IP domains offered by TM offices

JSonnab...

Domain names are not inherently trademarks.  Domain names may be used as such, but mere use of a domain name does not rise to the level of TM use.

- Jeff

hofman

I agree that domains are not trademarks online, but no matter the definition, it is a way to abuse a trademark.

Given the ease and low cost to register a domain and the legal wrangles of getting it back to the rightful owner, then it should be part of the Brand security package.

With the introduction of Google adsense it is now even more attractive to be a cybersquatter. Jeff, check sonnabend .com and jsonnabend .com.

When I search for the services of TM offices, then domain registration is not included. Could you please enlighten me why? Is it too complicated to handle? Do clients not request it? Is it historically not seen as part of brand security?

Best regards

JSonnab...

I don't "own" the mark "Sonnabend" in some general sense, nor does the rather well known Sonnabend art gallery in New York City.  I do own the mark "SonnabendLaw" for legal services, and the Sonnabend Gallery probably owns the mark for art gallery services.  

Who should own "Delta.com"?  The airline?  The faucet company?  The tool company?  One of the other "Delta's" out there?  

Let's assume domain registrars should have to "clear" domain registrations before issuing them.  Based on what should they do this?

If registrars needed to clear domains before issuance, every applicant would have to justify his or her use of the domain.  That's some burden.

I think your view of the process ignores the realities of the registration process, including the decision to make the process cheap and easy, as well as some basics of trademark law.

- Jeff

Dave_Zan

Quote

hofman

As long as the domain is not registered in bad faith then first come, first served.
The handling of the new .ASIA is quite fair as any applicant with IP rights for - let?s say -  Delta can apply, and the domain will then be auctioned between the applicants.

What concerns me is cyber squatting, where I believe that TM clients are not taking  the domain part too seriously at first, and will afterwards spend a lot of time chasing their rightful domains, when cybersquatters beat them to it.

TM offices should advise about this, and even better include it as an integral part of a brand security product.

Dave_Zan

Quote

hofman

It is clear that they can register their domains elsewhere, but I am sure that many TM clients wish to secure their domains together with the TM.

However, what happens normally is that the domains are not registered by the TM client, and then are up for grabs until the client finally realises that "hey, I have to secure those domains".

Best regards

hofman

I started this thread to get a discussion going concerning trademarks and domains. Until now the only answer I got was that legally TMs and domains are not the same - fair point.
My point is that domains should be taken just as seriously when you provide a client with a brand security package. No response from any TM office, but I would appreciate to know why this is not a part of your service. Is there anyone out there who wishes to comment?

To underline my thoughts please read a new report made by Cameron Mckenna analyzing the trademark infringement on the internet (domains, meta tags etc.) in 15 European countries.

As I am a new user I am not allowed to send the link but you can find it at  domainnewsdotcom with the headline Protection of trademarks.

You have to become a member to read it, but it is inspiring material.