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How to Avoid Trademark-Infringing Domains

by Gene Pimentel
9 replies
The issue of "trademarks in domain names" seems to be a topic of discussion here several times a week. Here is a helpful, easy to understand article on the subject:

Domain Risks, Part 1: How to Avoid Trademark-Infringing Domains || Domainate.com
#avoid #domains #trademarkinfringing
  • Profile picture of the author kindsvater
    That is an extremely generic article. Except for the reference to "Consider whether you are going after a domain specifically to ride the success of a popular site, service or product related to your intended website" it isn't much help.

    Here's why ...

    If the advice is essentially - don't register anything with a trademark - odds are you're out of business.

    Last year a Warrior vociferously argued that policy, until it turned out their name was trademarked, and so was their domain. They just didn't know it.

    For example: pimentel is a registered trademark.

    Does that mean Gene is gonna be sued if he uses his name in a domain? No.

    I've had trademark issues this year that were legitimate disputes. None of which involved a US registered trademark.

    Good rules of thumb:

    1. A trademark does not create a monopoly on the right to use that word. Unless it is an extremely famous mark, which is rare.

    2. The purpose of a trademark is to avoid consumer confusion about who is responsible for a product. That is why "Delta" can be used for an airline and for a bathroom faucet.

    3. If the purpose the mark is being used for is to leach traffic and money from someone else, such as a made for Adsense site with no value except for the domain name, then expect trouble.

    If you have a legitimate site, for example you sell Acme Shoes so you have a domain like AcmeShoes4Sale.com - most likely you're fine.

    In other words, if you see Gene offering a domain and you think there is some trademark somewhere, that automatically should not deter you from buying the domain.

    When it comes to Internet domain trademark issues, you're dealing with a worldwide issue. Simply, as a result they're really hard to avoid. Even common words are trademarked (just for real specific uses).

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    • Profile picture of the author Kay King
      most likely you're fine
      ...and there's the rub. Most IMers on this forum who use trademarks in domains know little about trademark. They ARE trying to get traffic by using that BRAND name. Many of them WILL be challenged. And most of them don't have the resources or funds to fight a challenge.

      The only advice on a forum that makes sense to me is to get a legal opinion before using a trademark or to avoid using them altogether.

      kay
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    • Profile picture of the author Richard Tunnah
      Originally Posted by kindsvater View Post

      That is an extremely generic article. Except for the reference to "Consider whether you are going after a domain specifically to ride the success of a popular site, service or product related to your intended website" it isn't much help.

      Here's why ...

      If the advice is essentially - don't register anything with a trademark - odds are you're out of business.

      Last year a Warrior vociferously argued that policy, until it turned out their name was trademarked, and so was their domain. They just didn't know it.

      For example: pimentel is a registered trademark.

      Does that mean Gene is gonna be sued if he uses his name in a domain? No.

      I've had trademark issues this year that were legitimate disputes. None of which involved a US registered trademark.

      Good rules of thumb:

      1. A trademark does not create a monopoly on the right to use that word. Unless it is an extremely famous mark, which is rare.

      2. The purpose of a trademark is to avoid consumer confusion about who is responsible for a product. That is why "Delta" can be used for an airline and for a bathroom faucet.

      3. If the purpose the mark is being used for is to leach traffic and money from someone else, such as a made for Adsense site with no value except for the domain name, then expect trouble.

      If you have a legitimate site, for example you sell Acme Shoes so you have a domain like AcmeShoes4Sale.com - most likely you're fine.

      In other words, if you see Gene offering a domain and you think there is some trademark somewhere, that automatically should not deter you from buying the domain.

      When it comes to Internet domain trademark issues, you're dealing with a worldwide issue. Simply, as a result they're really hard to avoid. Even common words are trademarked (just for real specific uses).

      .
      You're right Brian. Ultimately if you are looking at picking up a domain especially something you hope to build a long term business on then the best thing is to consult a specialised trademark lawyer that will do all the searches for you on the name and similar ones and explain any potential problems. But I guess many want to start on a shoe string budget and spending $500 plus on a lawyer isn't a priority.

