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Trademarks & Domain Names...

by Gene Pimentel
13 replies
It's a frequently asked question here in the forum... "can I use a brand name in my domain?" or similar. Here's why it's very important to stay clear of trademarked terms in your domain name...

NewYorkNewYork.com Decision: Owner Loses Domain Name + $101,000 Judgment

"The domain name NewYorkNewYork.com appears to be a completely generic geographic domain name, since New York City is known as New York, New York. However, New York New York Hotel & Casino in Las Vegas had a major issue with the usage of the domain name..." FULL STORY
#domain #names #trademarks
  • Profile picture of the author sbucciarel
    Banned
    Wow ... who would have expected a generic geo domain to be infringing.
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    • Profile picture of the author brendan301
      I generally try to stay away from brand names in domains. I've gotten letters from the owners threatening me with legal action if I continue to promote the sites. It's just not worth the headache to me so I don't use them.
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    • Profile picture of the author seasoned
      Originally Posted by sbucciarel View Post

      Wow ... who would have expected a generic geo domain to be infringing.
      HEY, APPLE is generic ALSO!

      Steve
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      • Profile picture of the author sbucciarel
        Banned
        Originally Posted by seasoned View Post

        HEY, APPLE is generic ALSO!

        Steve
        Yes, it is and I could most likely launch an apple recipe website or apple pie website without a problem as long as it didn't show computer/technology related ads.
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        • Profile picture of the author Gene Pimentel
          Originally Posted by sbucciarel View Post

          Yes, it is and I could most likely launch an apple recipe website or apple pie website without a problem as long as it didn't show computer/technology related ads.
          Exactly. If the owner of NewYorkNewYork.com had created a site about the city itself, this would not have been an issue.
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          • Profile picture of the author Dan C. Rinnert
            Originally Posted by Gene Pimentel View Post

            Exactly. If the owner of NewYorkNewYork.com had created a site about the city itself, this would not have been an issue.
            That's the key there. In this case, it's more about how the domain was used rather than that there was a trademark in the domain name.
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  • Profile picture of the author seasoned
    For what it is worth, I agree with the writer of that blog. The name is NOT a valid trademark, as it is GENERIC! But non use of the domain makes it CYBERSQUATING, and use to promote another business or unrelated item is bad faith and possible trademark infringement, even if it isn't a good trademark. It's ironic that the hotel is doing the same sort of thing, and it is in las vegas. The domain holder gambled and LOST!

    At least the hotel tries to replicate newyork to a degree.

    Steve
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  • Profile picture of the author seasoned
    Yeah, that's what I meant when I said "use to promote another business or unrelated item is bad faith and possible trademark infringement" So if newyork newyork were used to promote a business they didn't own, such as "newyorknewyork hotels"(Confusion with the brand and possible trademark infringment), or used to promote newjersey(no logical relation, bad faith, and could be considered cybersquatting under the UDRP), they could be in trouble.

    Steve
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    • Profile picture of the author Dan C. Rinnert
      Originally Posted by seasoned View Post

      ...or used to promote newjersey(no logical relation, bad faith, and could be considered cybersquatting under the UDRP), they could be in trouble.
      If it were used to promote New Jersey, that could be considered satire.
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  • Profile picture of the author fairlights
    That is insane. Another win for the big corporations...
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    • Profile picture of the author Dan C. Rinnert
      Originally Posted by fairlights View Post

      That is insane. Another win for the big corporations...
      Insane was putting a picture of the New York New York Hotel & Casino on his home page.
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    • Profile picture of the author Kay King
      It is NOT insane - they were using a trademarked name to promote a similar product. You can't do that.

      This article is perfect for the repeated questions here about using brand names in domains. The people that ask are intending to build the site around that brand name and usually the only question is "will I get in trouble" or "what will happen if they object".

      Too often, the answers indicate "you will get a warning and have to take the site down" - but it can be more than that...apparently, much more.

      Good one, Gene.
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  • Profile picture of the author VegasGreg
    The owner of that domain name probably read a WSO here that told him it was ok to do such a thing. lol

    I have read 2-3 recent WSOs that straight up tell people to by domains with popular gadget keywords in them (like ipaddeals.com...etc). It amazes me that people still think they can get away doing this.

    Anyways, great post Gene, I love hearing about these stories.
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