Trade Mark Under Examination

[Ashman]

I recently found a .net.au domain available for registration in a very popular sector. The word has a Trademark under examination and is due to be finalised on 28th August 2012.

The 2 word term generates 14,800 exacts with CPC $2.95. Don't know why the owner of the .com.au didn't register it but I would say it's a semi-generic phrase.

Would it be worthwhile to register the domain and develop it as an affiliate site for the sector or would the pending trademark cause too many issues down the track? Snoopy any thoughts?

 

[findtim]

just for fun i will answer for snoopy and then he can trash me

.net sucks, .net.au sucks sucksssssss

no dude you are suppose to do it the other way around, YOU are suppose to own the .com or .com.au ( but hey .com.au sucks) and THEN let some person promote the .net/net.au and then YOU reap the benefit.

your answer is ........ put your credit card back in your wallet !

tim

howd i go snoopy? all in good fun, honest

 

[shags38]

Great post Snoopy ....... errr ummmm Tim.

If a TM (read TM, not TiM) is under examination then forget it - maybe wait for the outcome or jump in now and use the name to make some quick money and be prepared to have to drop the domain if the TM is approved and you then get your first cease and desist email or letter - all that can happen is they make you drop the domain

 

[DavidL]

Forget the trademark. It's a non-issue

If their TM gets rejected but they carry on using SomeFunnyDomain.com.au, generate publicity and branding off that name and then you come along and register the net.au and sell competing goods, you stand to lose it. And rightly so. The lack of TM won't help you.

If their TM gets approved and you then use the net.au to sell products in an entirely different sector than you *may* be OK.

If their TM gets approved and you sell only their product with appropriate disclaimers etc than you *may* also be OK.

TMs count for nothing guys.

Get over searching databases to tell you what's right or wrong.

Just have a think about it and consider the situation and whether you think you're doing the right thing or not.

 

[findtim]

all that can happen is they make you drop the domain

i don't believe that to be true, they can still ask for retribution as its happened to me in 2001, she bought lawyers into it, in the end i did the right thing and did a deal that i would actually promoted their service on the site.

she was totally wrong mind you but we negotiated and came to a fair settlement, sometimes its better to just have some balls and pick up the phone and have a chat rather then bring lawyers into it.

tim

 

[shags38]

i don't believe that to be true, they can still ask for retribution as its happened to me in 2001, she bought lawyers into it, in the end i did the right thing and did a deal that i would actually promoted their service on the site.

she was totally wrong mind you but we negotiated and came to a fair settlement, sometimes its better to just have some balls and pick up the phone and have a chat rather then bring lawyers into it.

tim

if the domain was used when the trademark is /was/ or becomes valid then they can ask you to cease and desist and if you don't then it may end up going to the lawyers - prior to then no issue. If they do ask for any 'compensation' then it is nothing but hot air and empty threats if you cease and desist as asked ... continue at your own peril.

 

[shags38]

Forget the trademark. It's a non-issue

If their TM gets rejected but they carry on using SomeFunnyDomain.com.au, generate publicity and branding off that name and then you come along and register the net.au and sell competing goods, you stand to lose it. And rightly so. The lack of TM won't help you.

If their TM gets approved and you then use the net.au to sell products in an entirely different sector than you *may* be OK.

If their TM gets approved and you sell only their product with appropriate disclaimers etc than you *may* also be OK.

TMs count for nothing guys.

Get over searching databases to tell you what's right or wrong.

Just have a think about it and consider the situation and whether you think you're doing the right thing or not.

TM's count for EVERYTHING in the USA and any other country or region that adopted the American Law DMCA (the Digital Media Copyright Act) - only a few weeks ago I had first hand experience with a .com domain hosted in the U.S. that was a Trademarked name - (innocent on my part). The host, under threat of prosecution and heavy fines according to the act suspended the hosting account with the offending domain immediately. I finally sorted it by hosting the domain here in Oz where the DMCA has not been adopted yet (I say yet because it will likely become a topic for discussion 'again' at the next round of bi-lateral trade talks between Australia and the U.S. - the yanks are very serious about this, originally aimed at the Chinese but now at anyone that might hurt their ailing economy. I believe that the EU have adopted 'components' of the act and the yanks are working hard to get them to go further.

Here I would still be concerned about willingly using a name that is trade marked in case it gets nasty - big business have big budgets to hire big lawyers and this type of law is still very fuzzy and can fall at the whim of interpretation (hence why the yanks introduced the DCMA - no misinterpretations there).

I have some nice names that are TM'd that could bring in some nice Adsense revenue but I am just a bit wary of taking the risk.

cheers,
Mike

 

[Cooper Mills DomainLawyer]

each situation is different and there are a lot of variables that may impact! There isnt a one size fits all answer here

TMs are very important and shouldn't be disregarded, there is no point looking for trouble

 

[Beatzones]

I'm not expert and don't have the experience which you guys have, BUT.

TMs count for nothing guys.

Are you kidding me????

No disrespect but I think you may have missed the memo!


If you have a domain name which is set for video entertainment on the internet and you sit on it for 4 years, with out use.
Then a company registers the daylights out of that name, merchandise, online entertainment, downloads - you name it, they registered it.

What are you gonna do with this domain, sell cup cakes?

I'm having this issue right now, and I can tell you - I don't bake cup cakes!!!!

 

[DavidL]

I'm not expert and don't have the experience which you guys have, BUT.



Are you kidding me????

No disrespect but I think you may have missed the memo!


If you have a domain name which is set for video entertainment on the internet and you sit on it for 4 years, with out use.
Then a company registers the daylights out of that name, merchandise, online entertainment, downloads - you name it, they registered it.

What are you gonna do with this domain, sell cup cakes?

I'm having this issue right now, and I can tell you - I don't bake cup cakes!!!!

Point is whether they registered a trademark or not, you've be in the same boat. Their use of the term is what puts you in potential trouble.

I know it's a deliberately provocative statement but I'm tired of people relying on a long list of data (the TM database) to prove whether they are doing the right thing or not. It's not as black and white as that.

As Erhan will attest, in the last couple of years I've had not one but two billion dollar companies come at me for domains that had their TMs in them. they spent hundreds of thousands between them and lost.

Conversely, I've lost domains to complainants who didn't have any trademark claims at all.

 

[Beatzones]

Hey Dave,

Yes I understand your point - this is a domain forum and a lot of domainers have had to defend something which rightfully belongs to them.
I especially read this a lot from US blogs.


Regards,
Rus



Regards,
Rus