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Domain Tasting Bad Aftertaste - Open Call for a Trademark Blacklist
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April 9th, 2007 by 
Jay Westerdal
Trademark holders are angry about people making money off their Brands and Marks. The Trademark Holders will combat Domain Tasters with their greatest weapon, hand-to-hand combat in a court of law. It would be nice if trademark holders could broadcast their Marks to a Trademark Tasting Blacklist ahead of time. I believe everyone is good at heart, even Domain Tasters, so DomainTools will start publishing a Trademark Blacklist for free starting next month.
Domain Tasters are free to download this list and we advise them to filter against it. Because Trademarks can be added to the list at anytime, it would be advisable to also scrub portfolios of domains that appear on the Blacklist. A Trademark Blacklist is a double-edged sword. The Blacklist will contain typos based on those marks and the actual marks themselves but the list could be used for evil purposes. Some wise guy could register all the names on the list. This goes back to the belief everyone is good at heart or perhaps that a lawyer will nail them for a $4,000,000.00 lawsuit. Either way, we hope the Trademark Blacklist is only used for good. Also, we will focus a big spotlight on the Blacklisted strings, focusing on the top abusers (AKA Lawsuit Targets) ranked by Registrars, Registrants, and possible Ad Networks.
We will make it a policy that Trademarks on the list must be at least 5 characters. So if “Ebay” was put on the list, it would be a reserved word and no typos would be generated for it and placed on the list. The drawback is that names like, “Chesapeake Bay” would be technically off limits because it contains the string “ebay” to a Taster who followed the voluntary “Trademark Blacklist”. That is a trade-off, but hopefully a trade-off that Tasters can live with. Four character words will be added to the Blacklist very carefully. We need to draw the line though, Three character strings would not be allowed at all. For example “AOL” would not be possible to be protected at all.
Simple Rules:
- Marks must be at least 5 Characters long, sorry Nike.
- Marks must be all three: 1) Famous, 2) Well Known, and 3) USPTO Registered.
- There will be few reserved words on the list like “Bank” and “Ebay”
Tasters should never register domains that contain these reserved words. - Marks can only be placed on the list by Registered Attorneys, DomainTools Staff, and Domain Tasters.
- We will be generating Typos on all protected Marks and those will be on the Blacklist.
- The “Trademark Blacklist” is completely voluntary for Domain Tasters.
We will be announcing more as development matures on the project, for announcements please subscribe to the DomainTools Blog.
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Posted in Domain Parking, Domain Tasting, Trademark Blacklist |
April 9th, 2007 at 2:47 pm
Jay,
While I truly do love your idear, I am not sure I would go so public with it for two reasons:
1. First and foremost, you are going to get the attention of some very ‘unsavory types’ who make a substantial living on the methods that you so vigorously oppose (and rightly so). These folks could cripple domaintools as a whole and as a webmaster who uses domaintools several times per day, I would hate to see you incur the wrath of some of these ‘radical fringe spammers/scammers’.
2. See #1. Seriously though, it would be a great idea, but needs to NOT be a free service and should be ‘fee based’ that would require account activation with a credit card (not saying that this will protect you 100%, but it helps)
Anyways, we wish you well with these endeavours and continue ‘fighting the good fight’!
April 10th, 2007 at 5:22 am
I don’t think this will work. I parked a domain called sexbox.abc (abc stands for a country-code TLD) at Sedo. One day, I got a message from Sedo that my domain was blocked due to trademark infringement. When I asked back, what trademark they meant, they appologized, and said that they run an automated program, that banned any domain containing “xbox”. Not very good!
Also, how about “apple”? Would you ban applejuice.abc?
April 10th, 2007 at 6:58 am
freakinvibe, “apple” would not be allowed on the blacklist, this is a generic dictionary term as well as a computer company. Miss-spellings of generic terms are not a problem, there is no infringement unless the website confuses people. “TheBestAppleAndOranges.com” which dealt in fruit could not be confused. If someone owned “Apple-Computer-Devices.com” our blacklist would not find it. But I am sure Apple’s lawyers can find it another way. Our blacklist is not designed to spotlight all problems, mostly its purpose is to help spotlight typos on famous marks.
