Trademarks in Domains---Green Light or Red Light??? Help please!

[willz605]

Ok....

Enough is enough.....

Can I include a trademark name in the domain without risking a thing?

example:

SpongeBobblanket.com

or : InfantSpidermancostume.com

What's the verdict please!

[WD Mino]

You should look up trademark infringement in domain names
-WD

[Sparhawke]

It is a grey area, if you state in no uncertain terms that you are not the official site yet link to the original I don't think you will have a problem, but they could take umbridge and close you down.

As Mino states, you will certainly have to have the trademark thing linking back to their original site.

[digigo]

NOT LEGAL ADVICE:

you will have legal trouble.. you need explicit permission from license owner .. however, if the the blanket manufacturer has permission, and you are mere distributor, you are not selling anything else on that site, it would be OK..that name should be part of the agreement between manufacturer and license owner

[KarlWarren]

In some instances, you might as well register the domain
and then send it straight to the trademark owner.

There is no definitive answer as to whether you will get
caught/sued/asked to give up the domain - as each
trademark owner has their own policy with regard to their
trademark being used. Some are more aggressive than
others.

I wouldn't like to come up against Disney (who now own
Marvel) though, in court - if you register the SpiderMan
one.

[willz605]

WD and Sparhawke.....

Thanks so far....

I've read its a grey area...doesn't help me..

Ok....I understand that I can stay with generic terms like...

oldcomicbookheros.com



thanks

[kindsvater]

Before the end of the week I'll have the Internet Marketing Law Center updated with a thorough trademark guide that answers these common questions on the forum - with lots of examples. With the new content will come a new Warrior discount. Send me a PM if you want to make sure you're notified of the release.

But I won't leave you wholly hanging here. Not legal advice mind up, especially without knowing what content will put put on the domains, but I give a thumbs up to the spiderman domain.

[KarlWarren]

Originally Posted by kindsvater

I give a thumbs up to the spiderman domain.

That surprises me...

I guess I must be over-cautious. Presumably this is due to the usage it would be put to?

I'd have thought Disney would be quite aggressive with TM protection. But I know very little about trademarks.

[Sparhawke]

Speaking for myself if I was Disney and I had 100-1000 sites like this constantly linking back to me I would have no problem with it as it would raise my profile, if someone wants to sell my blankets and I have given them license to do it I would be crippling them by making sure they could never use the name at all.

I would say go for it, it will only cost you $10 and if you do get their permission you have a wonderful domain name and it would've cost you virtually nothing, certainly much less than many "get rich quick" schemes that people like to buy lol

[willz605]

wow....you guys are really fast....very much appreciated....

Let me give you an exact idea.....

makitamitersaw dot org


From everyones point of view....sounds best to stay away from trademarks in domains

thanks

[Kay King]

If Brian says go for spiderman, it's probably ok. However, I've worked for two major sites that had similar "super hero" products - and they didn't use the trademarked terms even for the page titles.

Can I include a trademark name in the domain without risking a thing?

short answer - no

[redicelander]

Red light with anything trademarked or that may become trademarked in the future. For example, I think Spiderman has 3 movies in the last few years, so you could go out and register Spiderman4 . com before it comes out, thinking they will want that domain and so they'll pay you for it, or you can use it for all the organic traffic which will come naturally, etc. But you could still get in trouble with that domain and they could easily get the domain from you for nothing, if they know what they're doing.

It can be a grey area, because not every company is going to bother you about this, but I'd say red light just the same as they can always sue you and win every time.

[kindsvater]

To clarify some issues:

Sparhawke - it is incorrect to rely on asserting one is not the official site with a link. While there was a case last year referencing that a factor which helped the domain owner, it was in a particular circumstance not applicable to most uses of marks in domain names.

digigo - that is incorrect. There's a reason why there are hundreds, if not thousands, of domains referencing spiderman; and undoubtedly millions of domains with trademark references.

KarlWarren - it is incorrect to assume the answer depends on the trademark owner's policy. There is only one standard: a legal one. A trademark owner either follows it or they risk giving up their mark. Many domains with a mark somewhere in them do not risk anything for the trademark owner. You are correct, though, that some companies are IMHO considered more aggressive in pushing the envelope about trademark issues (or they may assume they can make threats and collect domains because no one wants to even risk litigation): eBay, Playboy, Mattel come to mind.

