what to do with a trademarked domain? - GoFuckYourself.com

AOLGuy · 07-01-2003, 12:22 PM

I saw a domain name was about to expire for a very well known trademark about 2 weeks ago.

It was once held by the trademark owner, but a third party swiped it when it expired last and it wasn't in use.

I had actually met someone within the organization that owned the trademark, many years ago. They were really cool to me, so I registered a few "catch" spots for the domain and sent them an email urging them to register as many as possible to grab the domain when it was released.

I basically said "get ahold of me so I can help you strategize to grab it, and let me know if I can be of any help."

Realistically I was hoping for expenses reimbursed and, in the best possible scenario, some sort of small bonus (they have a $100 million business off this trademark). But I wrote the letter as a gesture of good faith...

I haven't heard back from them, and I got the domain.

I have it set to 404 right now--by using it at all, I believe I am opening myself up to a lawsuit. Can I even sell or transfer it to anyone other than the trademark holder?

Curious if anyone has any experience in this area...

KRL · 07-01-2003, 12:32 PM

Depends on the visibility of the domain, the exact word in question, and its useage on the Net and before the Net.

I had an adult domain once like this. I offered to sell it to the company for a reasonable amount and they told me to GFY that they would just sue me to get. I countered with the fact that it was a generic sex term used in the adult industry before the Net even started.

They had their attorney send me the usual threat letter and I sent them back a harsh letter in kind.

Needless to say one of their competitors came along and made me a sweet offer for it so I sold it to them and they are still using it successfully without any lawsuit on it.

Halcyon · 07-01-2003, 12:39 PM

Trademark is odd.

Try to find some way that you could use it that would not be confused with the original owner.

i.e. if you grabbed playboy.com, then put up a page saying "Boy's Theatre Group play series site coming soon."

I'm no lawyer, but you don't want to look like a squatter. Having a non-competing use for the domain may put you on better ground when you try to sell it back to them.

---also---

I've had domains "stolen" and they asked for $1800. They figured that was the minumum it would cost me to use the law to get it back.

AOLGuy · 07-01-2003, 12:40 PM

The problem is that with this domain, it can't be misconstrued or interpeted in any other way other than the trademarked use. The company also has a history of going after people who infringe...

BUT, it seems odd they didn't go after the party who was using it before. Or perhaps they did and that is why it was set to an error screen.

If I recall from a previous experience I had, it is legal to own any domain name, but to use a domain that infringes on copyright or trademark is opening yourself up to a lawsuit.

I really think there should be a set award amount that is considered "reasonable" if you recover a domain and are willing to transfer it over with open arms. With all the cyber-squatting and hijacking that occurs, the "zero tolerance" attitude seems overly litigious.

The majority of people do not know about these catch-services, and someone could make some nice coin bounty hunting domains and recovering them for their original owners.

I just find it unfortunate that if I want to be compensated at all for my time and efforts, I get lumped into those holding domains for a king's ransom.

funkmaster · 07-01-2003, 12:44 PM

Quote:

Originally posted by AKFK
The problem is that with this domain, it can't be misconstrued or interpeted in any other way other than the trademarked use. The company also has a history of going after people who infringe...

... one word and an exclamationmark for ya:

idiot !

LeeNoga · 07-01-2003, 12:46 PM

Ok here is what you do, I am ashamed of myself for answering this. I will get over it tho, thanks for the well wishes.

Look up the trademark and see what classes they registered it in and use an idea that suggests a class they did not register

For example, if the trademark is for restaurants, slap a page up suggesting lawn service.

You can go the the PTO site and see the classes.

AOLGuy · 07-01-2003, 12:55 PM

Quote:

Originally posted by funkmaster

... one word and an exclamationmark for ya:

idiot !

That's why I wrote them before I even registered, as a sign of good faith that I was willing to help them recover it.

If they hit me with a lawsuit before even contacting me, I have that email that shows my original intent.

I figured it was better for me to attempt to grab it and work with the company than let it go to a less scrupulous party.

