1. This site uses cookies. By continuing to use this site, you are agreeing to our use of cookies. Learn More.

Offer .COM to registered trademark owner. Good idea or not?

Discussion in 'Domain Names & Parking' started by xtopzi, Oct 24, 2014.

  1. xtopzi

    xtopzi Regular Member

    Joined:
    Sep 28, 2010
    Messages:
    291
    Likes Received:
    205
    So here's the situation:

    They own 'ThickFog.nl' - 'Thick Fog' is a registered trademark belonging to them, affective in the Benelux only so it's not European nor international trademark
    I want to register 'ThickFog.com'. I can't believe they haven't registered the .COM so I want to send them a friendly email offering a sale. If they don't wanna buy I actually want to use it myself as it's a great generic domain name.

    To clarify, it's a 2-word English dictionairy domain name. ThickFog.nl doesn't sell fog, they sell clothes hangers. If I were to use ThickFog.com I'd sell something similar, let's say clothes ironing boards. Same service, different end product.

    My question of course: could they start bitching about the trademark? And if so, what can they do? Although it's a registered trademark to 'Thick Fog', they don't own those two dictionairy words.

    (all niches and domains are obviously fictional)
     
  2. xtopzi

    xtopzi Regular Member

    Joined:
    Sep 28, 2010
    Messages:
    291
    Likes Received:
    205
    137 views 0 replies. No one have any experience selling a different TLD to the owner of the same domain?
     
  3. pazocean

    pazocean Junior Member

    Joined:
    Mar 12, 2013
    Messages:
    108
    Likes Received:
    28
    If "Thick Frog" is a registered trademark belonging to them, then they can just claim it, in my opinion.
    Your argumentation concerning "they don't own these two dictionary words.." does not apply here because Facebook for example can claim every domain with the name "facebook" and they do not own obviously the words "face" and "book"...right?^^
    It also does not matter if you are in a different niche.

    However, as you suggested, you CAN ask them nicely if you are allowed to use the domain with .com ending for other commercial reasons. If they explicitly agree to this, then there is no problem I think.
    If you are serious about this, you also should consult an internet lawyer and set up an agreement which says that you can use the .com domain commercially. They should sign it so you are on safe side in future.

    (Everything I have written is just my opinion...I am not a lawyer so you should consult professional law advice if needed)
     
  4. Trepanated

    Trepanated Supreme Member

    Joined:
    Sep 18, 2010
    Messages:
    1,395
    Likes Received:
    5,324
    If my business was ThickFog and you contacted me offering to sell me that domain, here's what I would do:

    1. I would realise I had been silly to not have bought the domain myself - my mistake
    2. I would potentially buy it from you if you were not asking for silly money - only because it had been remiss of me not to buy it myself.

    However, if it became clear you were out to rinse me I would then take the domain legally without you receiving a penny.

    My reaction would depend on how you conducted yourself.

    From the information you have given, I think I'd have no trouble in legally taking the domain.
     
    • Thanks Thanks x 1
  5. IMpossible

    IMpossible Supreme Member

    Joined:
    Apr 15, 2012
    Messages:
    1,338
    Likes Received:
    302
    Occupation:
    Internet Marketing Guru
    Location:
    Somewhere on earth
    Once they see that another person registered a Domain with their trademark in it, they'll just contact the domain provider and request a transfer to their registrar - for free. And there's nothing you can do about it. The thing you do is called "domain grabbing" and is illegal in Europe. Don't know how it is in the U.S. Google it.
     
  6. xtopzi

    xtopzi Regular Member

    Joined:
    Sep 28, 2010
    Messages:
    291
    Likes Received:
    205
    Dispite the fact that it's not actually trademark infringement?

    http://en.wikipedia.org/wiki/Trademark_infringement

    Trademark laws (and similar laws) are to make sure the consumer doesn't get confused and is 'mislead' or the infringer takes advantage of one's trademark. I don't see how that would apply here. I can understand that registering Facebook.me would be a different story, considering FB's international trademark as well as it's a globally recognized name.

    Another example; If OpenMind is a trademark belonging to OpenMind.nl and it's an e-commerce store, and I were to register OpenMind.com for my personal new age blog, then that's clearly not trademark infringement.

    Once again, a clearer definition:

    So...I guess were not looking at the actual trademark laws here but different ones regarding domains? Someone have a link?
     
    Last edited: Oct 25, 2014
  7. xtopzi

    xtopzi Regular Member

    Joined:
    Sep 28, 2010
    Messages:
    291
    Likes Received:
    205
    Dispite the fact that it's not actually trademark infringement?

    http://en.wikipedia.org/wiki/Trademark_infringement

    Trademark laws (and similar laws) are to make sure the consumer doesn't get confused and is 'mislead' or the infringer takes advantage of one's trademark. I don't see how that would apply here. I can understand that registering Facebook.me would be a different story, considering FB's international trademark as well as it's a globally recognized name.

    Another example; If OpenMind is a trademark belonging to OpenMind.nl and it's an e-commerce store, and I were to register OpenMind.com for my personal new age blog, then that's clearly not trademark infringement.

    Once again, a clearer definition:

    So...I guess were not looking at the actual trademark laws here but different ones regarding domains? Someone have a link?

    EDIT: Just found this: https://sedo-us1.custhelp.com/app/a.../~/what-is-cybersquatting-or-domain-grabbing?

    Doubt I would qualify for that though...it's not a famous trademark and I'm not "registering the domain in bad faith".
     
    Last edited: Oct 25, 2014
  8. IMpossible

    IMpossible Supreme Member

    Joined:
    Apr 15, 2012
    Messages:
    1,338
    Likes Received:
    302
    Occupation:
    Internet Marketing Guru
    Location:
    Somewhere on earth
    You can't do business with their trademark, don't you understand that?
    Is it that hard to understand?
    Go do it and come back crying here that you got contacted by their lawyers and don't know what to do.