Trademark Domain Names And what to do with them..

[cornnfedd]

I have a trademark domain name, have had it for years and havent used it for anything.

Anyway I was looking to sell the domain name and it seems I cant because of the trademark, question is, is there another way to sell it? Like create a website using the trademark domain (say a forum) and then sell the whole website?

For example, if you have a forum called mustangforums.com the domain name would breach trademark, but the owners you would think would be able to sell the website, thus selling the domain name also?

 

[Oh!]

I doubt your example of 'mustangforums.com' domain would fall foul of the Mustang trademark. I mean, it might, but it is not a given and Ford would have to lodge a complaint. In your example, a fan group promoting Mustangs is a good thing for the product and company. Now, for Ford to the retain trademark, they must enforce breaches, but I believe these must be obvious breaches, not any phrase which happens to include the word 'mustang'. Further, 'mustang' is a word which is used in other contexts (it is not a word coined by Ford). So, for example, 'Mustang' likely would be allowed its own Trademark in relation to wild horses of the US (and other uses too).*

IANAL, but I believe 'Mustang Forums' falls into a gray area. It will depend upon what you are trying to do, if the venture is commercial, and the attitude of Ford. I know that it is just an example, but you might consider contacting the company. However, be warned, this could be construed as you attempting cybersquatting the domain and by contacting them (no matter you phrasing and how careful you choose your words) as you attempting to coerce them into buying the domain - they could complain and the domain taken away from you and awarded to to them for free.

So, why can you not sell the domain? Who told you that cannot sell the domain and (precisely) why?

* I just did a quick search: there are hundreds of trademark registrations for Mustang' in the US alone. And most of them are not related to Ford. Then there are all the registrations in other countries. I know 'mustang' was just an example. But what it comes down to is: is the name likely to confuse confusion amongst the public? And, to a lesser degree, whoever is the new owner of the domain, what is their intent? Again, IANAL.

 

[paul_from_minibb]

I'd say your domain name should contain an obvious Trademark which costs millions. "Mustang" is not so obvious example, if you add a word "forum" to it, it could be about cars, about horses, about jeans, about machos etc. Not sure what a problem could be in selling it, but of course, you should not offer this to a big company to make them angry If let's say you'd own "cocacolaforum.com" and if you build it around Coca Cola haters, and if it becomes popular, managers of Coca Cola would be easily to take it down, I guess. BTW not sure if it's available? I've checked it and it seems anyone could buy it, but noone obviously wants

 

[Oh!]

I'd say your domain name should contain an obvious Trademark which costs millions. "Mustang" is not so obvious example, if you add a word "forum" to it, it could be about cars, about horses, about jeans, about machos etc. Not sure what a problem could be in selling it, but of course, you should not offer this to a big company to make them angry If let's say you'd own "cocacolaforum.com" and if you build it around Coca Cola haters, and if it becomes popular, managers of Coca Cola would be easily to take it down, I guess. BTW not sure if it's available? I've checked it and it seems anyone could buy it, but noone obviously wants

On Coca-Cola - that's a different breed of trademark: it is a fanciful or coined word, so it is afforded far greater trademark protection over trademarks utlizing existing (real) words. Wiki has page on the different types of trademark.

Trademark distinctiveness - Wikipedia

en.wikipedia.org

 

[paul_from_minibb]

it is a fanciful or coined word, so it is afforded far greater trademark protection over trademarks utlizing existing (real) words.

I agree, may be it's not the best example, and the article on Wiki also explains it good - so the owner of the domain may worry on about how distinctive the trademark is... I'd also recommend to try out the Trademark Electronic Search System (TESS of USPTO) - it gives a clear clue on distinctiveness... As for example I did a basic search for "Mustang" and there are displayed about 648 records, so the domain containing this word is far from distinctive, I guess...