We will only spin five+ character strings for typos. “xbox” is a four character domain and could only be put on a reserved word list. Reserved words are going to be added very carefully and with extreme caution. We know words run together, we have been operating Name Spinning software for the Industry for several years.
matrix, by publishing the list we will be focusing a spotlight on the bad names. I doubt people who want to hide will come into the path of this spotlight.
I have talked with three large tasters in the last 24 hours and they have said they would use the blacklist. They were excited that a third party would be helping.
If one of their names in on the blacklist, they can manually review it, this list is completely voluntary.
Just as a sidenote: We will also be creating a whitelist to scrub out false positives before we publish the blacklist every day.
April 19th, 2007 at 11:21 am
I see the issue, but I do not agree with the proposed Blcklist. Wow, there are many legitimate reasons to own a domain with a trademark in it, even if there is no relation to the trademark owner.
I ask you this. You reading this, you’ve all been on the Internet for six to ten years probably, at least. How many times have you encountered a website that explicitly states, not in fine print but in bold text on their homepage, that THIS WEBSITE IS NOT AFFILIATED WITH SO-AND-SO?? I have seen numerous examples. Why? Because if I like Coke or Apple or I hate Chevrolet or Bose products, then I have always been allowed to register a website with those words in it. Sure, I can’t go register Coke.com, but I could own apple.com or boseproductreviews.com and no one would be able to say I couldn’t. If I registered Shevrolet.com (owned by someone in Beijing, China) what would anyone care?
You see, trademark infringement is open to a court’s judgment, it cannot easily be made cut-and-dry. Just because I say Shevrolet doesn’t mean a thing UNTIL I MANUFACTURE A CAR WITH THAT NAME ON IT which would confuse consumers. In the meantime, I could possibly be a MANUFACTURER OF CHEVROLET GUITARS or KNIVES or own a business called CHEVROLET CONSULTING and I would probably not be infringing on General Motors. I could be sued to determine this, but the courts typically will allow people to use generic-enough words to describe a lot of things unrelated to a trademark.
One of the oddities about Apple, by the way, is their dispute with the Beatles over the Apple trademark. Apple (1) started in the United States as a computer company, while the Apple Corps (2) was a U.K. company. They struggled for years over whether the (1) could sell products made by (2). See http://money.cnn.com/2007/02/05/technology/apple/index.htm
And of all things, this is in respect to a generic English word that is probably a 1000 years old in usage. Think about how confusing it gets when you restrict things like “Compaq” on the Internet, when there are potentially many people who are legitimate Compaq product resellers, repairmen, etc. But maybe other companies who do not resell products would want protection, I understand. Verisign may not want a domain called “verisigndomains.com” to exist. In fact, I would like to see if someone registers that today. Go ahead and try and see what happens!
In short: Compaq may WANT people to use their trademark to sell their stuff. Verisign may not.
So it’s not a one-size-fits-all-trademarks, not by a long shot. Do you know how many resources it would take to manage this Blacklist? Try a bunch of full-time folks. I hope it is a profitable endeavor, because it is going to be expensive to run and handle. Charge a bunch of money to see the full list. It sounds like a big mess to me, and I hope you check out some trademark attorneys on this. Some international ones, at that.
April 21st, 2007 at 10:05 am
uruiamme, The domain Shevrolet.com is confusing. I grant you the point that anyone could own it, but when they redirect it to a portal about buying cars that confuses the public. The owner is capitalizing on the traffic trying to see Chevrolet. Had the owner put up a page about non car things it would have been fine. It does depend on how a domain is used, the name itself is not enough in most cases. We agree on this point. I think people should be allowed to register domains that could be similar to other people’s trademarks, perhaps they should be advised ahead of time that use of the name Shevrolet relating to cars is going to be a problem for Chevrolet’s lawyers. If a trademark is not defended by the owners of that trademark then the trademark is no longer valid and will slip back into public domain. Clearly Chevrolet does not want people producing things with their name on it related to cars.
