Comments

1. UDRPtalk says:

   January 24, 2012 at 8:04 pm

   GoDaddy isn’t the registrant, so why should they be concerned?

   Blaming GoDaddy is like blaming Verisign for allowing them to be registered in the first place. That’s not where the line should be drawn; it should be drawn based on usage.

   For example, FaceBookExpert.com seems like a fair domain for someone who provides FaceBook Consulting.

2. Lucius "Gunz" Fabrice says:

   January 24, 2012 at 8:08 pm

   UDRPtalk – Not only is GoDaddy the registrar but it’s also the platform for their sale. It’s like peddling warez on eBay.

   Regarding your “fair use” doctrine, that’s akin to saying URDPTalkExpert.com would be fine to register, if you had a tm for “UDRPTalk”.

3. UDRPtalk says:

   January 24, 2012 at 8:18 pm

   If I ran a site called UDRPtalk, and some 3rd party is an expert, I don’t see anything wrong with someone else owning UDRPtalkExpert.com since it would describe that person’s proficiency. Same goes for FaceBookExpert.com.

   The line needs to be drawn at usage, otherwise, why blame TDNAM? Why don’t you blame Verisign for allowing it to be registered in the first place? Doesn’t make sense.

4. Lucius "Gunz" Fabrice says:

   January 24, 2012 at 8:36 pm

   UDRPtalk – Is this legal advice? Because I sense you’re just playing devil’s advocate, ignoring the principle of trademarks. This is a famous mark and these domains are outright violations. Some of them even infringe on two marks at the same time: facebookzynga.com

   And why should TDNAM/GoDaddy be immune from any legal action when they offer the platform to sell and receive commissions?

   Doesn’t make sense indeed.

5. UDRPtalk says:

   January 24, 2012 at 8:52 pm

   So I suppose Mike Mann shouldn’t offer http://www.FaceBookExperts.com, right?
   He listed it at TDNAM for $500 which I see nothing wrong with someone owning that who are experts.
   Mike Mann also owns http://www.FaceBookConsultant.com which is not listed at TDNAM, but again, nothing wrong with a 3rd party who is a FaceBook Consultant.

6. Lucius "Gunz" Fabrice says:

   January 24, 2012 at 9:08 pm

   UDRPtalk – Is this your professional opinion? Are you an IP attorney? Please describe your status.

   Correct, trademark violations such as facebookexperts.com and facebookconsultant.com should not be listed in any marketplace, period. TDNAM has almost 500 of them listed above.

7. UDRPtalk says:

   January 24, 2012 at 9:17 pm

   Why are you asking if I’m an IP attorney? I don’t need to be an IP attorney to state the obvious.

   So why blame TDNAM? Why not blame Verisign for allowing them to be registered in the first place?
   Or why not blame TDNAM’s hosting provider for allowing TDNAM to host auctions?

   Usage is the acceptable line, and TDNAM are not the users. Should Escrow.com refuse any transaction that contains the string “facebook”?

   You can’t draw the line wherever you want.

8. Lucius "Gunz" Fabrice says:

   January 24, 2012 at 9:30 pm

   Ah, ok then; since you don’t profess to be an IP attorney I understand that your prior posts are your personal opinion, and a non-expert one for that matter. Because I would be alarmed if you were. 😉

   The only “obvious” thing is that a famous trademark is being peddled in multiple occasions.

   Whether certain of those domains are owned by Mike Mann isn’t the matter, what matters is that if Facebook stepped in with a court order TDNAM would have 453 violations to deal with.

9. UDRPtalk says:

   January 24, 2012 at 9:38 pm

   So you’re saying that FaceBook could step into Verisign with a court order?

   Also, you didn’t answer my question about Escrow.com.

10. Lucius "Gunz" Fabrice says:

    January 24, 2012 at 9:41 pm

    Would a crime that occurs behind the scenes not be a crime?

    No, it’s still illegal to profit from the sale of marks of others and TDNAM does exactly that. The same of course happens at Flippa.com.

    Does this answer your question?

11. UDRPtalk says:

    January 24, 2012 at 9:50 pm

    So is Verisign and Escrow.com guilty for profiting on domains that contain “FaceBook”?
    And then would that mean that Verisign and Escrow.com’s hosting provider be guilty too?
    And how about Verisign and Escrow.com’s building landlord for allowing them as building tenants to transact in domains that contain “FaceBook”? How far up the blame chain are you going to go?

    Obviously, you can’t blame anyone other than the domain owner’s usage, otherwise it would be possible to sue Verisign too since they control the .COM/.NET registry, but the law doesn’t allow for Verisign to be blamed.

