trademarked domain name
October 13, 2006 6:42 AM Subscribe
Domain name dance: how best to sell to trademark holder, or use it myself?
I recently purchased a domain name that is a trademark of a company. For the sake of explanation, let’s say it’s www.JustDoIt.com. I was shocked that the company that holds the trademark (“Nike”) hadn’t snapped it up.
How can I go about introducing the idea of selling it to them, and negotiating a good price? Can I? Or will they demand I hand it over because the phrase “Just do it” is trademarked?
If that doesn’t work out, I’d like to use the domain name for a site I’m starting. The content is similar to what “Nike” sells (they sell sports equipment, I’ll be talking about sports equipment and hopefully pulling revenue from ads), and I think it’d be clever to use JustDoIt.com as the domain name. But I can’t actually call the site “Just Do It”, correct?
I recently purchased a domain name that is a trademark of a company. For the sake of explanation, let’s say it’s www.JustDoIt.com. I was shocked that the company that holds the trademark (“Nike”) hadn’t snapped it up.
How can I go about introducing the idea of selling it to them, and negotiating a good price? Can I? Or will they demand I hand it over because the phrase “Just do it” is trademarked?
If that doesn’t work out, I’d like to use the domain name for a site I’m starting. The content is similar to what “Nike” sells (they sell sports equipment, I’ll be talking about sports equipment and hopefully pulling revenue from ads), and I think it’d be clever to use JustDoIt.com as the domain name. But I can’t actually call the site “Just Do It”, correct?
IANAL etc.
You might want to have done this anonymously (not that it would really matter thanks to IP numbers) as even posting this question could be used as proof that you are carpet-bagging/domain squatting for profit. WIPO have historically favoured the company side in these disputes, especially with the thinking outlined by your question.
Using it to sell sports goods is a MAJOR trademark infringement as far as I know.
JustLeaveIt.
posted by bouncebounce at 6:50 AM on October 13, 2006
You might want to have done this anonymously (not that it would really matter thanks to IP numbers) as even posting this question could be used as proof that you are carpet-bagging/domain squatting for profit. WIPO have historically favoured the company side in these disputes, especially with the thinking outlined by your question.
Using it to sell sports goods is a MAJOR trademark infringement as far as I know.
JustLeaveIt.
posted by bouncebounce at 6:50 AM on October 13, 2006
Response by poster: If you'll see the first line of my question, I'm using "justdoit.com" and "Nike" as an example for the sake of explanation. The domain name I hold is entirely different. And my site will not be selling the same product, it will be a webmagazine talking about the product.
posted by saffron at 6:52 AM on October 13, 2006
posted by saffron at 6:52 AM on October 13, 2006
You should probably read the report entitled "New Generic Top-Level Domains: Intellectual Property Considerations" and this relevant FAQ by WIPO.
You should also read about their Uniform Domain Name Dispute Resolution Policy.
It's very very likely that if you approach this company about buying a domain name that references their trademark they'll just end getting the domain and not have to pay you a dime.
posted by bshort at 6:54 AM on October 13, 2006
You should also read about their Uniform Domain Name Dispute Resolution Policy.
It's very very likely that if you approach this company about buying a domain name that references their trademark they'll just end getting the domain and not have to pay you a dime.
posted by bshort at 6:54 AM on October 13, 2006
Second everyone else's post. You're on the losing end of this battle.
posted by Merdryn at 6:58 AM on October 13, 2006
posted by Merdryn at 6:58 AM on October 13, 2006
If you'll see the first line of my question, I'm using "justdoit.com" and "Nike" as an example for the sake of explanation. The domain name I hold is entirely different. And my site will not be selling the same product, it will be a webmagazine talking about the product.
Understood saffron, however, I can only base my answer on the examples you've given. Perhaps you should have thought out the examples better rather than getting sniffy with people who are giving you free advice. Really, you'll get your arse handed to you on this one.
posted by bouncebounce at 7:01 AM on October 13, 2006
Understood saffron, however, I can only base my answer on the examples you've given. Perhaps you should have thought out the examples better rather than getting sniffy with people who are giving you free advice. Really, you'll get your arse handed to you on this one.
posted by bouncebounce at 7:01 AM on October 13, 2006
I'm home depot. I buy a huge piece of land and put a store on the front half. The back half is vacant.
You come in, you build a store on the back half. You're only using 10'x10'. You start to sell books about building things, and turn a profit.
You come to me and ask if I'd like to now buy your store since it turns a profit.
I laugh in your face and point out that you built on my land, without asking me, and therefore it's already mine since it's on my land. I build a fence around the back half of my land and you're screwed.
Potato, potato.
posted by jimmy0x52 at 7:27 AM on October 13, 2006
You come in, you build a store on the back half. You're only using 10'x10'. You start to sell books about building things, and turn a profit.
You come to me and ask if I'd like to now buy your store since it turns a profit.
I laugh in your face and point out that you built on my land, without asking me, and therefore it's already mine since it's on my land. I build a fence around the back half of my land and you're screwed.
Potato, potato.
posted by jimmy0x52 at 7:27 AM on October 13, 2006
Yeah, the last thing you want to do is build a business on this domain name, since the company is going to want to protect it. They'll be able to channel all the traffic you build up to their site - when the judge awards them the domain name, and you repay their legal expenses.
Your best chance here is to make contact with the company's marketing department, let them know you noticed they hadn't registered the domain name, and help them take ownership of it.
If they're in a really good mood, and think there's a way to get some publicity, you might be able to get a box of free product from them.
posted by fcain at 7:33 AM on October 13, 2006
Your best chance here is to make contact with the company's marketing department, let them know you noticed they hadn't registered the domain name, and help them take ownership of it.
