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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?"
Question: Is a Domain Name an Automatic Trademark?
Answer: Ask a lawyer not Slashdot.
Your hair look like poop, Bob! - Wanker.
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.
Since when do you have to register in order to have a valid trademark. If he's trading under that mark then he has an arguable case for having a trademark (TM) as opposed to a Registered Trademark (R).
P.S. Please don't post further misleading advice under the esteemed Anonymous Coward label. You'll bring it into disrepute.
It wouldn't matter if he did have a trademark.
It would cover his area of business, not an unrelated blog. There is no way that somebody would find the sites "confusingly similar."
The guy's just trying to introduce a second revenue stream from his link farm. If anything, I think your site would increase traffic to his site, when people type it wrong.
I'm gonna need a spec.
I'm registering www.tehsimpledog.com as well as www.thesimpledog.net.
Evil laughter.
Then sue the fucker. For real.
Deleted
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.
Tell that to this guy: http://nissan.com/
"There is no real right or wrong, just what the majority accepts at the time."
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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.
Do you think www.whitehouse.com (Extremely NSFW in case you've never heard) - would exist if the good folks at www.whitehouse.gov had any legal recourse?
This case is clearly different in that the Nissan case relied on Nissan Motor being considered famous by 1994. Neither party in this case is famous.
I'm gonna need a spec.
I don't see this - a domain name isn't a trade mark. I think people often forget it's just a bit of network technology that happens to be helpful to humans, conceptually not much different to a file name. Consider if I was called "Mr Ford", and I'd registered "ford.org" am I infringing on the Ford Motor Company's TM? Personally I don't think so, if I started selling automotive goods then I can see that would change, but otherwise no.
The other domain is being stupid (deliberately so I think). If it's just a page with AdSense stuff on in then I can't see any connection to a business that would be hurt by confusion. (actually as I see it, the exact opposite is true!)
Honestly, I'd just asking him for the USPTO serial/registration number for his trademark (and obviously search the uspto web site to verify it). If he has one, he's shown he actually cares about it, plus he's got all the paperwork he needs to dispute your domain with ICANN. Do you really want to spend time and money fighting at that point?
But of course he doesn't have one, so just asking will show him you're not just going to hand over a domain because you got a nasty email, which is what he's expecting. If he tries to quickly file the papers, he'll discover that just owning a domain name is not enough to even file for a trademark, much less get one. He'll have to find other uses of it (prior to yours) to complete the paperwork, and if his site is just a link farm it's questionable whether even his web site would qualify.
Recursive: Adj. See Recursive.
Neither is indeed famous but all you said was:
"It would cover his area of business, not an unrelated blog. There is no way that somebody would find the sites "confusingly similar."
Nissan Computer sales and Nissan Autos are in totally unrelated businesses. Nissan just had the money to make it irrelevant.
"There is no real right or wrong, just what the majority accepts at the time."
simpledog.com isn't even a real website or business operating anything dog related. It is yet another one of those fake, front-end search sites.
If I were you, I would just ignore them or send them a "get lost" type letter. Or better yet, send them a letter that LOOKS like a real response, but is titled "legal response to your letter (legalresponses.com)" and then lists:
Click here for legal aid
Click here for legal forms
Click here for responses
Click here for more info about letters
Click here for improve your writing skills
Click here for related searches about legalresponses
(c) 2007 legalresponses.com . . . about us
He does not own nor can he own a trademark unless it is registered. Secondly, you cannot own a trademark to words that are too simple, such as ABC Computer. I think SimpleDog would come into this category of simple names. It's just too common. There was kid named Mike Rowe who was a software developer. He registered the domains MikeRoweSoft.com and MikeRoweSoft.net. Microsoft threatened and sued and lost. They finally did what they should have in the first place. They bought the names from this highschool kid.
.net before McDonald's Hamburgers did. McDonald's sued and lost and finally bought the name from Mr. McDDonald.
There was also a man named McDonald who was also a software developer. You guessed it. He registered McDonalds.com and
Here's an article: http://msl1.mit.edu/furdlog/?m=20040306
The U.S. 6th Circuit Court of Appeals in Cincinnati ruled that Michelle Grosse did not violate the law when she used the *name of Lucas Nursery and Landscaping Inc* in her domain name for a Web site she created to complain about the Canton, MI nursery.
When I got a registered trademark the requirements were:
1. It had to be used in interstate commerce - in other words I had to do business in more than one state.
2. I had to do business.
I don't know if link farming is a trade or business but lets assume that it is. If you are not in the link farming business then your trademark is likely not infringing on his trademark. Moreover, even if you are in the link farming business if you don't have overlapping market areas then you don't have a problem. I think the guy is blowing smoke up your skirt - but if he hires a lawyer you may have to hire a lawyer.