    Again, you can’t draw the line wherever you want; it’s ownership combined with usage that matters in the end.

12. Lucius "Gunz" Fabrice says:

    January 24, 2012 at 9:57 pm

    You state the obvious.

    Yes, any third party profiting from the sale of products infringing on the marks of others can be sued. Otherwise it would be legal to profit from the sale of counterfeit goods.

    The line is drawn right where a tm holder enforces their rights.

13. UDRPtalk says:

    January 24, 2012 at 10:04 pm

    I’m sorry Lucius, but Verisign is immune from being liable for allowing domains to be registered that contain “facebook”. Otherwise, you would have seen lawsuits that go after Verisign instead of the registrant, but that’s not how the law works.

14. Alan says:

    January 24, 2012 at 11:11 pm

    Stick to domaining humor…………..we don’t need a “url” cop. As for these obvious trademark violations,
    let facebook worry about them.

15. Lucius "Gunz" Fabrice says:

    January 24, 2012 at 11:30 pm

    Alan – Sorry sport, I report the news and things of interest. But now that you mentioned “URL cop” perhaps I should contact Facebook for their insight on the subject. Do you think that’s outside of a thinking man’s actions? Or are you used to linear thinking e.g. eat/sleep? That’s what dogs do.

16. jayjay says:

    January 25, 2012 at 8:21 am

    You missed a few more ‘ultra premiums’, 🙂

    Lucius-Gunz-Facebook.co $50,000
    DomainGangBook.co.cc $50,000
    FaceBookTDNAM.gy $50,000

    Deal is to be done with UDRP consultants and ip attorneys via escrow, oh paypal payment is accepted too~!! 😉

17. Francois says:

    January 25, 2012 at 9:27 am

    Nice find!

    It’s a shame to authorize such domains for sale in a respectable marketplace.
    And after we cry when people say domainers are cybersquatters!
    Because it’s what we are if we authorize such practices.
    Do not be astonished after if they try to launch SOPAs, PIPAs, … as a response.

    I understand it’s difficult to automatically filter domains based on trademarks, but they are very popular trademarks that can be automatically filtered by tools like Estibot for example.

    Drop me a note at info at cax.com if you see any domain for sale infringing a popular trademark at CAX.com and we will immediately delete it.

    I hope GoDaddy will do the same now they are aware of this fraudulent sale attempt.

18. Server Deals says:

    January 25, 2012 at 10:30 am

    If you check Godaddy you will notice the appraisal values are high for trademarked names. That is one nice way to promote trademark name sale…

19. Kate says:

    January 25, 2012 at 10:39 am

    “Blaming GoDaddy is like blaming Verisign for allowing them to be registered in the first place. That’s not where the line should be drawn; it should be drawn based on usage.”

    There is still a problem, I don’t see bona fide usage with these names right now.

20. Trico says:

    January 25, 2012 at 12:42 pm

    UDRPtalk says:

    “GoDaddy isn’t the registrant, so why should they be concerned?

    Blaming GoDaddy is like blaming Verisign for allowing them to be registered in the first place. That’s not where the line should be drawn; (Point 1)

    …it should be drawn based on usage.”

    For example, FaceBookExpert.com seems like a fair domain for someone who provides FaceBook Consulting.” (Point 2)

    UDRP,

    Let’s take each Point one by one.

    Point 1

    Blaming GoDaddy is NOT like blaming Verisign for allowing them to be registered in the first place.

    A new domain registration that includes a famous TM has too many unknowns.

    First of all the domain does not exist. It has to be created (registered).

    Neither the Registrar or Registry knows the purpose of the registration or if the Registrant is the TM Holder, represents the TM Holder or has authorization from the TM Holder.

    But GoDaddy cannot hide behind this innocence defense.

    Remember we are talking about infringement of obvious famous TMs.

    The domain now exists. It has expired and includes a famous TM.

    GoDaddy lists these domains in TDNAM and will sell them to anyone without regards to rights or authorization.

    To me, GoDaddy selling expired domains that contain obvious TMs is like a Pawn shop knowingly selling stolen goods along side regular inventory.

    Certainly a company the size of GoDaddy could screen for such domains and have human verification.

    At the very least GoDaddy should have a system that allows such domains to be reported for possible removal.

    But they don’t.

    —

    Point 2

    Your point out that a domain that possibly infringes a TM could claim fair usage as in the example you gave above, FaceBookExpert.com.

    It’s a valid point.

