At what point are you a serial trademark infringer?


Good Afternoon folks!!
At what point are you a serial trademark infringer? I think that is a fair question.

I have heard every excuse in the world for owning trademarked domains. That
is what they are, excuses.

Now let me tell you how I view it. When you have thousands of domains there
are going to be a small percentage that could eventually be challenged. But the
keyword is SMALL PERCENTAGE!

So if you have 100,000 domains and 10,000 (10%) are questionable, you ARE a
trademark infringer.

So if you have 50,000 domains and 2500 (5%) are questionable, you ARE a
trademark infringer.

So if you have 10,000 domains and 500 (.5%) are questionable, you ARE a
trademark infringer.

Now let's work it backwards and see. I think it is possible for a TINY amount of any
portfolio to possibly have a few questionable domains. It is the nature of the business and you never know who will challenge what, but some are in your face obvious.

10/1000? Ok and THAT is even high!!

But as a rule of thumb, that would make a portfolio with 100,000 domains
have 1000 possible infringements. I believe that number is still high and unacceptable. 1000??
Come on! There is no excuse for that. What number is realistic? Maybe 100. 1 in
1000? 2 in 1000? THAT is where I would say a portfolio should max out. Really,
anything more and you could be labled a serial infringer. 1 or 2 in 1000. 3? 5? What is an acceptable rate from where you sit?

Newbies are coming in and all they do is buy this garbage. They make us
look bad and put themseleves in lots of legal jeopardy that has the potential to blow up
in their faces.

Why is this important? Because 'Ambulance chasers' have found a more
rewarding and lucrative pass time. They can mass email domain owners and rake in domains and
dollars like a casino clearing the craps table.

Be warned just how widespread this is about to be. If you are a serial
trademark infringer, it's gonna ruin your day. At some point we are all in the
same cesspool when anyone from the outside looks in and that is why everyone
should care about this. On the other side there is a lot of over reaching. Those
that think they are entitled to what you own. But it is FUELED by the
infringers themselves for making this such a fertile ground of TM
abuse.
Have a GREAT Day!
Rick Schwartz.



6 thoughts on “At what point are you a serial trademark infringer?

  1. M. Menius

    @Rick -“But it is FUELED by the infringers themselves for making this such a fertile ground of TM abuse.”
    Bingo! For every domainer who assembles a clean portfolio, there is a rampant TM infringer who gets 95% of the media coverage. And that coverage will be insanely critical and jaded … spilling over onto all domainers.
    I believe it is getting a little better, really. But it’s amazing how the press loves dirty laundry over a good story.

    Reply
  2. Steve Kaziyev

    Rick,
    Besides newbies, I’ve also met some old timers that are profiting from TM. I’m doing this 3 years and had 4 names that were infringing, i didnt know at the time that i was but have stayed away from TM since then and suggest all to do the same. By the way those 4 names were,
    AmericaOnlineMortgage.com, HomeDepotMortgage.com, AdvantaFunding.com and AcademyAwardsPreview.com. Never again.

    Reply
  3. RegFeeNames.com

    I have a few poss TM names but Im talking about 4 or 5 and they were all bought to be used as developed sites they are”sucks” domains
    Still I agree that many people come into this industry looking for a quick buck and buy these TM names I know one person who started buying google names and that was it when he started out he owned around 300 google names and hoped google would come along and offer him millions for the names – He even emailed them to offer them for sale!
    google ignored him and the owner eventually let them drop and realised that you have to work to buy and build a stong portfolio of great names.
    There are some big guys out there and they make alot of money owning these names but more of them are being closed down and facing wipo and im glad to see this.
    There are still good names out there folks we should do our own work and pick them up or if you want to buy generic domains then do a deal with some of the lenders out there and work your ass to make your investment work!
    Good Post Rick but here is a question for you.
    is a doamin like wwwdomain.com or wwwsex.com etc – would you say that is a trademark infringement?
    Regards,
    Robbie

    Reply
  4. Sid

    Trademark infringement and bad faith registration are two sides of the same coin. What is not often addressed in domain blogs and forums is the extent to which intent and motive can be determinative of the outcome. There are thousands of descriptive, generic dictionary words that have been trademarked for non-descriptive uses. That doesn’t mean domain registration of such words is infringing or bad faith without knowing more.
    Hypothetically, if you register sting.com with plans for a million dollar payday when you sell it to the rock star of the same name – think again. If you register target.com for the website of your shooting range, that’s not likely to infringe on the rights of the retail giant.
    It’s important to understand genuine intent will usually be inferred from outward actions and behavior. If you declare your intent is “A” while you hype and price your domain based on “B”, it’s “B” that you’re going to answer for. Despite repeated assurances to the contrary, when actions support intent that is clearly calculated to benefit from the popularity and value of a protected name or mark, there’s going to be trouble. It’s not difficult to understand why developing a website to demonstrate a non-infringing use can be so important.
    For the reasons set forth above, I ask that the following language be incorporated into contracts for the sale of domain names offered by my company:
    DISCLAIMER: A generic or descriptive domain name that does not infringe on the rights of a third party may potentially do so if the Buyer and/or End User subsequently uses the domain name for a specific class of goods or services in which a third party had previously acquired trademark protection for a similar or identical name. Seller specifically disclaims any and all liability in the event of such subsequent domain name use by Buyer and/or End User. For issues or concerns relating to domain name usage subsequent to sale, Buyer and/or End User should seek the advice of a trademark attorney before entering into this or any domain name purchase transaction.
    I believe this language acknowledges the potential for conflict, but also evidences sellers’ good faith intent and future expectation. The rest is up to the buyer.

    Reply
  5. Danny Pryor

    Yeah … we made the newbies’ mistake and grabbed what we thought were fantastic names … but they included company names and trademarks. We’ve taken them all offline and are just letting them expire. Can’t risk it for ourselves OR for the industry. We must be self-governing, lest some flake (or 100 + 435 flakes) decide to govern us instead.

    Reply

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