I had a clear case of trademark infringement where I owned a trademark and a competitor just a mile or so away took my mark and added a state to it and started doing business under that name. My extremely good lawyer told me to buy the name from him because it would cost me $ 2,500 minimum to go court. I bought the name for $500 so I saved $2,000. I would have won the court case but I would have spent more money. Just some practical advice from someone that has actually been there.
BTW I used to have an BBS company that had a name with a word that was also used by a famous computer company who changed their name in the late 1990s. After sniffing around a little bit asking me how long I had used that name they left me alone. I had it before they changed their name. I guess what I am trying to say is that is it not hopeless but it might be expensive. Learn to fight the right fights. This may or may not be the right fight.
Not true on the MickeyD's domain.
That was a reporter for Wired magazine Joshua Quittner, who, back in the early days of the net (1994), noticed that McDonalds had not registered McDonalds.com. So he himself registered it, contacted the company, and documented the whole thing, prior to giving the domain to McDonalds.
http://www.wired.com/wired/archive/2.10/mcdonalds.html
"People" using "unnecessary" quotes should be "shot".
From the post description it doesn't sound like he is trading in anything but ads.
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.
Quite a story. That guy needs a sharper, tougher lawyer.
Question: id his case is so solid, why hasn't he sued Nissan?
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You're technically correct but only that. The argument doesn't apply to the real world in which we have legal systems and laws, trademarks, fair use, etc.
Likewise a business name is just a bit of marketing that happens to be helpful to humans for branding puroses, conceptually not different to a person name for identification.
Also technically correct, but cannot stand on its own in the real world.
WARNING: IANAL. And you really should talk to one. Nevertheless...
I had a somewhat similar experience a few years ago. A domain that I registered and was using for personal projects attracted the attention of lawyers from Shieldmark, who asserted that I'd registered it in bad faith, and demanded that I turn over ownership of my domain to their client or face an arbitration proceeding according to the rules of ICANN's UDRP process. In Belgium.
In the interest of fairness, I should say that their client did have registered trademarks on the phrase that made up my domain name. On the other hand, their trademark specifically addressed the realm of agricultural products, and... well, let's just say I'm not in the agriculture business.
I sent them a polite letter back saying that while their client had my sympathies, I had registered the domain in good faith, was actively using it, and that if they initialed a UDRP against me, they'd lose. And that was the last I heard of it.
The situation here is different: this guy apparently has no claim on this domain other than the fact that your domain sounds kinda like one of the many he owns. Given that, I'd first talk to a lawyer, then do what I did: write a polite letter suggesting he pound sand.
.. is just someone trying to get hits on simpledog.com. He's playing us all for fools.
:wq
Trademark rights are acquired by use, not necessarily by filing an application in your country's Trademark Office and definitely not by reserving a domain name. The USPTO has made it very clear that registering a domain name is meaningless to show use of a trademark in commerce. Trademarks must be used in commerce on goods or services. You do not just "get a trademark" on everything under the sun because you start using the name. That is because there is only confusion (or, the true standard, likelihood of confusion) if similar marks are used on similar goods or services. Now, there is an exception to that for "famous marks". Owners of famous marks can stop people from using similar marks on just about anything through a theory called "dilution". Recent amendments to the U.S. Trademark Act (a.k.a Lanham Act) make it very difficult to have a mark meet the standard of being "famous". Basically, you have to be a Coca-Cola, Apple Computer, or Hard Rock Cafe to get that kind of status (and even then, YOU have to prove it, you don't simply file something and "get it").
So, if he is using the trademark, I'd love to know on what? Registering a domain name and tossing up a pre-made "click through" ad page, in my mind, would not count. (He could argue that he is providing some type of advertising service, but there is a lot of room to argue on that one). Even then, if you are using the mark on " a blog providing news and information in the field of open source software", those two services are not really related. It would be the same as saying Delta Airlines and Delta Faucets (essentially identical marks) cannot co-exists. Obviously, they do and have for years.
Go see a trademark lawyer... that is obviously the smartest thing to do. Most will at least meet with you for a half-hour or an hour at no charge.
Being famous does matter: the owner of a famous mark can sue for 'dilution' of that mark. A mark that isn't famous, you have to prove actual confusion (and therefore some sort of overlap in business).
The bigotry of the nonbeliever is for me nearly as funny as the bigotry of the believer. - Albert Einstein
Ask him in what area of trade he is asserting the mark and to prove that he's used the mark in those areas or that he demonstrated his intent to use the mark in that area prior to your first use.
Unless it's a made-up word he can't prevent the same word from being used in other areas of trade.
If his use doesn't conflict with the way you intend to use it, you both can use it and both trademark the term.
If your uses conflict, whoever took steps to establish the trademark for that particular usage first wins.
Unless you are using the term for domain-parking, I don't see you having any conflict.
Have your lawyer send him a "put up or shut up" letter.
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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.
