TM in domain question

[DomainMagnate]

Suppose you have a decent site with revenue you want to buy, but it has an obvious TM word in the domain (like 'bing' or even 'Google'), however the site is not related to that keyword, doesn't try to rank for it and doesn't try to monetize that TM actively.
Do you think it's still a major issue with the TM violation, or would you go for it if the price is right, since the TM is not really "monetized" here?

[grynge]

How long has the domain been alive? If it has been a few years then I can't really see the problem. Does the meaning of the domain have something different to the TM? ie.. apple is a tm but badapple could be used. Even then if the site has not been trading on the TM then there is still some risk but it would be minimal.

[eddiebooth]

It also depends how sensitive the company whose trademark is being used is. Some can be a lot more touchy than others about what they may see as people leeching off their good name, especially if they have spent a lot of time and money building up their brand. Personally I would have a good hunt around to see if there where any other instances of the trademark owners taking action against anyone else before committing myself. Perhaps this is why the site is up for sale in the first place.

[KenW3]

It depends on the word. A trademark that's a dictionary work used for the dictionary definition is defensible. Any site's use of a trademark such as Google is not. If the word is not a dictionary word, then the purchase is a liability to you.

the site is not related to that keyword, doesn't try to rank for it and doesn't try to monetize that TM actively.

Actively or passively is of no consequence. This is one use for negative keywords. For owners of keyword domains, even parking can be a problem if (any) revenue is received from brand recognition.

It also depends how sensitive the company whose trademark is being used is.

I agree. While you can determine the aggression level of the trademark holder in terms of defending their IP, you cannot accurately assess financial cost should they pursue actions against you.

Do you think it's still a major issue with the TM violation, or would you go for it if the price is right, since the TM is not really "monetized" here?

'Doesn't try to monetize' and 'not really "monetized"' suggests there is a problem, because any profit from another business' IP can quickly become a serious liability to your company.

[Matteo]

Don't walk, but run from anything that you even have to question TM issues. I have been there, done that. Even if it seems OK you will always feel like you are looking over your shoulder.

[akirk]

A trademark is simply:
- A mark (text or picture)
- By which some ones trades

A registered trademark is registered in a specific category (or more)

You can use a trademark as long as:
- you are not 'using their mark for trade in such a way as to potentially confuse the public' (paraphrased!)
- you are not using it in their sector
- you are not using it to trade
- etc.

you are clearly using the mark (in your example) related to trade - so the simple question has to be whether:
- the public in coming believe (when choosing to go to your site) that it is related tot he TM holder - i.e. are you benefiting from their TM? - what you trade in is irrelevant if the expectation is that you are the TM holder...
- you are clearly operating in another sector...

I would suggest from the limited knowledge we have that you are in a dubious place...

- age of domain is irrelevant
- history of trading / domain is irrelevant
- if the TM holder is successful - they can pursue you for every penny ever made whilest using their TM & for damages (it could get kind of expensive!)

on the other hand - the example I often quote is www.apple.co.uk - not owned by Apple (who are notorious for pusuing anything apple shaped... whether to do with their sectors or not!) so it is possible to own / use a domain containing a TM - but be sure, and have deep pockets!


Alasdair

[DomainMagnate]

thanks everyone, great posts and suggestions here, I will most likely let this "deal" pass. It's also a word, but not often used, much more commonly used as the TM meaning (unlike "apple" that is). Site is a few years old, so risk of losing it any time soon is probably not high, but it's just not a good variable for any kind of long term investment.

Btw I'm curious are there many sites/domains with TM's that get sold through flippa? I recall we had a discussion about it here some time ago.

[akirk]

thanks everyone, great posts and suggestions here, I will most likely let this "deal" pass. It's also a word, but not often used, much more commonly used as the TM meaning (unlike "apple" that is). Site is a few years old, so risk of losing it any time soon is probably not high, but it's just not a good variable for any kind of long term investment.

Btw I'm curious are there many sites/domains with TM's that get sold through flippa? I recall we had a discussion about it here some time ago.

TM infringement is normally a civil matter, not a criminal one...
therefore regulators / law enforcement etc. won't care...
As we see on a daily basis IP abuse is the biggest illegal use of the internet (my reckoning!) - the problem is that it happens at all levels by and against individuals to multi-nationals... and a lot of companies feed off the middle making money out of facilitating abuse of IP (c.f. discussion recently on pinterest)...
legally speaking it is probably a requirement that sites like Flippa prevent infringement... but they will claim a) cost is prohibitive b) they have no way of knowing c) they have options in place for TM owners to have sales removed d) etc. the reality of course is that for many of these sites the cost of IP compliance is so high they wouldn't be in business... EBAY is one of the few that actively pursues it and even then they miss lots...

there is an argument that the internet wouldn't have grown so fast / successfully without ripping off IP all over the place...
but then there is also an argument which says that a) this might have been a good thing and b) obeying the law should be a starting point not something to slip past

the problem is that IP is notoricously difficult to manage - because by default we own IP in all we create - without having to register it etc. we have a strong IP culture - but there is no mechanism for checking ownership - if we all had to register our IP life would be easier to monitor - but by default we would have changed our IP culture I think negatively... don't forget that a TM does not have to be registered to be yours... if you have been using a mark of trade for long enough for the public to associate it with your business then you may have a TM without it being a R TM

Alasdair