Copyright stuff (1.Viewing)

Can anyone shed some light on copyrighted trademark battles?

I've read some of the decisions and what not, and all the CIRA stuff, but can't seem to get a clear answer (unless I'm just missing it lol)

If a domain is registered, but it turns out to be a copyright/trademark, can they just take it away from you if they go through CIRA?

And I mean if a domain was just registered for fun/by accident kinda thing/plans for other things, not in bad faith or to ransom or whatever.

Thanks in advance for any insights!

Cheers!
Gabriel

That’s a very difficult question to answer because each scenario is very different.

For example, if I register a domain today and it’s a trademark it doesn’t mean I’m not able to use it for my own purposes.

If I own google.ca that’s pretty clearly a TM infringement. If I own Apple.ca then it’s not as clear.

Generally, in order to lose a domain through a CDRP dispute you need to prove the following :

1. Domain is identical or confusingly similar to a common or trademark.
2. Registrant has no legitimate interest in the domain
3. Registrant registered the domain in bad faith

It’s not as easy to prove these 3 above as you may think. Unless of course it’s obvious.

That's a pretty clear way to put it, thanks a lot!

theinvestor said:

Generally, in order to lose a domain through a CDRP dispute you need to prove the following :

1. Domain is identical or confusingly similar to a common or trademark.
2. Registrant has no legitimate interest in the domain
3. Registrant registered the domain in bad faith

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And note that the complainant would have to prove _all_three_ of those to win a CDRP.

The best thing is to read and understand the policy very carefully:

https://www.cira.ca/policy/domain-name/cira-domain-name-dispute-resolution-policy

Sections 3 and 4 especially.

Important points are:

Dates.
Date of your registration vs date of the mark. Who established rights earliest? You can't be accused of a bad faith registration if the domain was registered prior to any established use of the mark (unless you then blatantly infringe on the complainants mark after the fact).

Strong vs Weak marks.
If it is a strong trademark, as in something completely made up and "fanciful" then it is much harder for you to prove a legitimate interest, I'm thinking of things like CocaCola or Pepsi. Understanding trademarks is useful: https://www.uspto.gov/trademarks/basics/strong-trademarks
If it is a trademark that started off weak, but grew to be globally known and synonymous with that term, like McDonalds, you're also going to have trouble proving legitimate interest.

Bad Faith.
Put up an infringing ad and you're screwed because willful infringement equates to Bad Faith. Also, never contact a trademark holder to offer it for sale, that is considered Bad Faith as well.

Legitimate Interest.
Reselling generic domains has been quoted as a legitimate interest in several UDRP and CDRP decisions now. I wouldn't be afraid to claim my legitimate interest in a domain as an investment for resale.

Even fanciful/made-up domains have become investment quality in recent years, I'm talking about things like where you take a word and change the spelling (lyft vs lift) or you look for 4 letters that are pronounceable, etc... The key here is to never infringe, and show a pattern of investment in similar domains. If you own hundreds of similar domains you can show by the pattern of investing that it was legitimate interest (for your domain resale business) and that it wasn't bad faith because you didn't target a specific business.

So if you follow those key points, it really leaves the vast majority of domains open for investment.

All that being said, please do legit speculation and investment to your heart's content. But don't just do the easy thing and cyber-squat on existing business names.

I'm not suggesting you would, but I stumbled onto this one guy again yesterday and he's a perfect example of what NOT to do, a guy who in my opinion is 100% a full fledged douchebag cyber-squatter to the fullest degree.

Just that I know if, he's registered 700+ .CA domains of Canadian businesses or global corporations where the actual business bought the .com/.net/etc... He also does it in other TLDs. He does have various CDRP & UDRP against him, I'm shocked there's not more considering it is so bloody blatant. But he prices most of those domains at a couple thousand bucks and they probably figure its cheaper & faster to pay his price.

I'd have no problem with this if those domains were truly or even marginally generic, one word or even multi-words that are a product or service, or even showing a pattern of made-up domains.

But these are made-up/fanciful type domain names, or multi-word domains (sometimes 3 and 4 words) that are clearly targeting a single company.

Now if you had a portfolio of 700+ multi-word or fanciful domains that were speculating at what might be popular, for example we've talked about colours here, so say "red", and then you put another word with it like reddog, redcat, redbird, reddragon, etc, etc, etc.. and it just so happens that one of them turns into a big company and you make a great sale, that's perfectly acceptable speculation & investing. Or lets say you notice that there's 50 companies with the name "reddog" (i.e. reddogpizza, reddogfinance, reddogtravel, etc), then you register reddog.ca because its clearly a popular phrase and you're not targeting any single business. I'm cool with that too.

But when nearly every domain in your portfolio is clearly targeting a single business, usually an exact match .CA for the .com/net/etc... there's clearly no acceptable speculation going on - it is blatant cyber-squatting, and frankly its those types of people that really give us all a bad name.

I'd call him out right here, but I notice quite a few of you are contacts with him on linkedin. Probably because you don't realize the extent of what he's doing... but I wouldn't want to be associated with him in business personally. Its possible that he's even a member here.