07-01-2003, 12:22 PM	#1
AOLGuy Confirmed User Industry Role: Join Date: Oct 2002 Location: Nebraska Posts: 1,261	what to do with a trademarked domain? I saw a domain name was about to expire for a very well known trademark about 2 weeks ago. It was once held by the trademark owner, but a third party swiped it when it expired last and it wasn't in use. I had actually met someone within the organization that owned the trademark, many years ago. They were really cool to me, so I registered a few "catch" spots for the domain and sent them an email urging them to register as many as possible to grab the domain when it was released. I basically said "get ahold of me so I can help you strategize to grab it, and let me know if I can be of any help." Realistically I was hoping for expenses reimbursed and, in the best possible scenario, some sort of small bonus (they have a $100 million business off this trademark). But I wrote the letter as a gesture of good faith... I haven't heard back from them, and I got the domain. I have it set to 404 right now--by using it at all, I believe I am opening myself up to a lawsuit. Can I even sell or transfer it to anyone other than the trademark holder? Curious if anyone has any experience in this area...

07-01-2003, 12:32 PM	#2
KRL Entrepreneur Join Date: Oct 2002 Location: USA Posts: 31,429	Depends on the visibility of the domain, the exact word in question, and its useage on the Net and before the Net. I had an adult domain once like this. I offered to sell it to the company for a reasonable amount and they told me to GFY that they would just sue me to get. I countered with the fact that it was a generic sex term used in the adult industry before the Net even started. They had their attorney send me the usual threat letter and I sent them back a harsh letter in kind. Needless to say one of their competitors came along and made me a sweet offer for it so I sold it to them and they are still using it successfully without any lawsuit on it. __________________ If you would like to develop your domains, you can lease inexpensive foreign labor from the leaders in the field at iWebmasters.com TO LOWER YOUR COSTS AND INCREASE YOUR PRODUCTION! * * * * * * * * * * * * Domains Adult News KRL's Newsletter Biz Tips Just Listed Domains

07-01-2003, 12:39 PM	#3
Halcyon Spread The Pink! Join Date: Dec 2002 Location: TrampStampStudios.com Posts: 8,609	Trademark is odd. Try to find some way that you could use it that would not be confused with the original owner. i.e. if you grabbed playboy.com, then put up a page saying "Boy's Theatre Group play series site coming soon." I'm no lawyer, but you don't want to look like a squatter. Having a non-competing use for the domain may put you on better ground when you try to sell it back to them. ---also--- I've had domains "stolen" and they asked for $1800. They figured that was the minumum it would cost me to use the law to get it back. __________________ HAL on TEDx:

07-01-2003, 12:40 PM	#4
AOLGuy Confirmed User Industry Role: Join Date: Oct 2002 Location: Nebraska Posts: 1,261	The problem is that with this domain, it can't be misconstrued or interpeted in any other way other than the trademarked use. The company also has a history of going after people who infringe... BUT, it seems odd they didn't go after the party who was using it before. Or perhaps they did and that is why it was set to an error screen. If I recall from a previous experience I had, it is legal to own any domain name, but to use a domain that infringes on copyright or trademark is opening yourself up to a lawsuit. I really think there should be a set award amount that is considered "reasonable" if you recover a domain and are willing to transfer it over with open arms. With all the cyber-squatting and hijacking that occurs, the "zero tolerance" attitude seems overly litigious. The majority of people do not know about these catch-services, and someone could make some nice coin bounty hunting domains and recovering them for their original owners. I just find it unfortunate that if I want to be compensated at all for my time and efforts, I get lumped into those holding domains for a king's ransom.

07-01-2003, 12:46 PM	#6
LeeNoga Confirmed User Join Date: Jul 2001 Location: Egg & Sperm Mutation Posts: 3,043	Ok here is what you do, I am ashamed of myself for answering this. I will get over it tho, thanks for the well wishes. Look up the trademark and see what classes they registered it in and use an idea that suggests a class they did not register For example, if the trademark is for restaurants, slap a page up suggesting lawn service. You can go the the PTO site and see the classes.