The answer is nuanced.
You see a domain name in an auction that looks appealing. It’s comprised of a couple of dictionary words. You’re not aware of any trademarks that match it.
At this point, what’s your duty to check for trademarks before acquiring the domain?
There’s no definitive answer, but there is some case history in UDRP. A recent case ads to this library of guidance.
In Delta Dental Plans Association vs. Kwangpyo Kim (pdf), the panel wrestled with this question over the domain name DeltaLife.com.
The Respondent acquired this domain for $3,555 in an auction in December 2021. The Complainant registered a U.S. trademark for DeltaLife earlier that year.
Kwangpyo Kim is a domain investor, and UDRP panels generally hold domain investors to a somewhat higher requirement to conduct due diligence before buying a domain. The Respondent admitted that he had not searched for trademarks or Googled the term before buying the domain. He only noticed that many other companies had registered similar domains.
But the panel looked at what he would have discovered had he searched Google ahead of registering the domain.
The Panel has reviewed the three pages of the Google search provided by the Respondent for “delta” and “life”. The Respondent says that it yields over 11,000,000 results for “delta life”, but, in fact, a search for the combined term, rather than for the separate words, yields approximately 44,000 results. The search reveals that “Delta Life” is used as a domain name by an insurance company in the United States doing business under the domain name delta-life.com, a life insurance company in Bangladesh using deltalife.org and a fitness franchise using deltalifefitness.com as well as (by way of example) other variants used for a book about life in river delta regions around the world and by a Mississippi delta clothing company. Neither Party has identified any search result that identifies the Complainant or its use of “Delta Life” as a trade mark in any online search result. Indeed, the Complainant has failed to offer any evidence that its “Delta Life” mark is well-known anywhere.
In other words, even if the domain owner had searched ahead of time, he wouldn’t have found anything suggesting that the Complainant had a trademark for this term.
The Respondent is in Korea and wouldn’t necessarily need to search the U.S. patent database, where he would have found the trademark (among many other trademarks for Delta Life). However, had all of the Google results for the search indicated that this is a famous trademark for a company, the panel might have determined that the Respondent should have searched the U.S. database or not acquired the domain.
There’s one more wrinkle to this case. The pay-per-click parking page showed ads for insurance, which is what the Complainant’s trademark is for. But there are other insurance companies with this name, and, in fact, DeltaLife.com was once owned by an insurance company. So the links might have been logical and not indicative of targeting the Complainant. The Respondent changed the links once he received the complaint and I question his judgment here: it now includes travel links. If there is a worldwide famous trademark for Delta, it’s for travel.
The three-person World Intellectual Property Organization panel found in favor of the domain owner but declined to find reverse domain name hijacking. I agree with both of these decisions.
Bill Hartzer says
It’s your responsibility to do your due diligence. Same with buying a stolen domain name.
If you bought a stolen car, there would be an issue and big problems for you.
Many good domains sell for a LOT more than a used vehicle nowadays. Why don’t we do our due diligence?
Kia Foster says
But even if you find “A” trademark, what are we saying , that we cannot register “A” domain if anyone anywhere in the World owns a Trademark for that name ?. Maybe someone in Kazahstan has a trademark on ABCDE . If you, in USA , plan on buying ABCDE.com why should you not do so ?. Trademarks are Geographically restricted for a reason, as also is why there are tens of thousands of different goods and services. The reason is so no one person may monopolise “a” word.
Andrew Allemann says
It doesn’t mean you can’t register it. UDRP panels look at a lot of factors. For example, panels generally look at where you’re located and if you should have been aware of the trademark. They’ll also look at how famous it is. How distinctive. If the word(s) are dictionary words.
Ali says
I agree 1000%. Why should domain ownership be USA-centric? also, what about the hundreds of other TLD’s? Does a trademark owner based in one country have a ‘right’ to all of these TLD’s? ICANN has to wake up.
domain guy says
The USPTO operates in a vacuum. No outside investigation. Strictly what the registrant provides. So the USPTO could care less about anyone else. Go hire a tm attorney at 400 an hr to do ur diligence. For this exact reason I taught myself tm law and crucify anyone who comes near my domain name. Especially if it has a tm and they hire a tm attorney. Go ahead spend 20k for this backward USPTO operation. A tm attorney could care less about you only the money. And when you crucify the TM attorney and he has to go crawling to his client with zero results who just paid a 10k retainer. The tm owner and attorney goes to school and learns a very hard lesson. Instead of you. The complete opposite for the back ward commerce department approach.
Kia Foster says
Sorry if I laugh but that is exactly what I did . The whole corrupt system stinks. I know a LOT about TM laws ,been there seen it done it. No matter what you do, unless you dont mind me sucked into a Court case and being on limb for hundreds of thousands, then it often times make no difference whether you know everything or nothing about TM’s.
Erich says
Why should a trademark-owner have a right to own the “.com”-domain, when there are other extensions still available to register ?
This domain is still available:
deltalife.info
Garry Anderson says
For newbies: believe it or not ‘apple’ is just a word and not a trademark for use by just one firm – either the one that makes mobiles or the one that made records. Or any one of the thousands of other businesses that use that word.
I am sure that I remember reading it was against trademark law that they give primacy to one trademark over the other i.e. one can use their mark on the internet but another cannot.
Paul Mockapetris was asked, what do you wish you had invented? He replied, “A directory system for the Internet that wouldn’t be controlled by the politicians, lawyers and bureaucrats.”
Some would say I am cybersquatting on wipo.org.uk – has anybody seen WIPO.org try to take it away?
Andrew Allemann says
https://www.icann.org/resources/pages/registry-reports
Garry Anderson says
So – are you saying that with so many TLD’s nowadays, there should be no need for the trademark owner to steal any word domain from a legal registrant with WIPO?
Passing off is obviously criminal – I am not trying to defraud the customers of UN WIPO – for avoidance of doubt.
Andrew Allemann says
My comment was supposed to go on another post. Sorry.
Gordon Firemark says
thanks for this useful note, Andrew!