[digigo]

if the site sells nothing but the mark owner's or licensee's product it will be ok.. the other fellow in another thread asking if Nokia can be used in the domain name... if the site is selling nothing but Nokia product.. that will be OK my analogy is many offline stores use Nokia in their name

So if the site is a fan site.. then it will be OK because by doing so it does not create confusion as to the origin of the product which is the intent of trademark law

[Sparhawke]

Originally Posted by kindsvater

Sparhawke - it is incorrect to rely on asserting one is not the official site with a link. While there was a case last year referencing that a factor which helped the domain owner, it was in a particular circumstance not applicable to most uses of marks in domain names.

Of course, you have obviously at that point redirected traffic from them specifically already with your name, what I meant was putting that AFTER you have gone to the trouble of contacting their legal department and asking permission and BEFORE actually putting the site live.

Most websites I have noted in all my time always state with a small disclaimer at the bottom of their website that all trademarks belong to disney or other company, some companies allow you to use their trademarked name such as games companies, some dont.

A perfect example of this is here, they recognise that fansites will be made and they give permission with a couple of provisos.

You have to contact them personally and see what they say, but grabbing the name first before anyone else gets the idea may cost you only a couple of dollars and if they say "no" you have lost next to nothing, if they say "yes, you may use it" you might be sitting on a winner. No company can register absolutely every single possible name that could be registered, and spongebobblankets.com is a lot different to dissney.com

By being upfront and saying you have it and being aware that you may have to hand it over you at least cover your own behind.

[KarlWarren]

Originally Posted by digigo

if the site sells nothing but the mark owner's or licensee's product it will be ok..

Really?

What about another recent thread in which Amazon contacted a warrior asking them to hand over Amazon-Kindle-Store.com or something similar?

From which he ONLY promoted Amazon Kindles.

Presumably, from the assertations you're making, you're a legal professional?

[willz605]

I am extremely thankful to everyone that replied.....

I will take the majority of everyone's advice and stay away from trademarks in domain names for now...

The video above in this thread was informative...thanks

[digigo]

nope... that is a shame.. but here is another one www. amazon-kindle2.org how this one gets away from legal trouble? could that be the site you referenced did something that pissed off amazon?

license owner does have ultimate say in whether to let live or kill a site containing their mark. so to correct my previous post.. if you use the mark in a flattering manner you have a chance of survival otherwise you will have trouble from the right owner

[WD Mino]

Thanks Mark,

That is the video I was trying to recall when I told him to look up trademark infringement that sums it up pretty clearly. Getting into tm names is like jumping into a vat of hot oil. you just don't do it
-WD

[Kay King]

Mark -

I say that because unlike the rest of us who aren't qualified to interpret the law - Brian is an attorney and well versed on this subject.

When an expert is available - that's who I listen to.

Of course, that said, I still avoid trademark names. Just don't want the hassle.

[willz605]

digigo.....

The site you referenced...I've checked the others link at the bottom where its basically a sitemap of many websites with tons of trademark names in the domains.....

This is what I'm talking about.....

check out: callawaybigbertha.info

Isn't this a trademark infringement???

[kindsvater]

Mark:

Let's see if we can ultimately reach a point of agreement .. and possibly illustrate an important legal rule in the process.

I'll agree that registering spiderman.com is cybersquatting.

Would you agree that registering whymarkdoesnotlikespiderman.com is not?

---------

Also, I'm looking at this as to whether a domain name is legal or not. Not whether or not someone can afford to litigate a dispute, even if it is frivolous. Although one cannot assume it is expensive. I've seen situations where someone wins the domain name dispute even though they default and put up no defense. Cost them nothing.

But I don't want to get sidetracked on financial issues. Whatever the issue, hardly anyone can afford litigation.

[Sparhawke]

Originally Posted by kindsvater

Mark:

Let's see if we can ultimately reach a point of agreement .. and possibly illustrate an important legal rule in the process.

I'll agree that registering spiderman.com is cybersquatting.

Would you agree that registering whymarkdoesnotlikespiderman.com is not?

---------

Also, I'm looking at this as to whether a domain name is legal or not. Not whether or not someone can afford to litigate a dispute, even if it is frivolous. Although one cannot assume it is expensive. I've seen situations where someone wins the domain name dispute even though they default and put up no defense. Cost them nothing.

But I don't want to get sidetracked on financial issues. Whatever the issue, hardly anyone can afford litigation.

