in the domain name. To me it was a generic name and I never thought to check for a TM. My mistake. The reasons they gave for challenging me were that I was not a licensed realtor and did not belong to a realtor association. My use of the word realtor could be very misleading to anyone looking for a licensed realtor. I checked the UDRP history for any cases filed on behalf of the Realtor Association and found that they aggressively defend their trade mark and that they win. They also have lawyers on staff who will sue for damages at no additional cost to themselves. They may not be able to prove much damage but seeing as I would have to hire a lawyer to defend myself in court and the fact that I would lose the domain name anyway, I decided that the best action was to drop the domain names. I could my blessings, I only lost $50. If I had fought it and lost, the cost could have been a lot more.
 

ritchie

Active Member
The TM was "Realtor". I registered 5 domains with the word "realtor" in the domain name. To me it was a generic name and I never thought to check for a TM. My mistake. The reasons they gave for challenging me were that I was not a licensed realtor and did not belong to a realtor association. My use of the word realtor could be very misleading to anyone looking for a licensed realtor. I checked the UDRP history for any cases filed on behalf of the Realtor Association and found that they aggressively defend their trade mark and that they win. They also have lawyers on staff who will sue for damages at no additional cost to themselves. They may not be able to prove much damage but seeing as I would have to hire a lawyer to defend myself in court and the fact that I would lose the domain name anyway, I decided that the best action was to drop the domain names. I could my blessings, I only lost $50. If I had fought it and lost, the cost could have been a lot more.
It was really wise of you to check how the previous cases had ended. At times, a lot of businesses fail to do this background check and end up using a lot of money to defend the case, rather than let go. Still, I don't understand why anyone not using a particular domain name would stop you from using it?
 
Similar threads
Thread starter Title Forum Replies Date
Prashant Sharan Josh Reason's podcast: On avoiding stolen domains Resources 0
Prashant Sharan Ethos goes the legal way to save .Org deal Registrars 0
Prashant Sharan Do Read: SiteLock and GoDaddy in a legal tussle Registrars 0
Prashant Sharan Keywords In Trend: keto, property, trial, legal, litigation, custody Resources 0
Prashant Sharan Owner of Zon.Tools follows a legal route to get ZonTools.com Legal Issues and Dispute 0
J Intellectual Property Legal Services Resources 0
JulienJ Weeds, Inc. might have gotten better legal advice Legal Issues and Dispute 0
domainking131 $65,000 legal fees awarded in reverse domain name hijacking case Legal Issues and Dispute 0
domainking131 Bitcoin ‘Will Not Become Legal’ In India Without ‘Monitoring,’ Says Chief Economist Cryptocurrencies 0
ritchie The legal right to sell Websites 1
dibon Legal costs Legal Issues and Dispute 4
marsh Hiring legal help Legal Issues and Dispute 5
Tigger dotgay legal battle Legal Issues and Dispute 0
domainking131 Domain Development Legal Mistakes with Enrico Schaefer Business and Economy 0
domainking131 How Legal Robot picked its name and bought LegalRobot.com Non-Indian Domains 0
W Only 14 TLDs Are “Legal” in China (Not.COM The Lounge 1
domainking131 Google Files Complaint for Google-Legal.com Domain Name Non-Indian Domains 0
domainking131 Controversial .SUCKS Lashes Out At ICANN Threatening Legal Action Non-Indian Domains 0
domainking131 1st day new gTLD totals: .Money 327, Legal 297, .Memorial, .Coach 123 registrations New GTLDs 0
domainking131 Five other new gTLDs delegated: .Money, .Legal, .Coach and 2 more New GTLDs 0
H Is it legal to trade .in domains in India ? Please answer if you know. General Indian Domain Name Discussion 3
domainking131 Yoyo.email which registered 4,000 .Email domains faces legal problems New GTLDs 0
ImageAuthors $25 ... Beneficiaries.info ... Inheritance, Legal, Financial ... People want INFO Non-India Related Domains 0
CyberKing NamesCon - Discussion on Legal Issues as in DNW - has a India angle mentioned Legal Issues and Dispute 0
M Legal .COM domain - Single Keyword, 13 years old - Low Reserve! External Auctions 0
domaining123 Indian domains: legal aspects Legal Issues and Dispute 2
D Legal Assistant /OnlineSchooling Domain Appraisals 0
jedi Domain *******Legal HEMP domains ***** Non-India Related Domains 0
U Premium Legal, Business, and niche .COM domains for sale Non-India Related Domains 0
C cybersquattiing? possibly legal problem? Legal Issues and Dispute 0
S Please help me weather its legal or not Legal Issues and Dispute 4
Z All Gotta Go - Keyword Names - Poker, Legal, Real Estate, etc. Non-India Related Domains 0
C Legal issues Legal Issues and Dispute 1
Ceres UDRP Search Engine by Traverse Legal Legal Issues and Dispute 3
Jeff Legal Status of Online Gambling in India? Legal Issues and Dispute 0
Prashant Sharan GoDaddy issues a warning, warns customers about theft with 3 new levels of domain privacy Resources 0
Prashant Sharan Two unresolved issues in on .Org’s sale Registrars 0
Prashant Sharan Domain related year-end and tax issues Resources 0
Prashant Sharan WIPO issues WRONG report regarding domain name disputes in 2018 Resources 0
domainking131 The Big Issues in the Domain Industry - Part 1 Non-Indian Domains 0
domainking131 Bittrex Issues Official Statement About Bitcoin Gold, Warns Users Cryptocurrencies 0
Swisslist Hard Drive Issues The Lounge 2
DomainSherpa Industry Sentiment; How to Stop Domain Theft; .Sucks Sucks; UDRP Issues... The Lounge 0
T Legality issues of posting names for sale on Sedo and other auctions sites?? Legal Issues and Dispute 33
kriss05 Credit card issues while adding the funds to Mitsu? General Indian Domain Name Discussion 9
Jeff Were there Registry Security Issues? General Indian Domain Name Discussion 1
Ceres INForum Server Issues The Lounge 5
Jeff Hosting Issues The Lounge 4
newyorkdude Trademark Issues Legal Issues and Dispute 4
Ceres Firefox Memory Issues? The Lounge 0

Similar threads

whois



Forums dedicated to Indian domain names, including buying, selling, appraising, developing, and monetizing.

About Us

Threads
26,873
Messages
73,841
Members
7,639
Latest member
rohanarya2612
Top Bottom