Trademarks in the domain name

44 replies
What's the protocol on this? I see sites like "buyipad.com" or whatever all the time. If Apple wanted to, don't they have a case against that site owner?

Is buyipad.com better than ipad.com?

Do you guys register domains with product names in them?

Thanks, very curious.
#domain #trademarks
  • Profile picture of the author Adie
    iF buyipad promotes ipad, I don't think apple will have any problem with that. I have a clickbank site promoting clickbank product and have clickbank on its domain.. How many sites out there sells kindle products with "kindle" on their domains? Too many....
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  • Profile picture of the author great nosferatu
    I know there are a lot. I'm wondering if technically the trademark owner could come after you if they wanted to. Also, don't you think kindle.com would be way more risky than buykindlebooks.net or something like that?
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    • Profile picture of the author mike gregory
      Originally Posted by great nosferatu View Post

      I know there are a lot. I'm wondering if technically the trademark owner could come after you if they wanted to. Also, don't you think kindle.com would be way more risky than buykindlebooks.net or something like that?
      Amazon will flag any domain that mentions "kindle" i learnt this from a review site that i have, it was not too long before i was contacted and told to surrender the domain as it breaks amazon rules.
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      • Profile picture of the author great nosferatu
        Originally Posted by mike gregory View Post

        Amazon will flag any domain that mentions "kindle" i learnt this from a review site that i have, it was not too long before i was contacted and told to surrender the domain as it breaks amazon rules.
        cool, first hand experience is helpful.
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        • Profile picture of the author mike gregory
          Originally Posted by great nosferatu View Post

          cool, first hand experience is helpful.
          Yep good thing is they did buy the domain back off me for the price i purchased so i guess it was not all bad.

          Moral of the story don't even try and register trademark domain names they will catch you.
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          • Profile picture of the author great nosferatu
            Originally Posted by mike gregory View Post

            Yep good thing is they did buy the domain back off me for the price i purchased so i guess it was not all bad.

            Moral of the story don't even try and register trademark domain names they will catch you.
            That's not an awful result, considering. There are some very high profile websites with brand names in them. Just off the top of my head i started googling and here are a few forum examples:

            PreCentral
            Jeep Forum
            Halo 3 Forum
            Nissan Forums

            These are really high profile examples, six figure memberships; they are not just slipping under the radar. The explanation can only be one of two things:

            1. Usage in that context is legally acceptable
            2. They are in violation of trademark law, but the respective company allows it so long as they are promoting their product in an acceptable fashion.
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      • Profile picture of the author Adie
        Originally Posted by mike gregory View Post

        Amazon will flag any domain that mentions "kindle" i learnt this from a review site that i have, it was not too long before i was contacted and told to surrender the domain as it breaks amazon rules.
        Any idea how long these domains would last?

        thekindle-cover.com - top 5 (kindle cover)

        kindlecases.net - top 1 (kindle cases) - registered july 2010 and it has adsense on it. I am pretty sure this one is making money and impossible that amazon will not notice it since it's top one on a very high competitive keyword

        amazonkindleskins - top 8 (this one is gross)
        amazonsurf.co.nz
        amazonwatch.org (about amazon forest)

        and the lists goes on....
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  • Profile picture of the author Mike McAleer
    I have a site with apple and ipad in it but have not been contacted. I don't think Apple really cares about this since their products are being sold anyway through these sites..
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    • Profile picture of the author thedog
      Sorry guys, but Apple do care, and they do go after people, as well as other well known trademarks.

      I asked this very same question a few weeks back, as I saw some juicy domain names available, but they had trademarks in them... one actually had 2! and had some nice numbers.

      After asking on here, some senior warriors set me straight... While you may get away with this for a while, there's a chance that you will get a cease and desist email... they may even demand any income you've made from using their name.

      I've also heard, and can't be sure on this, that if you're site is selling stuff through Amazon, well, you're in trouble with them also.... probably banned.

      All I'm saying here is, it's not ok to do this, and if you do you have to be aware of the risks.

