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I received an email from a lawyer representing a pharmaceutical firm reagrding a parked domain name I own. The domain name contains the name of the drug this company has TM on. Basically domain name has "order" in front of the "trademarked name". According to their claim the parked page displays ads of online pharmacy they have issues with. The ads on parked page are not dispalyed by me and how pharmacy's sell their products is their business. They want me to transfer my domain to them.

My lawyer is working on this but I was wondering if anyone has had such issues and how they handled it with what outcome..Thanks..

Comments (33)

Say goodbye to the domain. You are clearly infringing. Have your lawyers look up cybersquatter laws...

Comment #1

We are in a business to develop health websites and we reserved this domain for future use for our consumer help/guide website. we have almost 13 websites up and running and have 20 others in works. So, I am not sure cybersquatting could be an issue..

I am looking for input from someone who was in similar situation and how the issue was handled..thanks..

Comment #2

Anwer this question. Did you order the domain name because of the name of the drug or was it coincidence?.

Also you are responsible for what is displayed at your domain name not the parking company.

You are infringing 100% on a trademark by the looks of it and you are trying to profit from that infringment (otherwise why do you have it on a parking page with adverts)...

Comment #3

When you registered that name did you register it thinking of the trademarked product or brand? If so you should give the name...

Comment #4

You are in the business of cybersquatting... end of story. Others have done it to, they are called respondents and lose their domain....

READ MY SIG..

Comment #5

What if he registered the domain before said word was a TM?..

Comment #6

Sorry, did you read the post?????? His "company" registered a drug name with a TM and put "order" in front of it. What more do you want???? Sorry, but reading a whole is sometimes a good thing. BTW- why would you order something that does not exist??.

UGH..

Comment #7

LOL, yes I read the entire post. I dont know what the "word" is nor do I care. My question remains the same...

Comment #8

He registered a TM drug name and put the word "order" in it. Then had it parked and the ads have online pharmacies.....

Are you saying he "invented" a drug name and low and behold, there it is???.

UGH again.

Sorry, classic squatting here...

Comment #9

And is one able to order that drug from those pharmacies?..

Comment #10

Does it matter? Say for example the online pharmacy sells competing drugs surely that would strengthen any case the company had in pursuing the domain.

Also as the trademark is obviously in the drugs market the fact he is using the trademarked name in the same market surely would strengthen bad faith claims?..

Comment #11

Does it really matter if it is "competing drugs" or selling the drug mentioned in the domain? The art of cybersquatting is making money from a TMed domain. Is the domain TMed? Yes. Is the domain owner making or attempting to make money from the TMed domain? Yes.

It isn't like there are 2 different drugs with the same name out there. And drug names are not generic (though I wonder, what if a drug company decided to make a drug called "windows"). So basically, is the guy trying to make money for a TMed domain? yes he is. And if his lawyer spent over 5 mintues reviwing this, he needs a new lawyer...

Comment #12

Firstly I was addressing jberryhill. He seemed to be implying if they sold that drug then there was a problem.

To answer your question it does matter if the domain is used to advertise competing drugs. There is a lesser argument of legitimate use if you use the domain to advertise a competitor of the company holding the trademark you are squatting under...

Comment #13

Legitamite use? I guess as long as the TM holder gave him permission, otherwise it seems to me the domain owner is looking to make money from a TMed domain for his owner personal gain without the consent of the TM holder (isn't that what squatting is all about?)...

Comment #14

There are legitimte reasons for using a trademark in a domain name. Look at sites such as paypalsucks.com for example they 100% use the trademark in the domain name but paypal cannot take down the site.

I do however agree that cmme2 has 100% shown that he is trying to profit from the trademark...

Comment #15

There are legitamite reason, but I am guessing none of teh reason would be monetary gains... yes, he is using it in bad faith. There are a ton of what-ifs, but deal with each one case by case.

So if I had orderwondows.com and sold windows software, I would be ok?..

Comment #16

Where did I state or suggest that would be Ok. You are making arguments for the sake of it...

Comment #17

No, not trying to start anything. It was in response to the legitamate usage post prior to mine. I was giving an example for what this poster was doing for people who may be reading this thread and put it in terms everyone could understand...

Comment #18

Your lawyer is "working" on this? If you are legit, then that seems to be milking a non-issue, no?.

Unless the drug is something like "asprin" or a term like "anxietymedicine" (Or a compound name that isn't TM'd), then this is kind of a 2 minute phonecall consultation and then move on.

Not asking you to tell us the drug, but you have to know if it is/could be/would be/might be blockbuster for them, they will defend their mark aggressively.

Just a brief NAF glance:.

464558 drcialis.us Lilly ICOS LLC v Joe Pestrak USDRP 4/20/2005 Transferred 5/31/2005.

