Trademark vs Domain Name vs Fair Use

by Johnny
5 replies
Here is an interesting article that I have just read about "Toyota loses domain name trademark appeal"

From the article at Toyota loses domain name trademark appeal | The Car Tech blog - CNET Reviews
it mentions:

Chief Judge Alex Kozinski wrote: "[W]hen they say Lexus, they mean Lexus. We've long held that such use of the trademark is a fair use, namely nominative fair use. And fair use is, by definition, not infringement."




Frankly, I am still damn confuse
#domain #fair #trademark
  • Profile picture of the author KenThompson
    The judges ruled that having that kind of web site, examples given of
    hyphenated sites, would not cause any confusion about if the site
    was the car maker or someone else.

    Also, nominative fair use as it relates to trademark infringement allows
    for trademarks to be used in situations where the name is used to make
    a comparison or description.

    Nominative use - Wikipedia, the free encyclopedia

    So, the website owners were brokering Lexus cars and using the
    trademarked name in a nominative fair use situation. The three judges
    reviewing the appeal stated the original ruling, in federal court I believe,
    was too broad.

    Ken
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  • Profile picture of the author DogScout
    That will certainly change domain buying practices. In fact, that should cause quite a run on some domains. Brokers will hold them until it is completely settled.

    Do you have your 'Ipad' domain already?

    Lol.
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    • Profile picture of the author sbucciarel
      Banned
      Originally Posted by DogScout View Post

      That will certainly change domain buying practices. In fact, that should cause quite a run on some domains. Brokers will hold them until it is completely settled.

      Do you have your 'Ipad' domain already?

      Lol.
      Yeah but the only problem is that in order to win it apparently, you'll have to defend it in court if the trademark holder fights it, so that's going to make the cost of using it pretty high with all the lawyer's fees.
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      • Profile picture of the author kindsvater
        Ironically, before reading this I had just registered a domain involving a trademarked name.

        Over the years I've lost track of how many times this issue has come up on the forum, and how many times I've said it is not illegal per se to use a trademark in a domain name, and a trademark owner does not have monopoly rights over use of their mark.

        The ultimate issue is consumer confusion.

        The Toyota decision hits all of these issues. Next time the domain trademark issue comes up, refer someone to the Toyota ruling.

        As far as the potential cost involved, there is a reason I've said many times to set up the trademark owner and their attorney - at the start of a dispute - for a potential malicious prosecution suit, or at least a fees claim. You see this indirectly alluded to in the Toyota opinion where the judge refers to Toyota's counsel exceeding the 'bounds of zealous advocacy' and a suggestion that the court help the pro per defendants get an attorney.
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        • Profile picture of the author Ashley Gable
          Originally Posted by kindsvater View Post

          Ironically, before reading this I had just registered a domain involving a trademarked name.

          Over the years I've lost track of how many times this issue has come up on the forum, and how many times I've said it is not illegal per se to use a trademark in a domain name, and a trademark owner does not have monopoly rights over use of their mark.

          The ultimate issue is consumer confusion.

          The Toyota decision hits all of these issues. Next time the domain trademark issue comes up, refer someone to the Toyota ruling.

          As far as the potential cost involved, there is a reason I've said many times to set up the trademark owner and their attorney - at the start of a dispute - for a potential malicious prosecution suit, or at least a fees claim. You see this indirectly alluded to in the Toyota opinion where the judge refers to Toyota's counsel exceeding the 'bounds of zealous advocacy' and a suggestion that the court help the pro per defendants get an attorney.
          See I have several domains I would like to buy, they average 30,000 - 70,000 searches per month each, yet they are a product name, without the hyphen.

          I have found other domains that are non hyphenated yet they seem to be owned by company that just keeps domains like this. So all in all I can get a few .coms, and all of the product names in question I can get .org. It adds up to around 400,000 uniques per month, so needless to say it is very tempting. And all are non-hyphenated.

          If all I would get is a cease and desist letter, or a letter asking me to turn it over I would just snatch em up right now. But the last thing I want is to get into any sort of court.

          Is this what would happen? At first a letter just asking. Or will they go straight for the throat?

          I contacted the company in question and havent received a reply.

          I am an amazon affiliate so this is what they would be used for. Again I would probably be spending about $150 on domains, which to me seems like a good gamble. I just dont want to go to court

          I read your other post about using subdomains, so I understand that it is about consumer confusion, that is what I am worried about.

          Their products all have the company name in them. Kinda like "Sony X74" or something like that. But like I said there are other domains out there that are using it but hyphenated. All the non hyphenated ones that are taken only have the text:

          No web site is configured at this address.

          On the index.html page. Not sure if that means anything.

          Thanks for you other posts, helped me alot.
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