Trademark terms in domain names

Discussion in 'Legal Issues' started by legal-nurse-consultant, Jun 12, 2006.

  1. #1
    My client has a registered trademark and they want to know what other websites are using it in their domain name. Is there any way to get a list of all domains with that sequence of letters in the url?
     
    legal-nurse-consultant, Jun 12, 2006 IP
  2. Smyrl

    Smyrl Tomato Republic Staff

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    #2
    Try Google search inurl : phraseorportionofphrase. Leave no spaces before and after colon.
     
    Smyrl, Jun 12, 2006 IP
  3. Leo727

    Leo727 Active Member

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    #3
    The Google search above is okay, except it won't show domains that don't have websites (i.e. they are registered but not hosted).

    The site below has a domain substring search, it works well :

    http://www.domainsurfer.com

    BUT you should also do research on 'Reverse Domain Hijacking' - that occurs when companies try to claim that domains are unlawfully using their trademark, but in reality the law states that the domain owner is doing nothing wrong. It isn't as black and white as trademark owners often believe. For examples of cases where trademark owners have lost, see the following site (a lawyer who specializes in helping people fight the big bully TM-companies ;) )

    http://www.esqwire.com
     
    Leo727, Jun 12, 2006 IP
    Edz and Smyrl like this.
  4. mjewel

    mjewel Prominent Member

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    #4
    When you have a registered trademark, you have rights in a certain classification(s). In the US, there are over 40 different classficiations. Unless your client has a registration in ALL classifications, they do not own the exclusive usage rights to a term/name. What they have is rights to a name in a particular classfication - i.e Apple computers owns the rights to "Apple" in certain usages, but certainly doesn't own the exclusive rights to use "Apple" in a domain name. No one could use "Apple" in a domain and sell computer related merchandise, etc., but it's going to depend on the site content. Even Apple can't take a domain that is just registered unless the name alone is infringement - i.e. "apple-computer-store" but a parked domain like "Apple-Business" isn't infringing because there is no content to prove infringement.

    I own a Federal Registration on a four-letter word. While my trademark pre-dates the dot com registration by another company, I have no rights to the domain because their usage does not conflict with my classification - i.e. if my classification was clothing, and they were using the domain to sell computers, I would have no claim to the domain unless they started using it to sell clothing.

    Most cases of trademark infringement deals with the content of site.
     
    mjewel, Jun 16, 2006 IP