By now everyone knows that Rick Schwartz prevailed in the UDRP filed on Queen.com. There was also a finding of RDNH.
Last year Mr. Schwartz was dealing with enforcing his trademark for “Domain King.” While he lost his dispute for DomainKing.biz some of the comments on our two posts about Rick enforcing his trademark for “Domain King” left me scratching my head.
Frankly I was pretty shocked to see the lack of knowledge about trademark law from the domain community
Simply put if you are a serious domain investor, you need to know trademark law as it relates to domain names.
I’m not telling domainers to go to law school.
I’m also not telling domain investors to self-represent themselves and not seek out legal advice from established attorney’s who regularly practice in the domain/trademark space.
Actually I have had representation for the 10 UDRP’s we have been hit with since 1997. I would advise everyone who has a UDRP filed against them to have representation.
But you do need to have AT LEAST a basic knowledge of trademark law if your going to be a domain investor.
If you don’t know how to register a domain name you have no business being a domain investor.
Likewise trademark law is a pretty integral part of domain investing and if you don’t know anything about trademarks you are going to potentially get in trouble.
Here are some very troubling comments left on the two posts:
“Nothing unique about the term “Domain King” anybody could’ve come up with that.”
Sure just like Facebook which is two common words Face and Book.
How about Tractor Supply? Is that unique? Of course not; it’s quite generic actually, yet the company Tractor Supply Co. of Texas which trademarked the term has won 19 UDRP’s with no losses defending their mark.
“Domain King” isn’t a popular, world renowned brand. ”
Unlike CocaCola, Domain King is not a “world famous” trademark!
A brand or trademark doesn’t have to be world renowned or even famous under trademark law, there are a ton of cases where domain holders have lost domain names to “brands” that you have never heard of.
It’s ridiculous how someone can just feel entitled to owning the two words domain king. Utterly absurd. So if I called myself ‘The greatest dad in the world’ Trademarked it and bought the dot com, that means nobody else in the world can be ‘The greatest dad in the world and purchased the dot net
Well the domain ZT.com was lost in a UDRP, so was the three letter domain EHF.com, so yes you can make up a term or a phrase and trademark it. You can even trademark a phrase that’s been around for a very long time.
Ever hear of the world famous brand Sound Stop?
Me neither.
It was lost in a UDRP.
He owns a trademark in the USA & Europe, he does not have a GLOBAL TRADEMARK
Where do you apply for a Global Trademark?
UDRP panels regularly rejected the argument that the domain holder had no actual notice of the trademark, the filing of the trademark generally put domain holders on constructive notice that there is a trademark even if in a different country where the domain holder lives. Many UDRP panels have gone further and held the domain holder to a standard that they need to do a “simple search” to determine if there is a trademark.
The shoe is on the other foot, he is retired, no longer using such a moniker.
and
Domain is generic, King is generic
and nobody needs a King !!!
See this example given by nolo.com in a story about enforcing trademark rights:
“If Kristin, a probate attorney, puts up a website to offer her services under the service mark Probate Queen, her service mark will be in use as long as she is ready to respond to customer requests for her advice.”
Simple
Also remember most trademarks are registered by companies not people. In this case “Domain King” is registered to Virtual Dates, Inc which is a Florida Corporation which owns thousands of domain names. What the principal shareholder’s daily activities consists of is not relevant to the trademark.
I am not a lawyer. I am stating my opinion. It is pretty obvious the owner either knows he is in violation or he does not know.
That is the point of this post, although you are not a lawyer you need to know trademark law if you’re a serious domain investor.
As to “It is pretty obvious the owner either knows he is in violation or he does not know”
Yeah what is the third choice?
I’m very curious to see how enforceable this is. I’m also curious if these companies are aware of Rick and his “Domain King” moniker
The Lanham Act, 15 U.S.C.A at § 1072which is a federal law dating back to the 1800’s says in part:
“Registration of a mark on the principal register provided by this Act or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant’s claim of ownership thereof.”
15 U.S.C. §1115 goes on to state, in part.
(a) Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a mark registered on the principal register provided by this Act and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration…. [emphasis added]
This means that the fact of registration itself provides sufficient evidence (“prima facie”) of a Complainant’s rights in the mark, leaving it up to the Registrant to rebut such evidence.””
Of course trademark law is complicated and is subject to various factors as has been interpreted by courts and UDRP panels differently, which is why I would urge anyone facing litigation to consult with a trademark attorney.
Will the US TM do? Or does one need to have a Nigerian one?
Really?
Schwartz’ history and occupation for so long, him not immediately registering DomainKing in every extension he cares about is malpractice.
Big brands with billions of dollars in market cap generally do not register every domain in every extension, they wait to see if the domain is registered and the use its put to then take legal action where they deem warranted.
A Trademark is supposed to be used for business. I don’t know Rick, but he himself in a post said he was not going to be active in the industry AS MUCH. bottom line, Rick is a guy who got there first, not a domain king
Again the domain in question is registered to a company, not a person, how active is Bill Gates in Microsoft? I have no idea, every time I have seen him on television interviewed in the past few years he talks only about his charitable endeavors; but what does that have to do with how enforceable Microsoft’s trademarks are?
“This is not true. A trademark is only enforceable in the country it is trademarked in”
No its not!
