Trademark Domain Names And what to do with them..

cornnfedd

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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!

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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

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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 :cool: 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!

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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 :cool: 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.
 

paul_from_minibb

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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...
 

cornnfedd

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So when I have tried to sell the domain on some well known websites it basically says I am unable to sell the domain name due to copyright.

I might try a different domain seller and see how I go..
 

ThornInYourSide

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If you'd care to share the name ....

Perhaps offer it to the trademark holder at a reasonable price?

The example of 'mustangforums' shouldn't be an issue. Trying to sell Ford.com or FordMotorCompany.com would be.

There was a whole thing about domain name squatting years back when celebrities and some companies started trying to get domain names. Amazon might have found that Amazon.net, Amazon.biz and every other TLD available at the time were taken and for sale at inflated rates.

I still find a few examples today of sites that are placeholders only and the real company had to use a domain name with a hyphen or added characters to avoid paying the stupid rates.
 

Oh!

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If you'd care to share the name ....

Perhaps offer it to the trademark holder at a reasonable price?

The example of 'mustangforums' shouldn't be an issue. Trying to sell Ford.com or FordMotorCompany.com would be.

There was a whole thing about domain name squatting years back when celebrities and some companies started trying to get domain names. Amazon might have found that Amazon.net, Amazon.biz and every other TLD available at the time were taken and for sale at inflated rates.

I still find a few examples today of sites that are placeholders only and the real company had to use a domain name with a hyphen or added characters to avoid paying the stupid rates.
Not sure about that. To directly contact the trademark holder (with or without a price) strikes me as evidence 'bad faith' holding of the domain name.

I have to say, I thoroughly dislike the practice of domaining. It does nothing for businesses, individuals and organization looking for a domain for legitimate reasons. Domaining provides no added value to the product. The only positive is to the domainer - everyone else loses.

There are legitimate reasons for buying and hanging onto specific domains (panned projects, trademark protection, similar names which could be confused with the true website, etc.) - I have no problem with any of that of course.
 

cornnfedd

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no I cant contact them, and I wouldnt know who to contact anyway.

the domain name can be used for a website, even forum based, originally thats why I got it, but just havent had the time to create a website using the name.
 

iAdam

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There's an option to delete a domain name, and especially never poke the bear.
 

Nabix

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Fun fact. I own kodakcourage.com, which I used as an e-commerce site where I was drop-shipping men's and women's clothing. Kodak, the film company, contacted me asking to place a "Not affiliated with Eastman Kodak Company" in the footer of my site, which I did. This was all because I have Kodak in the name.
 

Oh!

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That's a fairly a generous position for Kodak to take (compared to many other trademark holders). 'Kodak' has much stronger protection compared with many other trademark holders because: it was an original, coined word for the company; it has been in continuous use for well over 100 years; and is is very well recognized the world over. Their request for the disassociation message in your footer seems reasonable in the circumstances.
 

vikvaliant

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I think it comes down to whether a 'reasonable person' would link the domain to the trademark. In the example you use, mustangforums.com could definitely be linked to the trademark (and it is about Ford mustangs), but mustangranch.com is not. In fact, it appears they redirected mustangranch.com to mustangranchbrothel.com to make sure of that.

Usually, you can get by if you can prove that the domain is being used for something completely unrelated to the trademark in a different industry. And not contrived to domain squat.

But even that won't protect you in some cases. Check out the epic battle between Mr. Uza Nissan (Nissan Computer Corp) and Nissan Motor Co. over https://nissan.com and https://nissan.net
 
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Oh!

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vikvaliant,

While there is merit to some of what you wrote there, it applies much less for original coined (unique) words. Obviously, 'mustang' is not a newly coined word for a trademark. Kodak was a newly coined word. 'Kodak' is only used in association with the Kodak Corporation (since they have been vigilant in protecting the trademark). If they had allowed the trademark to become diluted (say, because others used the term to describe all analogue photography), the trademark would be less protected. If you hear or read 'kodak', you think of the Kodak Corporation, nothing else. The same cannot be said for 'mustang'. The use of 'Kodak', in any industry by anyome but the Kodak Corporation is going to be problematic. There will be wide assumption amongst observers that 'Kodak' have diversified (when they have not).

Edited to add a link to an explanation for origin of the word 'Kodak' (click the small window of text to expand it):

 
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