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Is a Domain Name an Automatic Trademark?
TheWorkingStiff writes "I registered a descriptive domain name (something like "thesimpledog.com") and started a blog on it. About a month later I get a threatening letter from a link farmer who owns "simpledog.com" The owner of simpledog.com is claiming that he owns the trademark to the words simpledog even though he has no real business or rights by that name other than a static page with some text and Adsense slapped on it. There is no product, service or brand whatsoever. Does simply registering a two or three word domain give you instant trademark rights to those words even though you've never done anything with them? Should I give up my domain to a link farmer who is trying to bully me, or does he have a valid right to any phrase he registers that isn't already trademarked?"
No. You cannot have a trademark just by virtue of owning a domain name. A "trademark" is one's distinctive mark within a trade, and since this person has no product, there is no trade. Trademark laws exist to protect consumers from purchasing or using one product when they meant to purchase or use another. You would have a problem if you tried to imitate the other site. Obviously, this isn't the case, so you're in the clear.
The troll is just being a troll. Don't give in.
First of all, have you looked up his trademark at uspto.gov to make sure he has one. The USPTO is really leary to give a trademark on something that ends in .com now-a-days.
.com is supposed to be a US thing it would be subject to US law first.
It would also be interesting to see what catagory he filed under.
You can file a trademark in any one of several categories (about 23). So you too could have a trademark on the same word and it would not conflict (eg. Ford Florists and the Ford Motor Company both have a trademark on Ford, but since the name use would not cause market confusion, they are both ok).
If the category is bogus (some technology one might be ok for him to use) you might be able to get the USPTO to force him to prove the use of his trademark in commerce.
Also if you were using the trademark before he filed, you should be ok by law, but anecdotal evidence shows that you will still lose your domain.
On a related point trademarks can be filed in more than one country, so what country trumps what country if there is a conflict? (I guess since
I have seen no discussion on this.
I am not a lawyer do not take this as legal advice. It's not. It's the ramblings of someone who holds a few trademarks himself.
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The page simpledog.com is one of those totally automated junk advertising pages, obviously with a picture of a dog.
Now you know this, you won't be at all curious about going there.
A shitty database-made spammy advert webpage won't give you any weight in a trademark dispute.
Looks pretty clear to me.
As others have said, you have to use the name in a trade or business in order to claim it as a trademark, although you do not have to register it with the USPTO; registering the trademark does provide you with some additional legal advantages.
The Groklaw page has a number of useful links that provide more in-depth information.
Actually, you need to RTFO (O=opinion). The Ninth Circuit opinion, which Nissan Computers links to in his long tale of woe, said that Nissan Computers could keep its nissan.com website and continue to use its trademarked name of Nissan Computers. However, what it could not do was continue to solicit ads from automobile-related companies, because those ads could cause confusion among people searching for Nissan cars.
While a person CAN be held to have a valid trademark just by usage, if you're not in the same jurisdiction, or not offering the same product or service, you can ignore him.
The "not offering same product or service" is easy to understand - if there is little likelihood that a consumer would be confused between your "product" and his non-existent "product", then you also have a valid right to the same trademark. Lexus Peas was sued for infringing ont he Lexus brand, and the judge held that there was no chance of confusion in consumers minds between a can of peas and a car.
The "same jurisdiction" is also easy to understand - if he wants to "do something about it", he'll have to sue you in your jurisdiction, and that costs $$$, and a link pharmer simply won't spend the money.
Also, you can put a disclaimer at the bottom (without a link back) saying your blog has no relationship to the link pharmer, explaining the pharming business, etc. This way, you might become the cononical reference on the net for that particular url.
Obviously, your blog is taking traffic away. Why not point us to the landing page so everyone else can choose one link to "reverse-pharm" with a blog with some content using the same name.
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I did speak to a lawyer initially who specialized in this sort of thing and he said, "Sure, you'd win in a UDRP case..." Then I thought about it some more and I realized that most lawyers only take cases they *think* they would win. It wouldn't be a guarantee... and I'd hate to have a 6 month old blog with traffic and readers suddenly get ripped awy from me. Unfortunately there doesn't seem to be any way for people who are being bullied to file any sort of counter complaint in matters like these.
The real domains in question are my site (which is down for the moment) http://www.thesimplemillionaire.com/ and his site which is the same, but without the word "the." He couldn't furnish anything saying he had used the site for any more than a link farm, though he did say that he had some magazines sent to the name "simplemillionaire." Nice. I've had magazines sent to my cat, but that doesn't make them taxpayers (hmm...)
The threats from the owner of simplemillionaire.com also detailed how he was going to sue me to pay for HIS legal expenses. Again, I don't know how kosher that sort of threat is. This guy owns a company called SimpleVentures or something which seems to specialize in buying domains and selling them... apparently in a greasy way. His original email to me immediately suggested that I pay him a "licensing fee" for my domain name because it was similar to his. He boasted of selling the domain CapitalManager.com to the Hartford Insurance Group.
All this for a stupid personal blog that was only about three weeks old.
Bottom line: I didn't want to risk spending my next three months fighting with the jerk and dropping a couple grand in legal fees. But I'm keeping the domain name for the moment... You know, just in case...
Yes, I was using GoDaddy... Sue me. Wait, don't.