Then there are comments that are so far outside of the rules of trademarks I have no comment, just repeating them here:
Whoever gets to the top first should get rights to prevent others from using their mark. If the two companies are identical in trade, the company that gets popular first, so much so that when the average person around the country or world when asked if they’ve ever heard of that brand, say yes, should prevail. And in this particular situation, the self proclaimed king of domains is not popular enough and never will be. So the .ng guy should be allowed to stay with his domain. Because nobody really cares. Except for the egomaniac Schwartz. And really where’s the confusion? Schwartz’ domain points to his blog, whereas the other guy runs a site were it’s clear he’s in the business of selling domain names.
So say this guy knows exactly who Schwartz is, and he said to himself “hey I like the way that sounds, “domain king” I should start a domain registrar with that.” So what? Now why should that be illegal? Because another person feels entitled to own the term ‘domain king’? Other people aren’t allowed to want the same name? They aren’t allowed to have ideas too?? There can only be one “Domain King”? Ridiculous. TM system needs to be fixed. And yes obviously, there can only be one McDonald’s, only one Taco Bell, only one Netflix. But thats completely different. Why? Because they became successful and became popular to the masses all over the world. If the self proclaimed king of domains was as popular as those corporations, then maybe I’d agree with his UDRP bs. You want to be the sole king of domains?
One commentator actually nailed it:
“These posts clearly indicate the limited knowledge of trademark law readers have. And clearly shows why domainers are called cybersquatters.
First of all no term has to be “famous’ to be protected so just eliminate all these idiotic comments.
Fame is acquired over time and advertising expenditures which has to be documented, proven and is subjective to the USPTO board.”
The same commentator was the only one to point out that the fact the domain name registrar moved the domain name that day the administrative proceeding was filed and our story published indicates they recognize they have an issue and their domain is in jeopardy
“With the domain name being moved to another register so quickly which can be documented clearly shows beyond a reasonable doubt the current register of the term “domain king” is fully aware this is a federal registered mark, and registered domain king in bad faith.”
Another excellent comment came way of Joseph Peterson:
I’d applaud Rick Schwartz for enforcing his mark. And not jut because he’s protecting what’s his. Showing that the domain industry takes trademark rights seriously lends credibility to our protests against both cybersquatting AND reverse domain name hijacking.
So if your interested in learning more about trademark law and UDRP’s look no further than Gerald Levine’s book on the subject.
I feel like I took a college course, very well done Michael.
thx for this.
Very nicely put 🙂
Ignorantia juris non excusat
from Levine’s words:
“If there’s a trademark infringement it belongs in federal court. Some panelists want to remake the UDRP to be an administrative version of the ACPA. This is a huge mistake in my opinion.”
“has been the attempt by a few influential panelists to change its construction to allow for forfeiture regardless of good faith registration if domain names are subsequently being used in bad faith.
This view, which hasn’t really gotten anywhere and to my mind is a dead end, attempts to bring the UDRP into alignment with the ACPA.”
“It is important to understand that holding domain names for sale or using them to generate revenue as search sites is not unlawful even though they may be identical or confusingly similar to trademarks.”
“This means that the fact of registration itself provides sufficient evidence (“prima facie”) of a Complainant’s rights in the mark, leaving it up to the Registrant to rebut such evidence.””
Mike, could you explain the above in layman’s terms.
Thanks.
If I recall correctly, Michael Berkin, Esq. is a tax lawyer. But, he hired a specialist to represent him in the different UDRPs.
Mike, I compliment you on pointing out the misconceptions some domainers have about TM laws.
I have a good understanding of TM laws but I still rather ask an expert than make an assumption which could be costly.
Just yesterday, I asked Steve Lieberman about an outside chance of a TM threat about one of my domains.
Trademarks are out of hand. The laws from the late 1800’s and early 1900’s were surly not intended to block capitalism. At this rate all words and common phrases in the English language will eventually be trademarked this same nonsense is carrying over into everything from reselling products on sites like Amazon and eBay to designing print on demand tee shirts. It is utter nonsense that someone could trademark something like “have a nice day” or “thank god it’s Friday” and then no one else could ever use those statements on a product they intended to sell ever again. These laws need to be updated period. Times change, business models change, laws need to change with them.
Very informative… Thank you.
You can’t compare Facebook to Domain King. Nobody knows who Schwartz is other than the readers that frequent domain blogs. And that’s a very small number compared to the 2 billion that use Facebook and the other gazillion around the world that have heard of it. It’s clear why Schwartz wouldn’t get the protection Facebook has. Two Facebooks couldn’t exist because that would confuse people. 2 domain kings, nobody cares.
After being hit with a udrp and loosing a domain name. I thought myself tm law and I am dam good at it. I was pissed off how much these tm lawyers charge, and misrepresent the facts. And what followed was I ripped a competitors tm off the principal register. And their tm attorney had to tell his client how he screwed up. In a another case I owned a descriptive mark and a high powered tm law firm tm the phrase. I own the domain they own the tm, there is no likelihood of confusion or riding on goodwill as stated by the TTAB board. The law firm spent 30k on their answer. And they own a tm without the domain. A billion dollar SCREW UP. If they decide to implement a UDRP or any other action I have a TTAB decision validating my position. I was proactive. When a domainer knows tm law they can slice a tm attorney up. This is a big deal with large money on the line, egos, and a domain name at risk. This humbles a tm attorney as they never see this coming. The first thing a tm attorney does is research who they are fighting, a domainer that has no license!
I have a company word trademark that is the same mark as a French company. I filed for the mark before the French company buy my mark was registered later because of amendments. Before the internet, both our companies could carry on business in our communities without brand conflict. Now with the internet, keyword search brings up both of our businesses lets say on the same market street. I couldn’t care less since our services are different. But, the french company may care for the dot com one day and start a legal battle. The internet has made trademarks a messy business that profits the Layers.