Yes – registering an expired domain name that violates a Trademark is a no-no

Yesterday I wrote an article about how to quickly check to see if the domain you’re buying might violate a known trademark. I think I write a post like this twice a year to keep the topic fresh and make sure new readers who are just getting started in the domain investing world see it.

One of my readers wrote me an email asking the following:

Hi Morgan. I read your blog article on trademarks. I have a question.

Lets say you win a .com domain on a godaddy auction and once in your possession the create date on whois says 2003 for example. Then you do a tess search and find a company who has live tm from 2012. Is this issue for me?

(Question from a blog reader via email)

I think this is a great question and one that many people have. The answer is – yes, this would be a trademark issue and you could lose the domain name in a UDRP.

The thing is, while the domain was originally registered before the trademark was granted, if you buy the domain in 2020, you became the owner after so it’s going to be an uphill battle to prove you bought the domain in good faith.

While you might think companies like Go Daddy Auctions would only sell names that don’t violate trademarks, this would be a herculean task, if you look at their user agreement, it’s your responsibility. The reality is, domains that violate trademarks expire and are sold by companies like Go Daddy all the time, so yes – it’s true companies that sell domains do profit off of trademark violations, but it’s more accidental than intentional.

That being said, you, as an individual domain investor don’t have the same luxury – you do need to do your homework or you could end up on the losing end of a UDRP.

Thanks to my reader who emailed me with this question. I respond to every single email I get from readers, always have, always will. If you take the time to read my blog, I’ll take the time to read your email. Seems only fair right?

So next time you find a great domain name that’s expiring and you think it might violate an existing trademark, do your best to do some homework on your end before you buy. Better safe than sorry.

{ 2 comments… add one }

  • Jose March 20, 2020, 2:43 am

    Years ago when I started with you, ask about trademarks and domains.

    I remember how to be your always give your support send me an email from a Lawyer, from New York I write and answer another collaborator lawyer ask my phone and what to give an hour when I lived in Spain (EU) in the afternoon of the next day the conversation was so explicit that really through time that I still have it in mind.

    The truth is to be very careful.

    Reply
  • Raj March 20, 2020, 6:55 am

    “While you might think companies like Go Daddy Auctions would only sell names that don’t violate trademarks, this would be a herculean task, if you look at their user agreement, it’s your responsibility.”

    GoDaddy and other auction platforms could easily match domain names to trademark registry files to eliminate trademark-sensitive domains.

    Instead, they profit by offering trademark-violating names through their platforms and use the user agreement to transfer any legal risk to the buyers (domainers).

    Reply

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