Trademark Domains

**Michelle** · January 13th, 2010, 04:30 PM

Do these types of domain names breach trademark or are there legal loopholes I don't know about?

If they do breach trademark does it matter? ie People who use domains with trademarks have told me they do it until they get a legal threat. AKA It's worth the gain until you get caught.

http://flippa.com/auctions/82431/Uni...ook-Sales-Site
http://flippa.com/auctions/82261/Aws...ocking-Website
http://flippa.com/auctions/66574/100...Y-High-Quality
http://flippa.com/auctions/56708/Cli...rdsEmpires-com
http://flippa.com/auctions/82483/4-o...Wordpress-Blog

**3Six** · January 13th, 2010, 04:40 PM

You've spotted another flaw in Flippa: they allow the sale of illegal domains. Flippa may not appreciate it, but they can be sued by the trademark owners.

Well done on putting that list together! I know that Apple and Twitter at least are going after people using their trademarks in domain names.

**Clinton** · January 18th, 2010, 04:30 AM

Flippa would have checked this with their lawyers and, if they take action when notified, may consider themselves safe from legal problems. However, if you're a seller of a domain violating a trademark, you've suddenly exposed yourself. Your domain privacy etc., is of no use if you've listed publicly and given Flippa your contact details/paypal email. You can now be tracked down very easily.

**3Six** · January 18th, 2010, 05:05 AM

AKA It's worth the gain until you get caught.

Can't they sue you for all the profit you've made from the illegal use of their trademark?

**Michelle** · January 18th, 2010, 07:35 PM

3Six I would think that yes you could be sued for profit too but not 100% sure. Not the sort of risk I'd be willing to take.

**Clinton** · April 30th, 2012, 10:10 AM

Originally Posted by 3Six

You've spotted another flaw in Flippa: they allow the sale of illegal domains. Flippa may not appreciate it, but they can be sued by the trademark owners.

Well done on putting that list together! I know that Apple and Twitter at least are going after people using their trademarks in domain names.

This is a very old thread, but I thought I'd update it as there's some very pertinent news.

For whatever reason, Flippa has now decided to not allow domains that are blatantly violating big name trademarks. They've made a blog post to that effect today. Their system will now automatically block new listings that violate trademarks of Google, Twitter and Facebook and a few others.

I wonder if they've had some lawyers breathing down their necks as trademark violations have been a common theme in Flippa listings and this seems to mark a big change in official policy from "we will remove a listing if we have a specific complaint from the trademark holder" to "we will automatically stop all trademark violation domains for those trademark holders who do aggressively protect their trademarks".

Flippa does offer a route to submit a DMCA complaint. You've got to download their DMCA pdf and then click the link in that pdf to download another pdf which you've got to fill in and submit to ... well, no fax number, email address or postal address is provided in the forms.

Hopefully, they'll make it easier at some point.

**akirk** · April 30th, 2012, 05:06 PM

surprised that Flippa don't automate this...
http://www.markify.com/blog/the-worl...rk-search-api/
There is an API to search US / EU trademarks...

I have pursued a company using a trademark of ours in their domain - and succeeded...
And yes I could have pursued them for all profits gained through use of our trademark (but they weere too small, and not worth while!)

Alasdair

**KenW3** · April 30th, 2012, 05:41 PM

For trademark cases, eBay has proven itself to be a very aggressive trademark owner, as demonstrated by their 2007 case against PerfumeBay.com. In first place for aggression though (from everything I've read), are the attorneys on retainer for Donald Trump. Although the word, trump, is a common word, any time it is associated with real estate or casinoes, it is almost certain to go into arbitration. http://lmgtfy.com/?q=site%3Adomains.adrforum.com+trump

If you would like a false sense of security for a trademark domain name

, head over to the ICANN archives for dispute proceedings, and search the cases for trademark domain names you may own. If there is no UDRP, then you can always just allow it to drop on the next renewal. You may be surprised to find that typo names of trademarks also end up with UDRP proceedings.

If you have one from a company that has aggressively protected their brand in the past, a request to your registrar that the name be dropped prior to renewal could help if you are pursued. This may not save you from a lawsuit for damages (especially if you have made money using the trademark), but this would show respect for the IP and could be a way out of the legal morass of ill-informed domain speculators.

**akirk** · April 30th, 2012, 05:51 PM

Originally Posted by KenW3

You may be surprised to find that typo names of trademarks also end up with UDRP proceedings.

absolutely right - breach of a trademark can be anything designed to confuse the public into believing that you are the trademark holder - no need to be precise in your spelling...
on the other hand - a trademark is only a mark of trade - so you need to be using a domain to trade to infringe a trademark - and within the protected area of the tm.
we were successful because the person with the infringing trademark based domain was also trading in the same business as us... they lost domain / all their branding / all their printed materials / ther brand (well ours!) / etc.
they weren't directly competing - but it was confusing... and in breach!
it is expensive to get it wrong...

Alasdair

**Clinton** · Yesterday, 06:16 AM

Originally Posted by akirk

surprised that Flippa don't automate this...
http://www.markify.com/blog/the-worl...rk-search-api/
There is an API to search US / EU trademarks...

Flippa's position on trademark domains was to allow the sale of those domains on their platform and to step in only if there was a complaint by the trademark holder (and the TM holder were big enough to act to defend their trademark).

A lot of big trademark owners - Apple, Facebook and others - are now following up on TM infringements and, as there's been an explosion on Flippa of domains/sites violating these big name trademarks, Flippa's must have been spending a lot of time dealing with TM complaints and removing listings. So they've decided to stop all TM violations that are causing them too much of work. However, it's still in their financial interest to allow the listing of TM violations where the TM owner is unlikely to pursue Flippa. I therefore do not see Flippa signing up to an API to stop the listing of all trademark violating domains and sites.

Flippa's latest blog post says:

Yet another company, this time a large social network (which shall not be named!), filed to take control of the dot-info version of its domain, which has been hosting an unused forum since 2004. One more good reason to stay away from trademarked domains!

Their new found conscience about protecting trademarks may not quite extend to protecting TM infringements where the TM owner is not in a position to sue Flippa. So my guess is that you can still happily list TM infringing domains/sites on Flippa as long as you're not provoking the big lawyer guns at FB, Google, Apple and co.