Avoid trademark infringements by using subdomain?

Interesting ... especially the ironic post from "sbucciarel" ... checking out her site, it took just a couple minutes to find domains containing or referencing trademarks that she is selling / flipping.

And there is the quote from "Miles" on the page she links to:

"It is against the law to use someone else's trademark in a domain name ...."

At least Dan suggests asking the lawyer. And I say read Dan's post. It's pretty good. As usual.

Here's the skinny on what can quickly become a complex area of law:


- It is not against the law to use a trademark in a domain name.

There is no such law.

For example, here is a domain I could register, close to the example "Miles" uses, which is perfectly legal and I guarantee (as much as a lawyer can guarantee anything) does not by itself infringe any trademarks:

why-brian-loves-his-new-ipad.com


- What a trademark does is protect an identity associated with a product to prevent consumer confusion as to who is responsible for the product.

That is why my domain example is not infringing. There is no possible consumer confusion as no one would believe that is an Apple website.

(I expect someone to come along and say that is what "they" think -- so let me word that differently -- it is not something your average, reasonable consumer will think.)

Of course, registering why-jared-loves-subway.com could result in a different outcome.

And of course, if I register appleipad.com there is plenty of potential confusion as that appears to be an official Apple site.


- Generally, a trademark does not give someone monopoly rights on that word.


Now for the ultimate question, what about subdomains?

Although there was the one lawsuit years ago by an "interesting" group on the issue (that garnered it plenty of publicity) that did not result in any rulings, there are not "lawsuitS" being filed over this issue.

In my opinion, as a general rule the practice is fine.

Naturally, I have to say "as a general rule" because if I say it is simply fine, someone will come along with an example I have not thought of and I might have to change my mind for that example.

But after reviewing literally hundreds of domain dispute judicial rulings, and having litigated similar issues, I have not seen a situation, or read any court opinion, that would make me think there is a problem with subdomains.

Here is the rub ...

The problem with a trademark as a domain is the initial consumer confusion that may arise from seeing the domain. You're not going to have that with a subdomain.

* But that doesn't mean its open-season to do anything you want with the subdomain.

For example: if you create your own "Sony Camera" to sell on sony.yourdomain.com, then you've got a problem. Not just with the product, but possibly also with the subdomain because it is part of a broader scheme to infringe on Sony's trademark.

That is the scenario I see as most likely if such an issue ever reached a court.

But, if you're an affiliate for Amazon, Best Buy, etc., and you're promoting Sony cameras as sony.yourdomain.com, that's fine.

In fact, there are opinions ruling that type of situation can give you certain rights to use a trademark, even in a regular domain.

That is because it is a legitimate use.

This "skinny" is getting a little long, so I'll stop. But here's a rule of thumb I've learned from 20 years in practice ... Person A can do something that is trying to make an infringing use of a trademark and be real slippery in trying to avoid liability. Person B will do the exact same thing, but it's a wholly innocent situation and there is no attempt to infringe. Judges tend to find a way to hold Person A liable - but not Person B.