Now I'm no perfect angel - I'm sure I have the occasional domain that looks questionable. But instead of a relatively small % of questionable domains, this guy is at 95+ % pure cyber-squatting, not even remotely what could be considered speculating.

So when you're deciding how to proceed with your domain investing strategies, please, don't be a blatant cyber-squatter. Speculate all you like though!

rlm said:

I'd call him out right here, but I notice quite a few of you are contacts with him on linkedin. 

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One of my policies...

No Facebook, no LinkedIn, no social media period.
I do have a twitter account with maybe 6 posts but that is mostly used to send messages.

Why do I not use social media?

I own 100% of all my content, I have about 40 active websites which I use for business or promotions.
If at anytime I don't like something I remove it or change it without having to beg a company for permission.

One day most everyone regrets something on social media and I am proud to say that nobody in my family has ever had a facebook account.

I say it again and again..... OWN YOUR CONTENT FOLKS!!

Same here Frank but I might have one more post than you. Still have no idea how I did it or how it works *DONT_KNOW* *ROFL*

No Facebook, no LinkedIn, no social media period.
I do have a twitter account with maybe 6 posts but that is mostly used to send messages.

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Brilliant stuff, lots of good info!

Definitely agree with the squatting stuff, that's just not cool. I don't know any of them though.

I just have one, that I snapped up by accident. It sounded fun, was short-ish. Then an email, threats of lawyers, litigation, blabla, but here's $100 to do a transfer blabla

I said no thanks, not really for sale. Then more legal threats, but also offers $500. I say no again lol

Then later I figured out yeah it's a TM, and all that, but I had no idea. Then I found a bunch of others, that were all available, which I didn't register. I actually told him "guy, here, go register these to protect your portfolio before someone else jumps on them".

any of the veteran domainers that have been in this industry for 15+ years have owned TM/typo domains at some point. It’s not something people are proud of but it was during a very different time. You can’t do that these days….and most people will not admit to doing it. That was the reality. It’s not easy to do it now and really you won’t profit by doing it. So, the majority of the smart ones dropped these domains or continue to drop these names….

But, if you’re one of those people still doing it today you’re asking for it. So best to not register any TM’s. Ever. It’s not something you want in your portfolio.

theinvestor said:

So, the majority of the smart ones dropped these domains or continue to drop these names….

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I have also heard "The majority of the smart ones sold these names for windfall profits..."

--- heard from a friend, no personal knowledge of course.

aactive said:

I have also heard "The majority of the smart ones sold these names for windfall profits..."

--- heard from a friend, no personal knowledge of course.

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I didn’t really wanna go there…. because there are some that got stuck with these domains also. (Specifically typo domains)

theinvestor said:

I didn’t really wanna go there…. because there are some that got stuck with these domains also. (Specifically typo domains)

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The rules of Musical Chairs apply to most of these types of situations...eventually, the music always stops.

I agree, a lot of people did it in the early days. Typos were kinda rationalized by thinking you're putting the customers looking for a brand (but typo-ing it) in touch with the brand by way of advertising. It worked best if you fed that surfer right to the brand, but not a competitor, but unfortunately that was the flaw, it put up links to competitors as well. You were basically being rewarded for your cleverness in determining what domains and typos had traffic and which didn't. It did work well for a time. But owning typos were sort of like a short term investment you knew would probably go away. For the most part, typo owners just handed them over no questions asked if the brand owner asked for them - that's what I did.

And to some extent, that rationalization of delivering those typo surfers to brands definitely had value. There are even parking companies that to this day specialize in connecting brand owners with typo owners - with the brand owners consent. The parking companies act as a middleman and approve domains to zero-click right to the brand for a small PPC. Sometimes they are just blatant typos, sometimes a brand name is a variation of a generic, or even the exact brand in a different tld - and thus it gets traffic from the brand due to the confusion. In either case, the brand is happy to get the traffic redirected to them. They don't mind the PPC fees versus registering and maintaining every possible typo or tld or confusing domain variation. But these parking companies are much more strict and have a limited number of brands they work with - nothing like just having a google feed putting ads on any possible domain. I would still consider registering a typo if I knew that the brand actually approved it through one of these programs. Unfortunately, all the typos with traffic for those "typo-friendly" brands were taken long ago as far as I know.

But there's no doubt that for the most part, most brands don't approve of typos. And since the money isn't really there like it used to be, its not nearly as lucrative. There was a big crash in parking revenues like maybe a decade ago or something. I'd think that the vast majority of those domains have been let go over the years. You still see those types of domains expiring each week.

And as far as I know, no, I don't see people registering typos anymore.

What I was complaining about, the act of registering exact brands/business names, not even remotely generic, in the .ca, specifically targeting a single business, Canadian businesses, even small time mom-and-pop 1-store businesses (like a pizza place or whatever), then trying to sell it for thousands of dollars likely because that's around the price of a dispute, it all just seems much more wrong on a different level and can in no way be considered investing or speculating. Essentially you're trying to extort that brand owner to own the .ca. I'm adamantly against this practice. And this guy continues to register these domains every week, they aren't some naive ill-advised registrations from 20 years ago.

Some may say the two scenarios are not much different, but I do see a significant difference. But definitely avoid both!