AOL Just Protecting Its Brand | DomainInvesting.com
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AOL Just Protecting Its Brand

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Ad.com

Last month at an engagement party, I met a friend of a friend who works for Advertising.com. After brief introductions and small talk, he mentioned that he works for Ad.com. Knowing that Ad.com had just sold at Moniker’s auction for 7 figures, I inquired further, and he mentioned that his company is actually Advertising.com, but everyone calls it Ad.com. Therein lies the problem.

In most cases, when a company or famous person has become known by a nickname, and that nickname or moniker becomes just as famous as the person (and clearly associated with the company or person), that company or person may be able to legally claim common law rights to that nickname or term.

Michael Jordan was known as “Air Jordan” because of his leaping and dunking ability. During his playing days, Nike introduced the Air Jordan brand, and I believe it is still one of their most famous brands. Had Michael Jordan not been known as “Air Jordan,” the term “air jordan” would probably be worthless unless someone else used that term famously. Like Jordan, Advertising.com became known as Ad.com internally and externally, and many people associate the term Ad.com with Advertising.com. However, unlike the term “air jordan,” the term and domain name “Ad.com” has significant value besides its usage by Advertising.com.

As an entrepreneur and marketer, I can commiserate with all parties involved in the situation. The current Ad.com domain owner just wants the sale completed as expected, Moniker/Oversee.net wants the commission they are rightfully owed, Skenzo is worried that they are going to have to spend tens or hundreds of thousands of dollars in addition to the purchase price to protect their new investment, and AOL wants to protect the brand they believe is rightfully theirs.

As a domain investor on the other hand, I am very concerned by this move by AOL, and it will make me more vigilant about researching the domain names I buy and develop.


About The Author: Elliot Silver is an Internet entrepreneur and publisher of DomainInvesting.com. Elliot is also the founder and President of Top Notch Domains, LLC, a company that has sold seven figures worth of domain names in the last five years. Please read the DomainInvesting.com Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest.


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Comments (20)

    Kevin

    This will surely be one of the most important legal cases in the history of domaining as well as brand and TM law.

    If the unexpected happens and AOL actually succeeds in this lawsuit, and the court sets a precedent that a TM’s nickname is also protected we’ll all have a huge and complex layer of legal hell added to our industry to deal with on every transaction.

    You made a good point Elliot with your friend’s example how the nickname confusion could indeed arise. Even in domain land, as an example, most people always refer to Fabulous.com as simply “Fab”, so I’m sure newbies might type in Fab.com.

    What’s also sad is the fact that Ad.com was the only significant major sale at that auction and it brought a ton of great publicity for domain values.

    It’ll be interesting to see how this all plays out. What a mess.

    August 20th, 2009 at 5:23 pm

    Troy

    Just to be safe in case AOL wins, from this point on I will be re branding myself as LasVegas.com, I will have all my friends call me that so in a few years I will be able to take it from whoever owns it now, you know, cause my brand is so important.

    Bottom line Elliott is that AOL made a serious mistake when they decided to “brand” themselves with a name that was owned by someone else.

    If they win this then there really is no end to the number of spurious lawsuits that will spring up.

    August 20th, 2009 at 5:31 pm

    Elliot

    Agreed – but for the third time, you know I only respond to Sex.com, not Elliot.

    August 20th, 2009 at 5:33 pm

    Elliot

    Also want to add that other than the TM application, I don’t think AOL has made a play for the actual Ad.com domain name yet. As far as I know, the litigation with AOL involves Advertise.com.

    August 20th, 2009 at 5:35 pm

    Anthony

    Elliot

    August 20th, 2009 at 5:33 pm
    gravatar

    Agreed – but for the third time, you know I only respond to Sex.com, not Elliot

    LOL … good one Elliot :)

    August 20th, 2009 at 5:38 pm

    Troy

    “Agreed – but for the third time, you know I only respond to Sex.com, not Elliot.”

    You crack me up. Just don’t tell you wife that that is your online nickname.=)

    August 20th, 2009 at 5:40 pm

    Johnny

    It’s on like page seven of the complaint that AOL claims a design mark on Ad.com….this is what AOL is trying to do.

    This is big business trying to take what is not theirs. Unlike you Sex.com I have NO sympathy for AOL. I don’t care what they are called.

    These are generic words they have NO right to….even if they did get a trademark. You can bet lawsuits will be flying for a long time if this is not settled out of court or if a judge does not put a halt to this nonsense.

    AOL are being sneaky thieves Sex.com, so don’t be fooled Sex.com. :)

    August 20th, 2009 at 5:44 pm

    Johnny

    This also reminds me of the time I had a domain similar to ChipsSteakhouse,com and a guy called me and told me his name is Chip and therefore he had rights to the domain then me. This was in 1997.

    He then went on to tell me that if I was a good Christian I would give him the domain at no profit. After all, he was known as Chip and therefore the domain was rightfully his. :)

    August 20th, 2009 at 5:50 pm

    Jamie Parks

    Yeah not to mention 11 letters is galaxies apart from 2 letters… AOL needs to get their asses handed to them for this slimy move.