788279 buycialis.us Lilly ICOS LLC v Andrew Riegel USDRP 9/8/2006 Transferred 10/18/2006.

110783 celebrex-pain-relief.com, arthritis-celebrex.com, 0-celebrex.com, viagra-propecia-xenical-celebrex-claritin-prescriptions.com G.D. Searle & Co. v Entertainment Hosting Services, Inc. UDRP 4/25/2002 Transferred 6/3/2002.

112559 e-viagra-xenical-celebrex-propecia.com G.D. Searle & Co. v James Mahony UDRP 5/1/2002 Transferred 6/12/2002.

117905 1st-celebrex-viagra-pharmacy.com G.D. Searle & Co. v 24-dollars-for-3-pill-viagra-trial-pack.com UDRP 8/12/2002 Transferred 10/2/2002.

117909 a1-drugstore-buy-viagra-xenical-propecia-celebrex.com - UDRP 8/12/2002 Withdrawn 8/29/2002.

117911 doctorslink-viagra-xenical-propecia-celebrex.com G.D. Searle & Co. v Fred Pelham UDRP 8/9/2002 Transferred 9/19/2002.

117914 viagra-celebrex-xenical-cipro.com G.D. Searle & Co. v PNP Management UDRP 8/12/2002 Transferred 10/4/2002.

118168 viagra-propecia-celebrex-xenical.com G.D. Searle & Co. v Optimized Marketing Services UDRP 8/13/2002 Transferred 9/19/2002.

118181 order-viagra-propecia-celebrex-xenical-online-discreet-shop.com G.D. Searle & Co. v Damien Wallace UDRP 8/15/2002 Transferred 10/7/2002.

118276 viagra-xenical-propecia-celebrex.com G.D. Searle & Co. v SD Domains aka Steve Dyke UDRP 8/19/2002 Transferred 10/11/2002.

118277 viagra-xenical-celebrex-propecia-meridia-zyban.com G.D. Searle & Co. v Martin Marketing UDRP 8/20/2002 Transferred 10/1/2002.

118306 viagra-xenical-celebrex-propecia.com G.D. Searle & Co. v NA UDRP 8/20/2002 Transferred 10/7/2002.

118307 viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com G.D. Searle & Co. v Paramount Marketing UDRP 8/22/2002 Transferred 9/27/2002.

123927 xenical-viagra-phentermine-celebrex.com G.D. Searle & Co. v Innovative Solution Technologies aka Vedavyasa Alapati UDRP 9/3/2002 Transferred 10/23/2002.

(Basically, a lot of "Sorry, you lose. Transferred")..

Comment #19

Since this is the sub-forum for legal issues, I would like to add that having health related websites like the ones you are stating, should be allowed only for qualified professionals or that it should be mandatory to have the credentials of the people behind these so called medical guides. Concluding from the total profile you lay out here with dubious domain registration with clearly no rights to the patented drug, I would strongly suggest that people do not rely on amateur websites for their health information or guides.

Like the way Google is cleaning up on garbage sites, the authorities should come up with something to clean up in the mess of garbage sites offering medical and health guides.

As to the domain name in question, I think you should count yourself lucky if the pharmaceutical company doesn't sue you for damages. And what you are doing is cyber squatting in mega class...

Comment #20

So, let's see if we understand you correctly.

If you are a retailer that sells "FOO" brand sneakers, you cannot advertise the fact that you sell them?.

You've fallen into the same mental trap that unfortunately too many UDRP panelists have fallen into. YES the point of retail sales is to make money. YES retailers can use the trademarks identifying the brands of things they sell.

If I run a website selling "FOO" brand sneakers, it is perfectly legal - and that is the bottom line of the 7th Circuit Court of Appeals decision in bargainbeanies.com - for me to use a domain name like ISellFooBrandSneakers.com. It is a true statement of fact...

Comment #21

I am going to regret this, but here it goes....

I know you can sell products and use the TMs to advertise. But if the domain owner does not have the supply on hand but merely creating a portal and redirecting traffic, wouldn't that be unfair usage of the TM? Since there is no inventory on hand, he has not created interest in the TM product. I can accept that line of thought if the domain owner was an actual store with on hand inventory. That means the domain owner DOES have rights to the name, as supported by the cited decision. But in that case, they did sell beannies and they did have inventory.

There was also dicussion that Ty created a secondary market as part of their marketing plan and that the lawsuit was under the premise of dilution. Would that same arguement hold true here. I don't think drug companies create a secondary market (though I am willing to trade 1 Viagra for 3 vicodins). It was even mentioned that "beannie" may be descriptive, where drugs certainly are not descriptive. It just seems that these are 2 different senarios.