      I've heard using serial numbers is ok... I myself have a serial number domain... but let the trademarked one's go.
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  • Profile picture of the author sbucciarel
    Banned
    Apple - Legal - Copyright and Trademark Guidelines

    9. Domain Names: You may not use an identical or virtually identical Apple trademark as a second level domain name.
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  • Profile picture of the author JoMo
    If you use trademark names in your domain then you are putting yourself at risk. If you are promoting a company's product then they have the option to let it slide, but if they decide they don't like it you will lose the domain. So I would say it isn't worth the risk.

    Think of it this way. If your site does nothing then no one will pay any attention, but if the site is successful then they stand a good chance of noticing it and taking it from you. So it ain't worth it.



    -joel
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    • Profile picture of the author great nosferatu
      What about [product]forums.com. That type of thing is so common. Is it the case that all of these sites are in violation?
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  • Profile picture of the author dgridley
    thedog is 100% correct.. tempting as it is, the mere fact that you could be sued for any income you've derived from the domain PLUS additional damages should make anyone think twice. Better to use generic keyword domains..
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  • Profile picture of the author yukon
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    Why anyone would buy a domain with another business name?

    That's just asking for trouble, sooner or later.

    Chances are they won't start messing with you, until your site starts ranking good in the SERPs (page #1). All that work for nothing...
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    • Profile picture of the author Mike McAleer
      Originally Posted by yukon View Post

      Why anyone would buy a domain with another business name?

      That's just asking for trouble, sooner or later.

      Chances are they won't start messing with you, until your site starts ranking good in the SERPs (page #1). All that work for nothing...
      I agree I mean I created one that hasn't been caught yet.. you just have to know which companies actually go after these domains...
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      • Profile picture of the author great nosferatu
        I agree with most of you, but the harshness of some of the replies doesn't seem to take into account the frequency and profile of some of these sites.
        There are some very high profile sites with names such as [product]central.com or [product]forum.com.

        Isn't there probably a big difference between a business name that indicates, "We are a community devoted to product x" and one that might be construed as a representative or vendor of product x?
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        • Profile picture of the author Mike McAleer
          Originally Posted by great nosferatu View Post

          I agree with most of you, but the harshness of some of the replies doesn't seem to take into account the frequency and profile of some of these sites.
          There are some very high profile sites with names such as [product]central.com or [product]forum.com.

          Isn't there probably a big difference between a business name that indicates, "We are a community devoted to product x" and one that might be construed as a representative or vendor of product x?
          Yes but what do you think this difference means?
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        • Profile picture of the author JoMo
          Originally Posted by great nosferatu View Post

          I agree with most of you, but the harshness of some of the replies doesn't seem to take into account the frequency and profile of some of these sites.
          There are some very high profile sites with names such as [product]central.com or [product]forum.com.

          Isn't there probably a big difference between a business name that indicates, "We are a community devoted to product x" and one that might be construed as a representative or vendor of product x?
          The point is not that you can never get away with it. The point is that you could lose your investment at any time, and usually after it becomes successful. So just for the fact that you could lose a site, means it is not worth the risk, to most.

          Now if you are the type that likes to "get away with stuff" and you do a lot of grey or even blue fart marketing, then you will want to risk it, and by-all-means go for it, big daddy.

          What's the worst that could happen?...



          -joel
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  • Profile picture of the author Jake Gray
    If you think it will get you in trouble, chances are it will.

    I wouldn't do anything with a trademarked name in it. It's commonsense through-out the net now.
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    • Profile picture of the author thedog
      Ye, one of my favourite movie quotes springs to mind.

      Robert Deniro in Ronin

      "If you've any doubt, there is no doubt"
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    • Profile picture of the author Mike McAleer
      Originally Posted by Jake Gray View Post

      If you think it will get you in trouble, chances are it will.

      I wouldn't do anything with a trademarked name in it. It's commonsense through-out the net now.
      Although I do not do this anymore, I did buy one a while ago and that one is making me a few bucks on adsense every day. I don't really think I will ever get caught with it but now I know not to do this again...
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      • Profile picture of the author Richard Tunnah
        Originally Posted by Mike McAleer View Post

        Although I do not do this anymore, I did buy one a while ago and that one is making me a few bucks on adsense every day. I don't really think I will ever get caught with it but now I know not to do this again...
        Hopefully you don't get caught as you are cyber squatting and could be libel to getting sued by the trademark holder. There have been cases of trademark holders winning 10's of thousands of dollars or more!

