What's your trademark due dilligence when registering domain/biz?

[FastNAwesome]

Hi everyone,

It's known that registering a domain or company under the name someone else has trademark claims to can be troublesome.

To avoid this, what's your due dilligence before registering a domain, or a company under certain name? What are you experiences with the issue?

Do you:

1) Do your own research (here's one very useful article on how to do that - How to Obtain a Domain Name that Does Not Infringe a Trademark)

2) Hire a trademark attorney to do this for you - and can such act free you from responsibility and outrageous $ claims - as you've demonstrated your commitment to respecting the trademark laws.

3) Something else...?

 

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[FastNAwesome]

Anybody? Hopefully you don't just go ahead and register domains just like that.

Well, I decided to dig into this, so here's one more very valuable resource if anyone ever interested. And my questions still stand.

Chilling Effects Clearinghouse

 

[30yomillionaire]

From what I know worst that can happen is decease to exist letter if you buy a domain like fastNaweseomITunesAppStore.com

 

[kwerner]

Google search. But if you're really paranoid, uspto search should do.

Personally, I've never once did a search for any domains I've registered, but I'm not trying to build a website that copies someone else's company (e.g. the guy that got sued for the Nissan.com website).

Don't overthink it man.

 

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[fm1234]

The UDRP guidelines for trademark infringement on domains lay out the specific guidelines that it considers trademark infringement by bad faith. The Chilling Effects site has a section on the UDRP here

@30yomillionaire Actually, you can be fined up to $100,000 for trademark infringement via domain names, per occurrence, and that's before any criminal case (should one be called for, which is extreme, but does happen.) If you lose a UDRP filing, at a minimum you'll lose the domain, be fined $1,500 and -- typically in repeat cases -- be politely asked by your registrar to take your business elsewhere.

@kwerner The Nissan.com case is a trademark bellweather, but Uzi Nissan was not found guilty of trademark infringement (I mean, his actual name is Nissan, which is not an uncommon Israeli named; he owned a business called Nissan Computer, which was founded back when Nissans were still being marketed as Datsuns, etc.) There were lots of items in his favour in his case, which the court bizarrely ignored and ruled against him, but that was reversed in appeals. As of 2005 the case had gone all the way to the Supreme Court, who tossed it out and told Nissan Motor to pound sand.

Some history and court docs on that case here in case it's of interest. Not trying to be a know-it-all; it's just a pretty interesting case historically, but unfortunately posterity remembers Uzi Nissan as "getting in trouble for copyright infringement" when things didn't really shake out that way in court.



Frank

 

[fm1234]

I forgot to mention -- the Legal Issues & Disputes section at Namepros.com is an outstanding community for researching domain name legalities. (Can't link it directly, as it's members only -- the forum is free, but that section is blocked from search engines and casual surfers.)


Frank