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The Law Regarding Trademarks In Domains

by J.Knight
9 replies
This is no doubt a subject which has been touched on before, but I was reminded of it in a recent thread about a domain someone had bought which resembled ehow.com

I read recently that there are over 80,000 domains registered with the word 'ebay' in them.

However, most of these domains are not in use, possibly due to the eBay division of scaremongers who seem to be pretty quick in contacting any owner of such domains.

The interesting thing is, just how far can they go in defending their trademark?

The reason I ask is because PayPal is also a registered trademark (and a sister company of eBay), and they have failed to pull down the domains PayPalSucks.com, NoPayPal.com, AboutPayPal.org and PayPalWarning.com.

The reason they can continue is because, "There is no question that the domain is not authorized or endorsed by eBay or PayPal".

This leaves the question, what can and can't you use?

I figure something like eBaySite.com would not be fair use, as it could mislead.

But, what if someone set up a site, SellingOneBay.com or HowToSellOneBay.com, and ran a run-of-the-mill blog with no eBay logo or anything to confuse visitors. Would that be fair use?

JK
#domains #law #trademarks
  • Profile picture of the author Chris Lockwood
    Domains like PayPalSucks.com get away with it because they are providing commentary, or would not be confused with an official site, or something along those lines.

    For this reason many companies are registering ournamesucks.com to prevent others from doing so.

    SellingOneBay.com could easily be shut down by ebay since it could be confused with an official site.

    In other words, if the domain name is critical of a company, it seems you can get away with it, but if it's positive, that can be trouble since it can be seen as causing confusion which is one of the things a trademark covers.

    "Fair use" applies to copyrights.
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    • Profile picture of the author J.Knight
      Originally Posted by Chris Lockwood View Post

      Domains like PayPalSucks.com get away with it because they are providing commentary, or would not be confused with an official site, or something along those lines.

      For this reason many companies are registering ournamesucks.com to prevent others from doing so.

      SellingOneBay.com could easily be shut down by ebay since it could be confused with an official site.

      In other words, if the domain name is critical of a company, it seems you can get away with it, but if it's positive, that can be trouble since it can be seen as causing confusion which is one of the things a trademark covers.

      "Fair use" applies to copyrights.
      Even is the tagline was, "The Unofficial Guide to Selling on eBay"?

      JK
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      • Profile picture of the author Michael Oksa
        Originally Posted by J.Knight View Post

        Even is the tagline was, "The Unofficial Guide to Selling on eBay"?

        JK
        Hi JK,

        The problem with a tagline is that nobody can read it until after they have clicked through to the URL. This means a reasonable person COULD confuse it for an eBay site until it's too late.

        Hope that makes sense.

        All the best,
        Michael
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  • Profile picture of the author Chris Lockwood
    All I know is that ebay is notorious for going after people with domains with "ebay" in them, even if there is no site.

    You could get away with a book titled "The Unofficial Guide to Selling on eBay", especially if you acknowledged their trademark and that they did not endorse the book. Go to any book store and you'll find books with trademarks in the titles that are not from those companies.

    Domain names are stricter for some reason.
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  • Profile picture of the author Gmaster
    After read all previous post, I'm sure it much better to avoid losing our domain and been sued by them in future.

    Luckily most of the brand name applied this rule so it can avoid unnecessary misleading.

    I had imagine if someone been allowed to do so, we maybe become a victim of paypals.com, thepaypal.com..
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  • Profile picture of the author davezan
    Originally Posted by J.Knight View Post

    This leaves the question, what can and can't you use?
    To give you some ideas, your use:

    1. Doesn't create any likelihood of confusion.

    2. Doesn't offer a commercially competing or similar use to theirs.

    3. Doesn't direct intended traffic to your site.

    4. Doesn't make money off their trademark in any way.

    PayPal can actually go after PayPalSucks now since the latter has at least 2
    things against them. Whether they'll choose to do so or not, more so go after
    everyone else, is up to them.

    It really depends on who you're dealing with, and how far they're RAW (Ready
    Able Willing) to go.
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  • Profile picture of the author angela99
    My opinion on "using" trademarks, FWIW: never, ever pick a fight with an 800 pound gorilla.

    Yes, it's tempting to piggyback on a trademark, but did you know that unless a trademark holder defends the trademark, he can lose it?

    Viz: "failure to actively use the mark in the lawful course of trade, or to enforce the registration in the event of infringement, may also expose the registration itself to become liable for an application for the removal from the register after a certain period of time on the grounds of "non-use"" -- from Trademark - Wikipedia, the free encyclopedia

    So just because a site like PayPalSucks.com is ostensibly getting away with it: they're not. They're just one cease and desist letter away from disaster.

    Playing around with registered trademarks is a fool's game. Why invest your time and energy in something which can be snatched away from you in the blink of an eye?

    As stated, this is my opinion, FWIW.
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  • Profile picture of the author Melody
    This brings to mind a few WSOs in the past few months that were selling domains with NFL teams names in the domain name - and using the team graphics/logos in the site header.

    I have often wondered how those sites did as the NFL is notorious for going after any trademark infringement since they sell licensing rights.

    Anyone know??

    And I did contact the seller by PM in one case - but never heard anything back - I did not want to post in the WSO but....I kind of agonized over it as I have quite a bit of experience with sports licensing issues - and I would not have touched those sites with a 10 ft pole!
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    • Profile picture of the author J.Knight
      Originally Posted by davezan View Post

      To give you some ideas, your use:

      1. Doesn't create any likelihood of confusion.

      2. Doesn't offer a commercially competing or similar use to theirs.

      3. Doesn't direct intended traffic to your site.

      4. Doesn't make money off their trademark in any way.

      PayPal can actually go after PayPalSucks now since the latter has at least 2
      things against them. Whether they'll choose to do so or not, more so go after
      everyone else, is up to them.

      It really depends on who you're dealing with, and how far they're RAW (Ready
      Able Willing) to go.
      If that's the case, then I'm surprised PayPal haven't made more of an effort to get this site pulled down. They are using their traffic to direct to an alternative merchant.

      Originally Posted by Michael Oksa View Post

      Hi JK,

      The problem with a tagline is that nobody can read it until after they have clicked through to the URL. This means a reasonable person COULD confuse it for an eBay site until it's too late.

      Hope that makes sense.

      All the best,
      Michael
      You could use the tagline in the title tag could you not?

      Originally Posted by angela99 View Post

      My opinion on "using" trademarks, FWIW: never, ever pick a fight with an 800 pound gorilla.

      Yes, it's tempting to piggyback on a trademark, but did you know that unless a trademark holder defends the trademark, he can lose it?

      Viz: "failure to actively use the mark in the lawful course of trade, or to enforce the registration in the event of infringement, may also expose the registration itself to become liable for an application for the removal from the register after a certain period of time on the grounds of "non-use"" -- from Trademark - Wikipedia, the free encyclopedia

      So just because a site like PayPalSucks.com is ostensibly getting away with it: they're not. They're just one cease and desist letter away from disaster.

      Playing around with registered trademarks is a fool's game. Why invest your time and energy in something which can be snatched away from you in the blink of an eye?

      As stated, this is my opinion, FWIW.
      This is the real issue: is it worth trying to fight such a huge corporation?

      Like you say Angela, probably not.

      However, PayPalSucks.com has had a C&D letter, and the lawyer behind PayPalSucks.com said they could stand their ground, because they're not violating the law.

      It's all rather interesting.

      JK
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