        Rich
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        • Profile picture of the author Richard Tunnah
          There is some really poor advice on here. I mean what is the point of starting a business and putting time and effort into it knowing you could lose it tomorrow? That is what you are doing buying a trademarked domain. Hopefully you just get a cease and desist and not a court summons for a large sum of money for trading off a trademark.

          Rich
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  • Profile picture of the author Michael Oksa
    The problem with using a trademarked name without express permission from teh trademark holder is that you are not the one in control. Yes, they may not notice your site. If they do notice, they may let it slide. If they don't let it slide, they may not choose to sue you. If they choose to sue you, it may not be for all that much.

    The problem with all of those scenarios? The word 'may'.



    All the best,
    Michael
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  • Profile picture of the author DomainFlipClub
    You MAY use someone else’s trademark in your domain name or blog’s URL if it is relevant to the subject of your discussion and does not mislead people into thinking the trademark holder endorses your content.
    Also, you MAY use someone’s trademark in your URL as long as you’re not making commercial use in the same category of goods or services that their trademark covers.
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    • Profile picture of the author great nosferatu
      Originally Posted by DomainFlipClub View Post

      You MAY use someone else's trademark in your domain name or blog's URL if it is relevant to the subject of your discussion and does not mislead people into thinking the trademark holder endorses your content.
      Also, you MAY use someone's trademark in your URL as long as you're not making commercial use in the same category of goods or services that their trademark covers.
      That sounds accurate. There's a lot of speculation in this thread; can anyone cite a qualified source on the matter?
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      • Profile picture of the author Richard Tunnah
        Originally Posted by great nosferatu View Post

        That sounds accurate. There's a lot of speculation in this thread; can anyone cite a qualified source on the matter?
        Yes...there's plenty of specialised trademark lawyers who will be happy to give you a full and qualified answer. Of course there will be a cost but still considerably cheaper than getting sued!

        Rich
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  • Profile picture of the author great nosferatu
    <----not helpful.

    Surely this issue is addressed somewhere on the interwebz.
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  • Profile picture of the author BlondieWrites
    You should never buy a domain name with a trademarked name in it. The trademark owner can do one of many things in such a case. They can take the domain name away from you and you don't get a penny. They can sue you. Being that they own the trademark name, they have the right to do it.

    Lots of people buy domain names with trademarked names, some knowing not to do it, yet do it anyway.

    Most of the time, the trademark owners arguement is that your domain name with their trademark in it leads people to believe it's the trademark owner's site. Sometimes that's the case, sometimes not. At any rate, buying a trademarked domain name is a waste of time and money because you can lose it in a heartbeat when the trademark owner wants the domain name, and sometimes cash, for using what they own.

    If you scoot by not noticed or if they only want you to delete the name, count yourself lucky.




    Cindy
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  • Profile picture of the author ryanjm
    This is a helpful case for those of you who would like some legal basis for sites which may infringe on trademark: JOLT Digest » Toyota Motor Sales v. Tabari | Harvard Journal of Law & Technology

    Just look up Toyota v. Tabari if you want to research this case more. One thing to keep in mind is that this is a developing area of the law, and not much is considered settled and indisputable.

    I've already been contacted by the legal department of a company that claimed trademark infringement, but they didn't pursue their claim any more after I replied and cited that case.

    As someone already mentioned, the best defense for trademark infringement is that your domain doesn't cause genuine confusion in the mind of the average consumer, and you don't claim any official endorsement of the brand/manufacturer. In fact, I would specifically disclaim any such association.

    I'm not a lawyer (or even if I was, I would say I'm not ), this isn't legal advice, yadda yadda yadda.
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    • Profile picture of the author great nosferatu
      Originally Posted by ryanjm View Post

      This is a helpful case for those of you who would like some legal basis for sites which may infringe on trademark: ]JOLT Digest » Toyota Motor Sales v. Tabari | Harvard Journal of Law & Technology[/URL]

      Just look up Toyota v. Tabari if you want to research this case more. One thing to keep in mind is that this is a developing area of the law, and not much is considered settled and indisputable.