So would there be a difference if they actually were in the business of selling the drug and opposed to creating a means to have it purchased? So that means when I put up orderwindows.com and I start selling windows OS, I will be in the clear.

Head spinning.... I can here the million of orderxxxxx.com sites being registered now.

Like I said, I may regret this, but willing to take my punishment like a man. But I do believe these are 2 different situations..

Comment #22

So what are the legalities of a site named FindProductNameOnline.com which is a typical parking page with search results from Google (or similar) for ProductName?..

Comment #23

I think this is an interesting thread. Ethics aside, what is the worst that can happen to someone who holds TMed OrderDrugName.com?.

Suppose one registered such TMed name though his Delaware LLC (thus the corporation is the owner of the domain) and joined some online pharmacy affiliate program, profiting from commissions. Then Cease and Desist letter comes in from some big pharma's legal department.

Given that the name is held through a corporation, even if TM owners will seek punitive damages the most they will get is the domain itself - assuming the corporation does not hold any other assets, it will be unable to pay any damages and will simply file Chapter 7 bankruptcy.

What do you guys think?.

By the way, I would never knowingly infringe on anyones copyright/TM - this is just a hypothetical scenario...

Comment #24

The TM holder stated that they served the C&D because the domain is showing ads from advertisers they have issues with.

I think one way to keep the domain is, to agree with the TM holder to stop showing ads from these other advertisers. Check out if the TM holder have an affiliate program you could join and just sell the drug from the TM holder. It is a win-win situation, I'd say...

Comment #25

Some TM holders don't want their name used by anyone else and enforce it strongly even among their legitimate sales channels. Others allow their licensed franchises, regular distributors, or resellers to make legitimate use of it while selling their product. I think this is pretty much what jberryhill is referring to. However, from the original post it sounds like some potential bad faith use is coming into play.

From the comment made by the TM holder in this case, they have an issue with banners they can't control on a domain containing their name. Showing ads that could be competitors, sellers of counterfeit drugs using their brand, or black or gray market product will almost always bring a dispute. If in fact you have a business relationship with the TM holder, first ask permission if you can use the domain to promote selling their product, or look at your written distributor or sales agreement. That is a win-win situation in most cases. Asking after the fact won't generally be as positive an outcome, especially in a case like this where something they don't like was used on the site. I"m not sure they would believe you now, unless you have history to prove your stated long term intent.

In a TM usage situation, you are responsible for what goes on your site, so you shouldn't put anything you can't control such as unfiltered ads...

Comment #26

The question remains, though - what's the worst that can happen if the domain is registered through a corporation?..

Comment #27

At minimum, lose the domain name. The worst possible thing that can happen.

Depends on how far the trademark holder is willing to go...

Comment #28

So the fact the the domain is held through a corporation or LLC does not protect the individual owner?.

The ways I see it, TM owner can't go after personal assets of the domain owner when seeking damages - hence the "limited liability" concept...

Comment #29

John is right in that owning orderviagra.com is not actually a TM violation especially if the site provides the actual service. This is how game stores (my past profession) gets away with having logos and game names everywhere in their ads.

Open any Best Buy circular. They have dozens of printed material advertising for sale a product of another company. That's the business. That's fair-use. The drug MANUFACTURER relies on resellers in order to sell to consumers. If the site order-keyword.com can show it's providing a legitimate service that's fair-use imho.

However...most of the time these places are not using the domains in a fair-use manner but instead riding the fine line between squatter and fair-use...leaning toward squatter...

Comment #30

I'm wondering specifically if it is illegal to own a domain name like this (OrderDrug.com) vs. the complications that arise in developing it? I understand that it is illegal to park pages like this and profit from them - but for clarification if hypothetically, all content is removed and the domain shows a blank white screen, can a company demand that you transfer a name to them? Put another way, how does the act of owning a specific domain name dilute a TM?..

Comment #31

Limited Liability has a nice ring to it, but as written several times before, if you're the only one on paper in the LLC, it's standing reverts to sole proprietorship...

Comment #32

Bankruptcy, Personal liability in regard to negligence, loss of other assets of the corporation and it's stockholders, Loss of future income, loss of cost of forming the corporation... Even if protected by a corporate structure, that doesn't mean you won't still be sued individually and have to pay the fees to defend yourself. Yes, they can demand anything. They could argue that the blank white screen confuses their customer into thinking they are out of business or the site is down. Doesn't mean they'll win, but even a winning fight takes time, money, or both. Say you register something less credible than order-product.com and register something like ebaysupport.com.

Even if you registered something legit like ebay-baseballcard-shop.com to sell on ebay, they feel compelled to stop it because allowing it makes others think they allow it for any purpose and register more. The more they allow, the harder it is to defect the mark when they have to...

Comment #33


This question was taken from a support group/message board and re-posted here so others can learn from it.

 

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