I’m a very casual domainer and have been buying some domains here and there over the last few years. One of the biggest mistakes I see new domainers make is buying domains with trademarked terms in them. I monitor NameJet for certain terms that drop, and have seen lots of obvious examples of trademark-ridden domains that have gone into auction at ridiculous prices. Do NOT be one of these people.
There’s obvious trademarks, but I fell into the not-so-obvious territory just a few months ago. This territory is real estate. I ended up picking up realtorsarasota.com for just under $500 in a NameJet auction for a friend of mine who is an actual Sarasota Realtor. Soon after I got cease and desist letter from the National Association of Realtors telling me to stop using the domain.
Since I had no legal ground to stand on, I had to redirect it to realtor.com until the domain name expires. A quick $500 down the drain. Similarly I have a friend in the industry who may end up losing his domain with the term “MLS” in it. That too is a trademark of the NAR.
When it comes to real estate domains, do not go after anything with “MLS” or “Realtor.” (Real estate, agent, homes, etc. are fair game since they’re generic terms.) About a year ago I saw therealtor.com dropping from SnapNames and the auction was already over $1000 – makes me feel sorry for whoever won that domain.
This lesson applies to most domain purchases. Before you spend a lot of money on a domain (through a drop, private purchase, or new registration), be sure that it does not include a trademarked term. This is a lesson that diggdotus learned the hard way – Digg’s legal team forced them to change the domain because it included Digg’s trademark.
Some companies don’t go after domains that contain their trademarked term (like Google or Flickr), BUT they have every legal right to and might change their mind down the line. It’s best to avoid that situation all together.
The lesson here: check copyright.gov before you spend big money on a new domain.
If you want to learn more about copyright and trademark issues, check out Sarah Bird’s posts on Seomoz, here’s a good one to start with about Zappos.com.
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{ 16 comments… read them below or add one }
Markus,
Good advice. You are correct in that “Realtor” is trademarked by the NAR (National Association of Realtors). However, “MLS” is not trademarked by the NAR. Major League Soccer owns that trademark but they most likely won’t come after anyone for trademark infringement.
A Realtor Association may pursue an infringement case against if they feel a domain name is violating their service mark. Most Realtor Associations don’t have a trademark for their MLS system. For example, the Miami Association of Realtors could possibly come after you if your domain name was MiamiMLS.com. Or my case the Sarasota Association of Realtors is coming after me because my domain name is TheSarasotaMLS.com. It is up to each association as to whether they pursue a lawsuit or not.
Thanks for clarifying that, Marc. Good luck with the domain.
Good advice. I’ll think twice before purchasing a domain containing a trademarked name.
Great advice! This factor is very important to consider before purchasing a great domain :)
Good post. See your point. I can tell you from the other side however that this protection is often a good thing. We had a case of someone using a similar name to ours. We threathened action (not certain as to our right to prevent but willing to go all the way) and they dropped the domain.
I have every sympathy for your friend who had a genuine interest in the realtor domain but this protection exists to reduce domain hijack and ransom sale offers.
There will always be a middle ground of genuine buyers who get caught by laws aimed at disengenuous buyers but this sort of post may protect some people from losing money. Well done.
Good advice. I’ll think twice before purchasing a domain containing a trademarked name.
Good advice. I’ll think twice before purchasing a domain containing a trademarked name.
Oops, I mis-posted this under another article. A few years ago I thought of a clever name, HarleyWorking.com. I registered it and soon found out that Harley-Davidson is one of the most aggressive name/image protectors around. I had an officious snail-mail letter from them in my mailbox in no time, even though I had never even pointed the DNS server to a parking page. Mine was just a speculative $10. mistake, though.
Don’t forget that trademarks have limited scope. If I started a computer firm and called my product Apple I might be in the brown smelly stuff but if I started a hat makers and called a product Apple that would be fine.
to reassert what the above poster said; if you registered diggdiggdigg.com and used it to create a site dedicated to archeology, digg.com would have no legal recourse to come after you. If you used it to create a site similar to digg, or (as i have seen for some google domains) framed the orignal site with your own ads, they have every right to come after you.
Here goes the story how the guy lost $150k in trademarked domains and then lost a case against Mr Porsche:
http://Dot-Me.Of-Cour.se/2008/10/24/porsche/
I see many people register trade marked domains these days thinking they can flip it for big money hahaa. @brands damnn 150K lost that sucks. So what if one registers a trademark domains and just makes it sit doing nothing can he be sued for?
wow! it is actually scary.. In a different situation, how could you know all trademark names before you get a domain? it sounds ridiculous..
if assocations don’t want their names taken, they should find a different method to prevent people taking those domains.
It would be scary if you bought a domain, then later someone trademarked the domain name, and will sue you to get your domain. Freaky laws >_<
Wow.. that was a lot of money… I just want to ask you, if you have alot of domains, what will you do? Developing a website? Or parked? If you develop by yourself, wow.. it takes alot of time dud, and also money. But if you park it, well… it’s useless.
Some domains we’ve developed, very few are parked, some we’re just holding on to because we think they will have some value in the future (whether we sell them or develop them). Tons more we let lapse :)