It would be like throwing a bucket of water at the ocean. Uzi Nissan is putting up an amazing fight, but eventually the guy with the most money usually wins.
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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.
Oy.
First, learn what the law says. A trademark gives you an exclusive right to use a mark in a defined geopgraphical area in a specific class of goods or service. You don't turn on your delta faucet and expect to hear airline shcedules.
If he/she is doing business under that name and you are too in the same class or service then he/she may have a point and you should wait till he files a $1500 UDRP against you (which you can simply say "ok, it's yours, here"). Otherwise, ignore it.
If you two aren't doing business in the same class of goods or service then just ignore him.
A trademark is to protect the consumer so they can identify the source of a service or goods.
You can read a lot of UDRP decisions online. While not a court of law they're meant to be a quick and cheap alternative to a court case and if you're in the com/net/org/most other tlds you're bound by them.
Don't offer your domain for sale is considered "bad faith".
Consult a lawyer, who'll pretty much tell you the same thing (if they understand trademarks and domains which many don't)
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Worse yet, not only will you have non-lawyers posting legal advice to these kinds of questions, many of them will forget that there are other countries than the USA. E.g. the question asks for legal advice without telling us what country either of them are in.
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while the other side doesn't need to register the mark on a state or federal level in order to have certain rights, the damages the other side can seek if the mark is not registered are limited. In addition, as others have commented, given the services offered at the competing sight, namely advertising for others, the domain is likely a very weak mark that would receive only limited protection, if any at all. If I had a client with this issue and the facts presented, I'd advise them not to worry about or respond and determine a course of action if the situation develops further. If they keep harassing you, you might consider filing a small-claims court action against them for mental anguish or any other action your local laws support. Although the ability to collect on any judgment awarded is likely suspect, there may be intangible benefits to such a suit.
So that everyone on this forum can personally email this guy and call him a troll.
------- "I must create my own system, Or be enslaved by another man's" -William Blake
- (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- (ii) you have no rights or legitimate interests in respect of the domain name; and
- (iii) your domain name has been registered and is being used in bad faith.
You'll notice there's an "and" between each of those. All three have to be true for the complaint to even be considered. Section 4b outlines some examples of "bad faith".- (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
- (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
- (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Please note that putting a parked page with targeted advertising on the domain is considered a legitimate business use. However, it's generally considered to have the lowest priority among business uses. If its use infringes on the trademark of another (non-targeted ad parked page) legitimate business, generally ICANN comes down on the side of the trademark holder and authorizes the transfer of the domain to the trademark holder if that trademark is somewhat well-known.In other words, even if the other site has a trademark on SimpleDog, if you're using it for a legitimate business and your site does not compete with them (does not leech off their fame for commercial gain), you're pretty safe. In fact, if your thesimpledog.com site became famous and you were able to turn it into a multi-million dollar business venture with widespread name recognition, and simpledog.com was still an advertising site which advertised what your business sold, you'd actually have pretty a good chance to get their domain transferred to you. They would be leeching off your fame for commercial gain, and thus satisfy definition 4b(iv) of using the domain in "bad faith".
(Incidentally, section 4b(i) is why you never, ever put a dollar amount on your domain in these cases. Their lawyers will immediately jump on it as evidence that you're using the domain in bad faith.)
So with a domain name, if the name is being used as a distinctive mark in the sale of something particular, then under common law the owner of the business has a right to the mark just for the category of goods or services sold, presuming that nobody else is already using a substantially-similar mark for other goods or services in that same category. Further, until they (1) have actually sold goods or services using the mark, and (2) have subsequently registered the mark on either the federal or state level - or both - they can't go to court against you.
"with their freedom lost all virtue lose" - Milton
The Red Cross are kind of jerks - they've harrassed game developers for putting red crosses on medical stuff and even sued the Red Cross pub in england. They lost that one due to the pub being 800 years old.
"We returned the General to El Salvador, or maybe Guatemala, it's difficult to tell from 10,000 feet"
" Still, if he is using the name as his business name when selling those ads, he may have a point. But only if the original poster also puts ads on his site."
Um... no.
A trademark is protection under the law to prvent consumer fraud. It's so consumers can identify the source of the goods or service.
"a website with a bunch of ads, only" is not goods or service. And given there's 16 jillion of the on the web the consumer of same is already confused. Saying "my dogbreath.com uniquly identifies me as the source of my service" will just get you laughed at in court.
Not that it'll get to there, it'll go to a UDRP if it goes anywhere and those guys hate this kind of shit. Don't sweat it. Just ignore the asshole. It doesn't sound like he's gonna cough up the $1500 to file a UDRP complaint.
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I'm waiting for them to try to sue Switzerland.
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Do read that wikipedia link. I'm sure you'll find that Red Cross flag was made as an opposite to Swiss flag to honor Henry Dunant, Red Cross founder. If anything, Switzerland could sue Red Cross.