Besides which, viacom cancelled spongebob as a trademark on 2nd May 2009 according to the site you gave us

Trademark Electronic Search System (TESS)

Regardless of who is right or wrong we can go around in circles for years, very few of us are ever all that well versed in legal matters of every single description but I think we can all agree that if we are making a spongebob fansite they will not sue everyone in sight since that would be corporate suicide, there would be no longer any fans willing to support them.

[willz605]

To Brian and Mark.....

I'm really thankful to the two of you for being so passionate about this issue.

I agree that Spiderman.com is cybersquatting too after having watched the video referenced above....

Still Unclear for Me! ........adding words before and/or after trademark in domain is a violation of the law.

That said....I'll stay away unless I get permission to use.

[Sparhawke]

Agreed Mark, might as well move on and avoid anything in the name unless expressly given permission to use it and what terms you have to comply with.

[kindsvater]

OK Mark, fair enough. As someone recently said on another thread, it sucks trying to debate a lawyer.

Ironically, this really is commonsense.

With regard to whymarkdoesnotlikespiderman.com, there are two possibilities:

1. This infringes the spiderman trademark, or
2. It does not infringe the spiderman trademark.

If it infringes it is because the trademark owner has a monopoly on any reference to its mark - any domain that contains spiderman is infringing.

Hopefully, you agree that is not the law. Commonsense will tell you that a zillion domains have trademarks in them. Perhaps paypalsucks.com comes to mind. How could there be so many domains if any reference to a mark in a domain is illegal?

And, if there were exclusive rights to use a word, then how come you see ads on TV, book titles, web page references, media reports, etc., that use trademarks all over the place?

Obviously, because there are no monopoly rights. (Oops, monopoly is another trademark.)

(Besides, if this was the test it would put lawyers out of work!)

So if there is no automatic, easy to apply bright-line rule that using any mark is improper, what is the test?

More specifically, what does a trademark protect? What is its purpose?

When you are ready to accept that answer, and not merely I've stated my case and I'm not talking about this anymore, I'm guessing - since you're a copywriter - that a ton of possibilities will explode into your mind.

[digigo]

Here is the concept of "fair use".. media profession is exempt from infringement issue from what I understand.. it makes a lot of sense.. otherwise how would you report or comment on an entity ??

Fair use - Wikipedia, the free encyclopedia

That would explains why case 2 may not be an infringement.

[Sparhawke]

I have just found a product on the web in the technology sector that SPECIFICALLY uses a possible future copyright of Apple.inc, but uses the .org rather than the .com that they would usually register first.

They go on to state that they have been in the internet website development 14 years which would make me ask "are they stupid?"

Obviously they are going to be in the deep creek in the future...however, it has to be wondered upon if Apple will ever actually use that name and choose to pursue it.

If they do decide to go ahead and use it obviously they will not take kindly to a couple of idiots trying their luck and simply blow them out of the water...and this is what you have to be aware of.

They are cybersquatting.

[TimGross]

Originally Posted by willz605

Can I include a trademark name in the domain without risking a thing?

The answer to that question is a definitive "No", and that is fact, not opinion.

You cannot include a trademarked name in a domain name without risk.

Some companies defend their trademark more vigorously than others, and some people registering trademarked domain names run into trouble while others may not, but don't be mislead by people pointing to random examples to "prove" that you can't get in trouble.

-That's like someone saying that their friend robs banks and has never gone to jail so it must be OK to rob banks.

Your question wasn't, "Is it possible I won't run into any trouble?", your question was "Can I do it without risk?"... and the answer is no.

[kindsvater]

Here's a question - does anyone actually review registered trademarks before buying a domain? Does anyone actually research potential common law trademarks?

The answer is probably no. As a result, you may committing trademark infringments without even knowing it (at least according to some).

It's amazing what has been trademarked.

One of my favorite trademarks is 'wow'. Another is 'gross'. Sorry Tim, hope you're not getting any domains with your name!

Oops, distant relatives in Kansas have always operated Kindsvater Trucking. Now I also see a Kindsvater, Inc. Is there a risk I could someday lose kindsvater.com, or be sued for infringement because someone else probably has a kindsvater common law trademark and could register federally at any time? No.

[davezan]

If your location in your profile is correct, willz605, there are actually a couple
of intellectual property lawyers in your area who do domain-trademark cases.
MarkAndrews' video has one of the best over there.

But ditto with TimGross' answer if you can register a domain with a trademark
without risk. Then again, what doesn't have a risk?

And Brian, I thought lawyers aren't supposed to use the word trademark as a
verb? He he.