    But Kate hit the nail on the head when she said,

    “I don’t see bona fide usage with these names right now.”

    Bingo!

    There is no usage, fair or otherwise, of these expired TM infringing domains.

    By listing these domains at auction, GoDaddy is profiting off TMs that belong to others.

    These domains can be bought by anybody and just by having them listed at TDNAM facilitates and encourages TM infringement.

21. Lucius "Gunz" Fabrice says:

    January 25, 2012 at 12:49 pm

    Trico – Thank you for taking the time to explain it in such a detailed manner, making it easier for common folks to understand the situation. You’ve earned a DomainGang badge 😀

22. Trico says:

    January 25, 2012 at 2:04 pm

    “Trico – Thank you for taking the time to explain it in such a detailed manner, making it easier for common folks to understand the situation. You’ve earned a DomainGang badge”

    Thanks Lucius.

    But can I have one of your Pigeon Shit domains instead?

    🙂

23. UDRPtalk says:

    January 25, 2012 at 2:53 pm

    If FaceBook disputes the registration and usage of any of these listed domains, they can use the whois of each domain to address the situation. Delisting them from TDNAM doesn’t make the domain go away. Besides, a domain name in itself cannot be infringing; it’s how it’s used that matters which is why it’s not TDNAM’s problem just like how it’s not Verisign’s problem either.

24. Island Woman says:

    January 25, 2012 at 3:11 pm

    There are propably as many aspects of the domain TM issue as there are opinions and a source of debate for many moons to come.

    I have one question for the author of this article. This is a trick question. You are duly warned :).

    What are the supportive facts that these domains are in fact Trade Mark violations?

25. Lucius "Gunz" Fabrice says:

    January 25, 2012 at 3:47 pm

    UDRPtalk – Feel free then to open a pawn shop selling counterfeit or stolen goods and see how fast your commissions get clawed back by the police once the goods are declared as such.

    Island Woman – Visit USPTO.gov and search for “facebook” if you’re not aware that “Facebook” is a famous trademark.

26. UDRPtalk says:

    January 25, 2012 at 6:00 pm

    Lucius- If the only supportive fact is that FaceBook has a USPTO trademark, then that is insufficient.

    What Island Woman is asking is what evidence is there that these domains are being used in an infringing manner?

    Furthermore, you clearly feel that TDNAM is guilty, but I didn’t see any mention by you that Verisign is guilty. Why haven’t you attacked Verisign?

27. Lucius "Gunz" Fabrice says:

    January 26, 2012 at 1:01 am

    Those venues that implement zero measures to curb obvious and blatant trademark violations (facebook, iphone, apple, adidas etc.) profit from these listings, either in the form of listing fees or by collection sales fees. The notion that the industry is self-cleaning and domainers abstain from buying those trademark violations is silly, particularly when these venues (TDNAM, Flippa) list the domains’ performance, traffic – even a quick evaluation. On the other hand, Sedo and Afternic police their listings. Nothing wrong with that; they save themselves from the heartache of having to go back later and pay penalties for allowing the sale of those domains once the tm holders file suit.

28. Ken says:

    January 26, 2012 at 11:40 am

    I find this debate quite humorous.

    Coming from a domainer that has been registering domains even prior to any of these domain trademark and cyber squatting laws existed (mid 90’s) and one that has received a few cease and desist letters from extremely large corporations…Trust me… Any person who is not the trademark owner that registers the trademark as a domain name engages in relatively straightforward trademark infringement.

    All of these opinionated and emotional comments about what should or should not be are utterly pointless. The fact of the matter is that – YES – if FB wanted to, they could waltz up to any of these parties (the individual registrants, GoDaddy, Verisign) and slap them with a lawsuit.

    Peace!

29. Successclick.com says:

    January 29, 2012 at 10:56 am

    This is a great article. I first revealed GoDaddy’s disregard for TM domains they were selling back in 2008, over 3 years ago. http://www.successclick.com/godaddy-trademark-infringement-watch_2008_10_16/

    However, I like your complete list of obvious TM violations. What, does GD have the ability and money to hire sexy models to belittle the female population but has no money to easily remove TM violating domains they’re selling to suckers?

    Of course. They don’t care. They run wild. They do what they want. They don’t care about the domain community. They don’t care about sanctions, violations, and even stupid choices (supporting SOPA, shooting elephants, ruining Danica Patrick’s focus on being a serious female racer, etc).

    Nice article, but there are plenty of domainers who gladly use the affiliate codes to keep promoting GoDaddy, like someone who votes for money to be spent building war machines to “help their local economy”.

    I’m sick of it.