    August 20th, 2009 at 6:56 pm

    Porn.com

    @sex.com
    AOL’s brand is aol. not advertise, not advertising, not ad etc. those are generic words that based on the hotels.com ruling should never be allowed to be trademarked. aolsucks.com is becoming their new “brand”.

    best,
    porn.com :)

    August 20th, 2009 at 7:55 pm

      Elliot

      @ Porn.com

      AOL has several brands, just as Nike, Unilever, Apple…etc.

      August 20th, 2009 at 8:03 pm

    Porn.com

    @sex.com
    That’s fine as long as those “brands” aren’t generic words I can find in the dictionary. “Branding” generic words in an “all encompassing way” should never be allowed. If they want to use a generic domain name they should approach the owner and offer what the owner wants otherwise pic another name and move on. Parasite corporations and individuals that were too slow out of the gate to purchase domain names fair and square should crawl back into the holes they came out of. See “opendentist.com”, nasty business.
    Best Regards,
    Porn.com

    August 20th, 2009 at 8:42 pm

    Borat

    everyone calls me dumbfuck can i have this domaining name too ?

    August 20th, 2009 at 9:52 pm

    Anunt

    I think skenzo people knew that aol wants to buy ad.com … so skenzo people beat them to it … why else would skenzo want ad.com for $1.4 Million when they could have bought it for around $500k few months earlier…and do you know why it got bid up to $1.4 Million…because Moniker insiders bid it up so they can get more commission … and they knew that skenzo people got deep pockets and will buy at whatever price…so moniker people bid it up…go watch the youtube video…see how the bidding was going on…u will notice all the fraud crap going on…without any cheating, they could have bought this domain for around $500k…anyways, skenzo people would have paid over $2 million at this auction…since they knew aol wants it…so now, since aol was late to the game, they file a lawsuit trying to get the name a cheaper way…guess what…skenzo will not sell ad.com unless aol pays upto probably 50 million…so aol files a lawsuit…what other choice do they have other than to cough up 50 million which they dont want to do…and for the seller of ad.com…he probably wants to sell it directly to aol now since they can cough up much more than $1.4 million…there is alot of dirty politics going on behind the ugly closed doors in the domain world that your average domainer dont know about.

    August 20th, 2009 at 11:14 pm

    Kevin M.

    I totally agree this is ‘end around’ thievery, and if AOL should get some bonehead judge or court to actually agree to this outright outlandish claim, the flood walls will burst with these types of scams.

    And if we’re claiming nicknames, I’d like to now be known as AOL.com. 😛

    August 21st, 2009 at 12:35 am

    Mark

    I’m thinking about making an offer for add.com. Just want to be involved with all the fun.

    Whaddya think?

    August 21st, 2009 at 2:15 am

    Snoopy

    I don’t think Advertising.com really has any brand in the traditional sense, aside from “Platform-A”. They chosen a generic term for the industry. That is cool for an Internet company but no court is likely to ever find they have trademark rights over the term. If there is confusion then they need to point the finger of responsibility inwards.That is why real world companies do not try and make a brand out of the generic name of the product they sell, they’ll never get any legal protection for it.

    August 21st, 2009 at 3:26 am

    Huw Williams

    Agree with Snoopy..

    On the other hand I would be furious at loosing the sale and even worse seeing it drop in value because high and mighty AOL have filed. And that’s based on the presumption that if a handfull of people are calling advertising.com by another name it gives AOL the right to ownership of otherwise a totally generic (dictionary) term. Pah!

    That to me is strong grounding for a case against AOL in respect of defamation/loss of revenue. If they are so idiotic to think they can claim this domain, I would totally pull every stop out on the organ and whack them with a $1,000,000 law suit if not more. (In especially if they lost the case)!

    August 21st, 2009 at 6:15 am

    Bryan

    All the wrong moves.

    I don’t think AOL has any ground to stand on here. The rights to Ad.com by name association is blurry at best in my opinion. It was poor branding from the beginning if you allow employees to use a nickname for your company that is a domain you don’t own. That is on them. Brand management. The fact is that AOL had every right to bid and win Ad.com at auction and they did not do that.

    It’s obvious they thought they could save a few bucks and strong arm the parties involved using the court system. I see that backfiring big for AOL.

    I think they’ll end up without Ad.com or rights to it along with some negative publicity.

    August 21st, 2009 at 10:04 am

    Elliot

    @ Bryan,

    IMO, there won’t be much negative publicity for them to their core base. This will stay a domain industry and maybe an Internet industry issue at most. How many people in this crowd use AOL? I happen to have an AOL account as part of a family account created many years ago. It would be too much effort to change my parents’ usage habits and set up a new email account for them, so I can’t cancel. I would cancel my subscription though if I was a paying customer.

    August 21st, 2009 at 10:08 am

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