      I've already been contacted by the legal department of a company that claimed trademark infringement, but they didn't pursue their claim any more after I replied and cited that case.

      As someone already mentioned, the best defense for trademark infringement is that your domain doesn't cause genuine confusion in the mind of the average consumer, and you don't claim any official endorsement of the brand/manufacturer. In fact, I would specifically disclaim any such association.

      I'm not a lawyer (or even if I was, I would say I'm not ), this isn't legal advice, yadda yadda yadda.
      Awesome, that's some tangible info. Most of these types of sites DO have a disclaimer in the footer.
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  • Profile picture of the author Matthew Lilley
    I would stay away from domain names with trade marks in them
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  • Profile picture of the author edwink
    Go google "cyber-squatting" laws. It may help for you to read cases of people who got sued and stuff for owning domains they shouldn't have owned.

    I did that when I recently bought a trademarked domain.
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  • Profile picture of the author aaronngoh
    I do have some domains with product name.

    May be it is time to reconsider what to do with those
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  • If you're building a site on a short-term opportunity, it may be worth it. Apple does enforce their trademarks like all big companies, but it probably won't happen overnight.

    If you're building something that you expect to stand the test of time, I dont think it's worth building a business on ground that could collapse from beneath you at any moment.
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  • Profile picture of the author Adie
    I think American people are more concerned than non Americans. This is because of the law than can be implemented easily there, but not here. You can do this without any problem if you are living outside US. I am just an ordinary person and why big companies like apple, microsoft, etc go after me if they know they can't get anything from me, especially if I am not doing wrong with the trademarked domain other than selling their products? Heck, I will just shut down the site and forget about it. No big deal...

    Do you think Amazon will sue me for selling kindle books on my site that has a topkindlebooks.com domain? I don't think so....What can they get? Are they going to get all my profit from selling kindle books?

    I understand that having a trademarked name on your domain is risky but I believe it depends on many factors..... just my 2 cents...

    There are thousands of domains having "wordpress" on them? Has anyone went to jail?

    Most of the comments above are ridiculous...
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    • Profile picture of the author davezan
      Originally Posted by Adie View Post

      Most of the comments above are ridiculous...
      Heh, you got that right. It's tempting to think one knows better...til somebody
      else comes along and tells things that might sound ridiculous yet is true.

      For instance, you said one can do this without any problem if one lives outside
      the U.S. Well, would you (or anyone else here) believe me if I said a trademark
      holder can file a domain-trademark dispute and maybe...maybe...get the .com
      domain no matter where you live around the world?

      (Hint: look up in Google the letters UDRP. Read about it if you're interested.)

      You also question why some big companies might go after you and, say, don't
      get any financial rewards or punish you with some financial penalty. As some
      would say, it's "for the principle" of it.

      Some if not all big companies are aware they cannot always get blood out of a
      turnip. However, they can stop the infringing activity despite the costs for it,
      and can always recoup those costs back with their commercial success.

      A company doesn't always have to sue to make a point, although they always
      can if they feel like it, can afford it and have an enforceable claim. OTOH, few
      other options exist such as sending a C&D letter or filing that dispute if they,
      again, wish to stop the act itself.

      Maybe Amazon will sue you for a kindle domain, maybe Apple will sue the great
      nosferatu for an iPad domain, who really knows? As you're probably aware, this
      essentially boil down to risk vs. reward...cost vs. benefit...etc.

      If anything, doing at least a Google search can tell you if they did take action.
      However one feels about it, will that feeling help one get out of trouble if ever?

      One thing you believe...and you actually got right, though...is these things will
      depend on some or many factors. As specialized lawyers with experience with
      these would say, these are "fact intensive".

      The Great Nosferatu,

      While there aren't any simple, complete answers to your question, at the very
      least, it boils down to what's called likelihood of confusion. Some consumers do
      tend to confuse some people's domains with that of its trademark namesake,
      and consumer behavior, unfortunately, isn't always rational.