If they're in a really good mood, and think there's a way to get some publicity, you might be able to get a box of free product from them.
posted by fcain at 7:33 AM on October 13, 2006
If it's something that could reasonably carry meaning outside the context of the trademark, I think you could still make money off of it. As I understand it, trademarks only apply within a specific trade. So if you own "justdoit.com" and you turn it into the "Jewish University Student Training Department of Information Technology" or something, you might be able to hold onto the name, but only if Nike approaches you first and you act like the thought of their trademark had never crossed your mind. However, it's generally dishonest, it's a risky investment, and you've already given yourself away here.
posted by scottreynen at 8:11 AM on October 13, 2006
posted by scottreynen at 8:11 AM on October 13, 2006
As I understand it, trademarks only apply within a specific trade.
But the problem here isn't that it is a trademark. The problem is that it is a domain name, and there's specific procedures for resolving domain name disputes that you agree to when you purchase rights to a domain name. Domain name disputes are rarely pursued through the courts because it is a slow, unpredictable and expensive way to do it.
That process is the Uniform Domain Name Dispute Resolution Policy. That involves a three-part test:
The second two points are basically exceptions to the first: sure, the trademark exists, but the registration is in good faith for a pre-existing operation. This is how Nissan Computers still has nissan.com, but he had to fight tooth and nail to keep it, so don't expect to be able to fool a dispute panel (or, later, a judge).
In short, everyone figured out that domain name speculation on trademarks was a bad idea back in the 1990s, and the loopholes you might think of now were all closed a long time ago. The best you can do with that domain now is to use it for personal stuff expecting to have to give it up later, or just offer it for your costs to the company that owns the trademark (in an "I registered it, but then thought better of it" sort of thing). Assume that they'll want it eventually, so don't put anything important there, and assume that they'll be able to get it assigned to them without giving you a cent if they choose to pursue it.
IANAL, just a DNS administrator for a tech company, and TINLA.
posted by mendel at 9:04 AM on October 13, 2006
But the problem here isn't that it is a trademark. The problem is that it is a domain name, and there's specific procedures for resolving domain name disputes that you agree to when you purchase rights to a domain name. Domain name disputes are rarely pursued through the courts because it is a slow, unpredictable and expensive way to do it.
That process is the Uniform Domain Name Dispute Resolution Policy. That involves a three-part test:
- that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
- that the party that registered the domain name has no legitimate right or interest in the domain name; and
- that the domain name was registered and used in bad faith.
The second two points are basically exceptions to the first: sure, the trademark exists, but the registration is in good faith for a pre-existing operation. This is how Nissan Computers still has nissan.com, but he had to fight tooth and nail to keep it, so don't expect to be able to fool a dispute panel (or, later, a judge).
In short, everyone figured out that domain name speculation on trademarks was a bad idea back in the 1990s, and the loopholes you might think of now were all closed a long time ago. The best you can do with that domain now is to use it for personal stuff expecting to have to give it up later, or just offer it for your costs to the company that owns the trademark (in an "I registered it, but then thought better of it" sort of thing). Assume that they'll want it eventually, so don't put anything important there, and assume that they'll be able to get it assigned to them without giving you a cent if they choose to pursue it.
IANAL, just a DNS administrator for a tech company, and TINLA.
posted by mendel at 9:04 AM on October 13, 2006
i second scottreynen.
you have to pretend to be using the domain name in a completely different area. That way the company with the real trademark cannot say that it is confusing to consumers. (trademark law was actually designed to protect consumers, not so that companies could trademark everything under the sun.)
then make a site - put some contact info there - and if they want to buy it - they can get in touch. If you aren't too greedy - and they want it - you might get $5-10k out of them.
just don't put "this domain is for sale" or you'll tip your hand. and don't get greedy on the price, or they will decide that it's cheaper to go the legal route.
i'm not sure why the other posters think that you've spilled the beans on this since we have no idea what domain you've registered.
posted by kamelhoecker at 9:36 AM on October 13, 2006
you have to pretend to be using the domain name in a completely different area. That way the company with the real trademark cannot say that it is confusing to consumers. (trademark law was actually designed to protect consumers, not so that companies could trademark everything under the sun.)
then make a site - put some contact info there - and if they want to buy it - they can get in touch. If you aren't too greedy - and they want it - you might get $5-10k out of them.
just don't put "this domain is for sale" or you'll tip your hand. and don't get greedy on the price, or they will decide that it's cheaper to go the legal route.
i'm not sure why the other posters think that you've spilled the beans on this since we have no idea what domain you've registered.
posted by kamelhoecker at 9:36 AM on October 13, 2006
That way the company with the real trademark cannot say that it is confusing to consumers.
True for trademark law, irrelevant for domain names. All that matters is that the domain name corresponds to the trademark. It doesn't matter if it's your last name if the complainant can show that you registered it in bad faith.
This is not about trademark law. It is about the contract entered into when you register a domain. And the dispute resolution process is identical in every contract with every registrar. (And the trademark holders' legal departments will be better than you at navigating it.)
If you want to get a feel for what UDRP decisions look like, they're browsable and searchable.
posted by mendel at 10:15 AM on October 13, 2006
True for trademark law, irrelevant for domain names. All that matters is that the domain name corresponds to the trademark. It doesn't matter if it's your last name if the complainant can show that you registered it in bad faith.
This is not about trademark law. It is about the contract entered into when you register a domain. And the dispute resolution process is identical in every contract with every registrar. (And the trademark holders' legal departments will be better than you at navigating it.)
If you want to get a feel for what UDRP decisions look like, they're browsable and searchable.
posted by mendel at 10:15 AM on October 13, 2006
This thread is closed to new comments.
posted by cosmicbandito at 6:47 AM on October 13, 2006