Why It’s So Important To Check For Trademarks Before Buying Expired Domains

domain-trademarkOne of the biggest issues I see new Domain Investors or even casual domain buyers encounter is Trademark infringement. Most people simply don’t know anything about Trademarks and domains so the thought doesn’t even cross their mind. I had a friend who recently told me he started investing in domains, he sent me a list of what he bought and every single one of them was a blatant TM violation. I told him to force drop them all and he did.

Some are not so lucky. I know another investor who bought an expired domain, parked it, then ended-up losing the name and getting slapped with an additional case against him for apparent “damages” done to the brand. He lost and with it lost tens of thousands of dollars.

The problem is some Trademarks are incredibly obvious, domains like BuyMicrosoftSoftware.com or BMWRocks.com violate very well-known Trademarks. However not all Trademarks are that obvious and when you’re buying expired domains it can be easy for one of two of these domains (or ticking time bombs in all reality) to make its way into your portfolio.

There is an example of this to me today in a domain I was looking at bidding that is selling on Go Daddy auctions. The domain is Cartronics.com and I actually really liked the name, but when I did a search on USPTO.gov I found a Trademark on Cartronic. Sure, the “s” makes a difference, and no it’s not a completely cut and dry and you might be able to defend it in a UDRP, but there’s a live Trademark and that means a risk.

uspto_gov

It takes less than a minute to check a Trademark and when you’re buying an expired domain I highly recommend you do this anytime you’re not completely sure. I would have bid on this name and while whoever wins the name will probably never have any issues, there is a chance and with a live Trademark there is a risk. If you know about the risk and want to take it, that’s one thing, but if you buy a name thinking everything is fine and get slapped with a UDRP and a lawsuit, well then that’s just not any fun.

Take the time to search before you bid, it’s completely free and like I said takes less than a minute. You can check for Trademarks at USPTO.gov.

(Photo Credit – USPTO.gov, All Rights Reserved)

{ 11 comments… add one }

  • Michael April 24, 2013, 9:55 am

    Good advice for blatant TM’s. But practically every term in the English language is trademarked, if you Google “Cartronics” you will see dozens of companies using that exact name, most of them offering the same product/service… none of them are national. You’d definitely want to be careful and not park something like that, but if you don’t buy any domain that comes up in a TESS search, you’re not going to be buying very many domains.

    Reply
  • Zak Muscovitch April 24, 2013, 10:40 am

    Great article, Morgan. It is so easy to do a quick basic check and will save a ton of headaches and money. There are of course more exhaustive searches possible, but at least a basic check will eliminate some unnecessary risk.

    Reply
  • Donny April 24, 2013, 10:47 am

    Yep stay away from that one. The market cap on that stock symbol Catm alone is over 1 billion. I am sure everyone has names that could be considered TM,s but this is real bad.

    No brainer on this one. Take Morgan’s advice on this one.

    Donny

    Reply
  • Adi Weitzman April 24, 2013, 11:17 am

    What about names of software or programs a company uses but they dont have a trademark on?

    Reply
  • joe April 24, 2013, 12:29 pm

    Thank you , for the alert !

    I Not can comprehending that exist, the patent trademark filtering for the domain names gTLD.

    What service have the register of a trademark & logo in the USPTO for a domain names gTLD with this patent ?

    Immunity be served in tray in this market and industry that never interested an to end of this problem.

    Where have the solution for year 2050 or never.?

    To be or not to be , this is the question.

    Reply
  • Morgan April 24, 2013, 12:41 pm

    Good question @Adi – I’m not a lawyer so can’t give you perfect legal advice here but I can tell you that first use does play a role in UDRP’s as does bad faith registrations. If a company has been using a particular name for a piece of software and you register the same name and use it to try to generate revenue by making it confusingly similar to their site or software product there could be some issues.

    I know a few lawyers and UDRP experts read my blog so if anyone else has something to add here please feel free to chime in!

    Reply
  • todd April 24, 2013, 1:29 pm

    Morgan, with trademarks you have to look a little deeper into them sometimes. The trademark for “Cartronic” is held by a german company called Autec AG which produces remote control cars, planes, helicopters etc…..which are toys and that is the category that the trademark is registered. Trademarks can be held in a variety of different categories and many different companies can hold a trademark for the same exact name but in a different category. To use the domain DreamVodka.com that you sold a few weeks ago is a good example, the word “Dream” is registered about 50 times in different categories by different companies. So you could buy the name “Cartronics” with no issues and you will never ever get a UDRP on that name unless you try to sell remote control toys or something similar to that or if the original first user of the name came after you even though they never had the name trademarked. Famous trademarks are the ones that don’t have to be filed in multiple categories but can be defended in all categories. For instance I can’t open a company and call it Starbucks Grill because the name Starbucks is a famous trademark and anti-dilution law prevents the use of that name in any unrelated category.

    Reply
  • Adi Weitzman April 24, 2013, 2:05 pm

    My thinking is as follows. Say a company uses a program or software they call iAdam. If my name was adam and I purchased that domain name and used it as a blog or a personal business site that has nothing to do with the company’s program or software I would still win the UDRP. Again I am NOT an expert but shouldnt the use of the site be considering in additon to the bad faith of using anothers name??

    Reply
  • Connie Harter April 24, 2013, 3:16 pm

    Hi Morgan, How do you force drop a name?

    Reply
  • joe April 25, 2013, 4:45 am

    Hi Morgan!

    What Todd, write and comment I be concerned and see that trademark StarBucks as their activity is the main coffee and their related derivatives, products and services coffee. Also having subsidiaries including Tazo Tea Company (this gets out of its activity, leading products and services as a trademark) the following is Torrefazione Italia (in English the first word be Roating) is shared between:
    noun:
    roast: roast, barbecue, roasting
    roasting: roasting

    adjective:
    grilling: roasting
    burning: scorching, burning, blistering, hot, baking, roasting

    The other branch being the name of Hear Music is totally different from the trademark to offer and finally Ethos Water this is a reference to what I used to make coffee.

    StartBusks Grill, you can register by referring to an adjective of the first keyword is not translated to English Italian to refer to what UDRP may be an anti-dilution law to copy a trademark.

    But as the example of the domain DreamVodka.com, as have many others like Start Dream and Vodka with another keyword also perfects reason of a trademark and domain name that the activity is not the same as in Example is StarBucks.com however if the record of the first or second key word you use it with another one for another activity, product and service. and registered as a domain name, logo and trademark do not think the UDRP or the same brand can say anything, because it would be inconsistent.

    This is how I put in the last part or not,

    Thank you.

    Reply
  • MA noj March 1, 2014, 7:10 am

    Very helpful post. Thanks

    Reply

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