This advice is going to sound pretty obvious to most of you, but I am going to share it anyway because there are people who are looking at the new gTLD domain names as an opportunity to make money from domain investing. Do NOT register trademark, non-descriptive domain names, and certainly do not offer grey area names to companies that have those trademarks!
Early on when domain names first became commercially available, there were people who registered domain names before trademark holders were able to purchase them. You can read one such instance in Wired regarding the registration of the McDonalds.com domain name. Later on, people registered trademark typo domain names in addition to other TM domain names, and they made money from pay per click links (or by selling the domain names). This is because these domain names had traffic, and some people found the financial reward worth more than the risk.
With all of the new gTLD domain names that are going to become available, I think it is important to remind domain investors and hopeful domain investors that buying obvious trademark domain names is not smart. Not only can companies who own a trademark file a URS or UDRP, but they can also file a lawsuit against the domain owner, with potential liability of up to $100,000 per domain name. You have to ask yourself, is it really worth the risk?
In my opinion, the new gTLD domain names are not going to have much (if any) type-in traffic. This means that monetizing trademark domain names will not be easy. Coupled with relatively high registration and renewal costs, most TM related names most likely will not pay for themselves annually. In addition, if the end game is to sell the domain name to the trademark holder, you have to ask yourself why they would pay you a premium when they could probably just go the legal route and perhaps end up with more than just the domain name.
This should certainly not be taken as legal advice because I have absolutely no legal background. To me and most other domain investors, this is more of a common sense issue than anything else. There are going to be many new people looking to invest in domain names, and buying trademark domain names can become a liability very quickly.
The Wired article is a must read. Written in October 1994.
Typo domains where the big thing 14 years ago as well, for the smart domainers that went away when the Cease and desists started flying. This time around I would imagine .com owners are going to get: what should we call them reverse typos..
Bigger mess than you think check out this guy went on a .equipment buying spree… volvo.equipment etc…
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Evidently, for these new gTLDs, you also have to take into consideration the word on the left and the right of the dot.
I regged two 1-letter .estate names, but I checked the entire string at USPTO and Markify before jumping in.
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If your caught with a TM, you should do what Michael Mann does, blame it on a machine.
Elliot, thanks for the timely advise. Also, agree with MS Domainer’s comments. Since you’ll get lot of options to register names under new G’s it doesn’t mean violating someone else’s rights.
Quick question.
Lets say I am a $50 million dollar company and my Company is called GreenDog. I have a trademark on the term GreenDog.
Does that mean I can trademark protect the domain: green.dog?
Would that be trademark infringement if someone registered it?
That would be a good question for a trademark lawyer.
In many ways, trademark rights and domain name ownership are similar, but they are not the same. The right to possess a domain name does not always imply trademark rights, and trademark ownership does not always imply the right to hold the related domain name.