May 8th, 2007 at 9:21 am
Why only USPTO Registered trademarks? I’m sure a lot of European companies are willing to sue you to get listed if you don’t accept EU trademarks.
/Andreas
May 8th, 2007 at 9:45 am
Andreas,
Let’s see how our trail with USPTO marks does. I hate to but many of the lawsuits are in the US and so are the Tasters.
May 11th, 2007 at 5:32 am
#3 “There will be few reserved words on the list like “Bank” and “Ebay” Tasters should never register domains that contain these reserved words. ”
what am i missing? how is any domain name with “bank” in it off limits?
marcia lynn
May 11th, 2007 at 9:39 am
I guess never is a strong word. However it would be good that the Registrar confirm the purchase of anything on the list manually with the registrant. It would slow a phishing attack and I doubt a really bank would mind an extra day’s wait for a new domain. Anyone could register a bank domain name, like DomainBank.com or BloodBank.com. But if the name was BankofAmmmerica.com the registrar would use common sense.
June 17th, 2007 at 1:59 pm
To reopen this a bit, let me revisit how a trademark is registered with the USPTO, http://www.uspto.gov/. First, a determination needs to be made regarding what _trade_ we want our _mark_ to be registered in. That’s the crux of the registration of the mark in a _trade_. And when you look at the application, there is a humongous list of registerable trades, from automobile manufacturing to xylophone manufacturing. I haven’t did a little research and found this for one Chevrolet trademark:
“beds, chairs, clamps, desk ornaments, jewelry boxes not of metal, non-metal key chains, non-metal key fobs, non-metal key holders, non-metal key rings, non-metal key tags, non-metal license plates, mirrors, non-metal money clips, plastic name badges, non-metal name plates, picture frames, pillows, plaques, plastic flags, plastic storage bins, seat cushions, stools.”
This is LIVE and registered to General Motors. #2678153.
Okay, so you see, in order to claim the trademark, GM had to register it, pay a fee, and say, “We want to be the only company to manufacture Chevrolet pillows and seat cushions.” The USPTO told them, yep, you da man, here’s your number.
So we see, that as long as I am doing some unrelated trade, there is no trademark protection. If I had a website which was selling Chevrolet cars, I could be protected by virtue of the fact that I am not making them, the trademark owner is — no infringement. (Hence dealers use Chevrolet in their domains all the time.)
But as you know, if I start referring to these cars same cars as Shevrolets, I could be an infringer. I am misrepresenting GM’s trademark. No matter how legitimate my business is, I can’t call them anything but Chevrolet, except as protected free speech, like “I sell those Stupid-olets” but that would not necessarily be protected in an advertisement, but on a blog it would probably pass.
So if I titled my blog Shevrolet.com and disparaged the name I would possibly be protected, but if I sold real Chevrolets there, I might be an infringer!
Now back to where I started. It is unlikely that Chevrolet is registered as an online source for searching and delivering results for used and new car prices. That could make the Shevrolet.com domain be able to run that legally, even in the US. I wouldn’t try it; GM has too many lawyers. But in effect, the USPTO may see no problem in this. The courts are the only place to decide, besides arbitration. But your project is already sounding pretty complicated to sort this all out with a simple list or two.
July 24th, 2007 at 12:16 pm
A similar topic to this … but not really. Is it legal for a company to use your trademarked name as a pay per click campaign. Sometimes my competitors will put our company name in their listing, other times it’s just the keyword, but not in the copy. But aren’t they both illegal?
UPDATE BY JAY: No it is not illegal for someone to use your company name to trigger an ad. If it is done in a way that confuses people then yes.