      Just to maybe help out, look up famous, arbitrary, suggestive, and descriptive
      trademarks. They're not exhaustive, but they should give you a few ideas.

      Not everyone gets caught, as you observed. While not all drivers who beat the
      speed limit get fined either, does their behavior tell you if something is allowed
      or not?

      Whenever someone asks if they'll be sued for registering a domain bearing one's
      trademark, I usually answer that with "it depends on who you're dealing with".
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      • Profile picture of the author Adie
        For instance, you said one can do this without any problem if one lives outside
        the U.S. Well, would you (or anyone else here) believe me if I said a trademark
        holder can file a domain-trademark dispute and maybe...maybe...get the .com
        domain no matter where you live around the world?
        I do not argue with that, it's true, and I believe. But in reality, it can't affect no one here. Would they pursue me into the woods? LOL


        (Hint: look up in Google the letters UDRP. Read about it if you're interested.)
        I knew and again, it doesn't affect me unless I have big name online.

        I totally understand your point and I do not argue with that. This main question actually has a "YES, NO, and IT DEPENDS" answers

        YES if you are selling their products. Clickbank for example. I have a 5-year old site selling clickbank products with "clickbank" on its domain and is making a medium amount of sale, yet I did not receive any warning from CB. For 5 years, I think it's safe to say that my domain is okay with CB.

        NO if you are using the domain against the company, or selling competitor's products.

        IT DEPENDS if what you want to do with the domain.

        That's it and I think I made myself clear. Legality has a loophole on this issue.

        BTW, paypalsucks.com has been online since 2000 and paypal can't do anything about it... LOL
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        • Profile picture of the author davezan
          Originally Posted by Adie View Post

          BTW, paypalsucks.com has been online since 2000 and paypal can't do anything about it... LOL
          Actually, they can if they really wanted to. Even though I can see maybe one
          to two things in their favor, they likely feel it's just not worth pursuing.

          But yeah, I guess it really can't do much if losing the domain is no big deal. Not
          unless putting in a lot of so-called hardwork over a period of time, then its mark
          namesake holder suddenly demanding it, becomes one.
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          • Profile picture of the author mikeroosa
            I purchased a domain last year with a trademark company name in the domain and actually made a decent amount of money from Amazon. After the second month, my SEO efforts paid off and I overtook the main company on page 1. About a week later I got a letter from the company attorney (actually my registrar did) and I took the site down in about 3 seconds and de-indexed it from Google.

            I learned my lesson and will never do that again. Do it the right away and don't buy domains with trademarked names. It's just not worth it.
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  • Profile picture of the author LauraJames
    I would stay away from trademarked names, just to be safe. I have no direct knowledge of whether this is illegal though. Best to be creative and come up with your own domain names.
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  • Profile picture of the author Maztech
    I have an apple (itunes) related domain name and was contacted by them. I was essentially kicked out of their affiliate program for TOS violation for the name. But that was the extent of the contact (this took place about 2 years ago) the domain is still active just without their affiliate program.
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  • Profile picture of the author Alvasin
    Most of the domain name cases in the courts have been based on actions for trade mark infringement, or unregistered trade mark infringement ('passing off'). If you need background as to what trade marks or passing off are, you should consult sites such as intellectual property.The first domain name case before the English courts related to <harrods.com> in 1996, but it was undefended.The main case is the 1997 Court of Appeal case of one million. It established that the mere registration of a domain name could make that name 'an instrument of fraud' and could be passing off. The court explained at some length why it was necessary for the courts to protect the reputation and goodwill of traders and prevent it being abused.
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  • Profile picture of the author Moneyerr
    Domain name registrants can protect themselves as well. If you have a registered domain name that doesn't infringe upon any trademarks, you too may be able to register a trademark. Registering a domain name as a trademark isn't easy, but it can be done. Although you can't register the http://www.or the .com, if the use of your name fits the laws criteria, it can be registered. You should consult with an attorney familiar with the Internet, trademarks and the laws prior to registering your domain name as a trademark.
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