      Rich
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    • Profile picture of the author sbucciarel
      Banned
      Originally Posted by kindsvater View Post

      If you have a legitimate site, for example you sell Acme Shoes so you have a domain like AcmeShoes4Sale.com - most likely you're fine.
      There are many vendors in the ad networks that specifically prohibit use of their trademark in domains and in Adword campaigns. Amazon has suspended a lot of accounts due to trademarks being used in domains.

      Can you use Acme Shoes in your domain to sell Acme Shoes? Not if Acme Shoes doesn't want you to. Ask yourself also if you really want to have to pay legal fees to defend your use of a trademark.
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  • Profile picture of the author Gene Pimentel
    I agree completely Brian. There is a whole lot more to the trademark issue than what is presented in the article, but I thought it gave a decent "thumb-nail" view that should serve to prompt any intelligent person to dig deeper.

    And, this is a "part 1" article. I assume part 2 will follow.

    Also, consider the title of the article is "How to Avoid...".
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  • Profile picture of the author Domainate
    I wrote the article...one thing I could have added is that there are cases of sites who have the trademark owner's approval to use their mark. Also, there are indeed some exceptions, sites that have gotten by due to free speech protections such as PayPalSucks.com.

    That said, the article was for a series on domain risks, and getting ANY domain with a trademarked term in it is a risk...whether it's a BIG risk or a little risk depends on many factors - the strength of the mark, its scope, how prominent it is, how large the mark holder is, whether they defend it rigorously, etc. While UDRP is commonly the farthest trademark holders go in going after domains infringing on their trademark, Facebook's recent lawsuit is a reminder that they can go farther.

    The question you need to ask yourself is whether the tiny bit of potential SEO or other advantage you might get with a trademark-infringing domain is worth the possibility of getting sued for up to $100,000 in a lawsuit. I personally think it's never worth it and will give that advice to anyone I talk to, but some people disagree.

    Another thing people don't seem to realize - you could be well within your rights to own a name and a big bad company could decide to come after you anyways if they feel even remotely like they have a right to the name. Look at Nissan Motors' fight for Nissan.com. The Nissan.com owner has been in business since before Nissan Motors was even known as Nissan Motors, and they're still burying him in legal hell. It really sucks, but it's a reality. If you feel like tempting a large company to flex their legal muscles, by all means try your hand at domains with trademarked terms, but it's my recommendation not to.
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  • Profile picture of the author Richard Tunnah
    Here's an interesting story about a guy that owns shell domains and that shell have tried (and failed) a number times to grab them.

    Domain name battle for Royal Dutch Shell Plc .com (guess who lost) – Royal Dutch Shell plc .com

    Rich
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    • Profile picture of the author kindsvater
      If you're selling Acme Shoes then Acme is going to have a real tough time shutting down an accurate domain name. Courts have repeatedly said that is a proper use of a trademark in a domain.

      You're right, though, if you are an affiliate, because then the merchant has more leverage over you.

      Nissan is an interesting example, and while outlier situations should be recognized, they are just that. As I recall, Nissan Computers problem was that it was including auto related ads on its website. Oops.

      If it hadn't been for that faux pas it would have likely not only had a clean sweep of legal issues, but recovered more fees, and been in a situation to sue Nissan Motors for malicious prosecution.

      It potentially blew millions as a result.

      Also, this was one of the very first cases on the topic, before the UDRP existed, before subsequent laws and hundreds of legal decisions.

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      • Profile picture of the author TimG
        I personally learned a lot about the whole trademark infringement and possible violations that can occur. Sometimes even an innocent online marketer can get caught in a nasty situation even though they did their homework and registered a domain with good intentions.

        I can also vouch for Kindsvator. Brian is the lawyer to seek out if you ever find yourself in a situation that needs to be resolved involving domain name issues and trademark violations. I base that on the actual assistance he provided for me in my own domain name issue earlier this year.

        Respectfully,
        Tim
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