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Can trademarks be used in domains legally?

by blue_soda025
12 replies
I was always under the impression that you can't use trademarked names in your domain such as "iPad" or "PS3." But then I see websites ranking for "ipad accessories" like ipadaccessories.com and ipadaccessoriesreview.com and then I just get more confused.

ipadaccessories.com has a disclaimer at the bottom but ipadaccessoriesreview.com doesn't, so I'm thinking that the latter doesn't look legal to me. However, I really am not very knowledgeable on these matters, so I wonder if someone can clue me in.

I also see tons of domains used for what are probably for promoting CPA offers for free iPods so they obviously have ipod in the domain. The question is whether that is legal or not though?

My biggest question is how can you legally use a trademark in your domain, since it's obviously being done a lot. You see those kinds of domains left and right on SE rankings.
#domains #legally #trademarks
  • Profile picture of the author weblink29
    General Consensus = No

    If you use a trademark in your domain name chances are they will come after you eventually.
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    Nothing to see here folks.....move along.

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  • Profile picture of the author E. Brian Rose
    You can register whatever domain name you want, however the use of a trademark without permission is not legal.

    The trademark owner has the right to come after you or do nothing. Most of the time they will tell you to stop what you are doing with a cease and desist letter. Sometimes they will just file suit.

    You CAN do it, but it's not right and it's not legal.
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    Founder of JVZoo. All around good guy :)

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    • Profile picture of the author Black Hat Cat
      Banned
      Originally Posted by E. Brian Rose View Post

      You can register whatever domain name you want, however the use of a trademark without permission is not legal.

      The trademark owner has the right to come after you or do nothing. Most of the time they will tell you to stop what you are doing with a cease and desist letter. Sometimes they will just file suit.

      You CAN do it, but it's not right and it's not legal.
      This is the kind of incorrect legal thinking that caused you to lose round one to Paypal.

      The correct answer is it depends. Sometimes it is legal, and sometimes it isn't. It depends on what you're using the domain for.
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      • Profile picture of the author davezan
        Originally Posted by Black Hat Cat View Post

        This is the kind of incorrect legal thinking that caused you to lose round one to Paypal.

        The correct answer is it depends. Sometimes it is legal, and sometimes it isn't. It depends on what you're using the domain for.
        Actually, EBR is essentially right. There is no law saying you can't register this or
        that domain name with a trademark, though it can be a way of saying "You really
        can, but..."

        OTOH, you're also right that it depends. Of course, that's what many attorneys I
        know would also say anyway, heh.

        BTW, OP, a disclaimer doesn't necessarily protect against infringement, more so
        when using an arguably famous mark (like iPad) to make money off of that w/o
        its TM holder's consent. Famous marks have the strongest protection, and it will
        depend how soon (if ever) they get around to pursuing them.

        And those doing it probably live in areas beyond the TM holder's physical reach,
        and can afford losing those domains if ever. Borrowed time, as Alexa said.
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        David

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  • Profile picture of the author Alexa Smith
    Banned
    Originally Posted by blue_soda025 View Post

    The question is whether that is legal or not though?
    It's not "illegal" in the sense of being a prosecutable criminal offense for which you can go to prison.

    But it's often breaching someone's civil law rights, in which case they can take the domain off you, and/or any money you've ever made from it, and/or they can sue you for damages. So it's very risky.

    There are some permitted uses, but broadly speaking anything that involves commercial/monetized usage isn't among them and is living dangerously.

    It's true you do see domains around with things like "ipad" and "sony" in them, but both those companies have litigous reputations and the owners of those domains may be living on borrowed time.

    The point here is that owning a trademark actually confers obligations, in effect, as well as rights. People who'll be wanting to renew their trademarks may feel obliged to take some action when breaches of it come to their attention, as failure to do so can be held against them during trademark renewal procedures. Some people are naive enough to imagine that "I won't get into trouble because I'm helping them sell their stuff anyway" but as many people can vouch for, the trademark owners don't necessarily see it that way.

    I'd forget it, if you're planning to monetise it ... but I'm not a lawyer.
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    • Profile picture of the author E. Brian Rose
      Originally Posted by Alexa Smith View Post

      It's not "illegal" in the sense of being a prosecutable criminal offense for which you can go to prison.
      Technically, it is, however the government usually only prosecutes cases that they consider "extreme". Most of these trademark infringements are related to counterfeiting.
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      Founder of JVZoo. All around good guy :)

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  • Profile picture of the author ours
    I guess if one own a trademark domain and use that domain for promoting completely different product or services then may be technically one is not misusing trademark. Better not to go for those - they are billion dollar companies why to take risk?
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  • Profile picture of the author Michael Mayo
    If you are using it to help/aid the sales of the person owning the Trade mark then
    you should contact them and ask their permission to do so. Be sure you receive the
    permission in writing and from someone with the authority to give you the permission
    to use the Trade Mark.

    It's always better to be safe rather than sorry.

    When in doubt do what you can to eliminate the risks.

    Hope that Helps,
    Have a Great Day!

    PS. Disclaimer: I'm not a Lawer nor do I play one on TV or any other media source.

    ~MM~
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  • Profile picture of the author Michael Hackett
    I purchased a wso a little while back that revolved around making money from Cityville players. Part of the idea was to register a domain that either had the keyword "cityville" in it, or something close.

    I went ahead and registered the domain, and in less than 12 hours had a cease and desist email in my inbox, threatening a suit and God knows what else. Not worth it to me. Deleted the domain, and chalked it up to a new lesson learned.

    -Michael
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  • Profile picture of the author Mark Andrews
    Banned
    Interview with a domain name lawyer, domain name no-no's...

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    • Profile picture of the author Kay King
      On legal sites advertising internet specialty attorney services one of the items listed is:

      "Bad faith domain name registration in violation of trademark rights"

      Good explanation on several points of trademark laws on the link below from Harvard.edu

      Overview of Trademark Law
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  • Profile picture of the author Daniel Evans
    Originally Posted by blue_soda025 View Post

    I was always under the impression that you can't use trademarked names in your domain such as "iPad" or "PS3." But then I see websites ranking for "ipad accessories" like ipadaccessories.com and ipadaccessoriesreview.com and then I just get more confused.

    ipadaccessories.com has a disclaimer at the bottom but ipadaccessoriesreview.com doesn't, so I'm thinking that the latter doesn't look legal to me. However, I really am not very knowledgeable on these matters, so I wonder if someone can clue me in.

    I also see tons of domains used for what are probably for promoting CPA offers for free iPods so they obviously have ipod in the domain. The question is whether that is legal or not though?

    My biggest question is how can you legally use a trademark in your domain, since it's obviously being done a lot. You see those kinds of domains left and right on SE rankings.
    Don't take this as gospel, but I don't think having the trademark amidst other words / letters is in breach of Trademark.

    If there were ever concern for any company in question, it would be you "passing off" as the company. i.e faking association with the root business.
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