Am I not allowed to use trademark names ANYWHERE in the url?

Warrior X

12 years ago

Yes, I would take those guys very seriously.

Jeremy

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bengirwb

12 years ago

This trademark thing always makes me grit my teeth.

There are a lot of sites with trademarks in the URL.

Kindle, for example. There are sites that list and promote Kindle ebooks. Kindle is in the site name. No big deal.

I don't think Ford Motor Co. would go after someone who created a site named howtobuyausedford.com

But I'm not a lawyer.

Always back up your site so you can rebuild another site if forced to give one up. And before I gave it up, I would wipe it clean.

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bengirwb

12 years ago

Just did a Google check and found these sites.

www.walmart-blows.com

www.walmartsucks.livejournal.com

www.hatewalmart.com

www.i-hate-walmart.com

I hate Wal-Mart

and this one

www.walmartsucks.org which states "this site is not affiliated with wal-mart in any way (in case you're one brick shy of a load, and need that explained)"

And there are YouTube videos and Facebook pages laced with Walmart.

I don't think any of these have been "authorized" by the trademark owner.

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tpw

12 years ago

Originally Posted by bengirwb

Just did a Google check and found these sites.

www.walmart-blows.com

www.walmartsucks.livejournal.com

www.hatewalmart.com

www.i-hate-walmart.com

I hate Wal-Mart

and this one

www.walmartsucks.org which states "this site is not affiliated with wal-mart in any way (in case you're one brick shy of a load, and need that explained)"

And there are YouTube videos and Facebook pages laced with Walmart.

I don't think any of these have been "authorized" by the trademark owner.

There are two different issues at play here...

1. Trademark infringement; and

2. Parody and review.

The first is not protected, the second is.

The OP is profiting from Walmart's Trademark, and that puts him on the wrong side of the gun.

The examples you gave are not people profiting from Walmart's Trademark. They are not trying to scoop up Wal-mart's customers, but rather to laugh and spit vile at Wal-mart.

Trademark is only an issue if the Trademark holder enforces the Trademark they own. Some do, many don't.

In this case, it would appear that Wal-mart is enforcing their trademark rights.

Having the Trademark name in the domain is not what determines the validity of a Trademark infringement, but rather what someone does with that domain.

If someone is attempting to profit on the Trademark holders name, by luring in the Trademark holder's customers to get those customers to buy on your site rather than at Wal-mart, then that is infringement.

Telling the world how much Wal-mart sucks, and telling people not to buy there is not infringement.

To the OP: You are taking large risks with this one. I would comply and move on.

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onSubie

12 years ago

Originally Posted by Mitsakis

Here is an interesting article I found about a case where the court decided that the use of the word "lexus" on a domain was fair use http://simmonstrialpractice.com/fair...ninth-circuit/

Did you notice the date on the case law?

The district court applied the eight-factor test for likelihood of confusion articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979),

Just because it's the Internet doesn't mean their are magical new laws. At least not yet.

That's why all the corporations are trying to get governments to add more laws and controls on the Internet all under the guise of protecting intellectual property.

Mahlon

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Alexa Smith

Banned 12 years ago

Originally Posted by Snow_Predator

Are these guys serious?

How badly do you want to know? Leave your site the way it is, and one way or another you'll find out.

Personally, I'd take them very seriously indeed.

Originally Posted by bengirwb

I don't think any of these have been "authorized" by the trademark owner.

Maybe they don't need to be? There are "permitted uses", such as comment/criticism, and so on. Having such a site for the primary purpose of monetization tends not to be one of them! You can understand the difference, surely?

Interesting that there's a "Walmart sucks" and a "Walmart blows": as the saying goes, I had a vacuum cleaner like that, once, and that wasn't of much value, either ...

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sbucciarel

Banned 12 years ago

Originally Posted by Snow_Predator

Are these guys serious? Should I turn tail and run or leave my site the way it is?

Just leave it the way it is if you like living on the edge and have a lot of money to burn on lawyers. :p

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DireStraits 12 years ago

Originally Posted by sbucciarel

Just leave it the way it is if you like living on the edge and have a lot of money to burn on lawyers. :p

Never was a huge fan of Aerosmith, myself, but burning greenbacks Pritt-sticked to lawyers' Armani suits is a favourite pastime of mine.
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steven Clayden

12 years ago

Just because other people are at it doesn't make it right. The internet is a big place. People will get caught.

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Snow_Predator

12 years ago

Thank you all for your advice.

I am indeed profiting from Walmart's trademark. Thankfully it isn't my main income source, but it's a nice $30 per day on the side.

Having taken all of your advice into consideration, I will be ridding my site of everything related to Walmart.

Oh well, I suppose there's plenty more money to be made ^_^

Thanks for your help :p

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jivens

Banned 12 years ago

meh they aren't worth the trouble anyway. ALL HALE BIG LOTS! lol

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Isaiah Jackson

12 years ago

I wouldn't just to stay on the safe side

but thats just me others may tell you otherwise but hey it is what it is

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Mark Andrews

Banned 12 years ago

Originally Posted by Snow_Predator

Walmart previously made me delete a number of sites with 'Walmart' in the domain name (they were making me quite a bit of money on the side, and it really pissed me off).

Now they want me to get rid of all mention of 'Walmart' in my site that does NOT have 'Walmart' in the domain. This is what they have written me:

Are these guys serious? Should I turn tail and run or leave my site the way it is?

Interview with a domain name lawyer - domain name no-no's. You should watch this, take heed and learn something.

YouTube - Broadcast Yourself.

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Damielle 12 years ago

Been seeing a few posts on the forum where people are being 'squeezed' for using someone's Trademark. I think its obvious that these big companies are serious about protecting their names.

Its safer to just comply than go to war with these guys, because after all it is their trademark.

Let this be a warning to anyone else that's doing this.
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Mitsakis

12 years ago

I don't think trademark on the URL will be an issue. It's not the domain, it's a url. it's like saying that you are not allowed even to mention the word walmart anywhere on your website. You'd better ask a lawyer though.

Here is an interesting article I found about a case where the court decided that the use of the word "lexus" on a domain was fair use http://simmonstrialpractice.com/fair...ninth-circuit/

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Snow_Predator

12 years ago

Originally Posted by Mitsakis

I don't think trademark on the URL will be an issue. It's not the domain, it's a url. it's like saying that you are not allowed even to mention the work walmart anywhere on your website. You'd better ask a lawyer though.

Here is an interesting article I found about a case where the court decided that the use of the word "lexus" on a domain was fair use http://simmonstrialpractice.com/fair...ninth-circuit/

I know what you mean Mitsakis, but from the replies above (and the very helpful video posted by Mark above), it seems that it all depends on the context in which you are using the trademark name.

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FriendlyRob 12 years ago

Most companies like that take their trademark very seriously. I simply wouldn't mess around with it. In fact, I own a few domains that I might end up having to change.
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davezan

12 years ago

Originally Posted by Mitsakis

I don't think trademark on the URL will be an issue. It's not the domain, it's a url.

YouTube - Broadcast Yourself.

Other than semantics or nomenclature, what's the difference between a URL and
a domain name if/when they both give the impression of its trademark holder?

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David

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Kurt

12 years ago

Originally Posted by davezan

YouTube - Broadcast Yourself.

Other than semantics or nomenclature, what's the difference between a URL and
a domain name if/when they both give the impression of its trademark holder?

Actually, the semantics are very important, especially when discussing legal issues.

The problem is, many people confuse the difference between a URL and a domain name. While a domain name is technically a URL, not all URLs are domain names.

Most people consider what are known as second level domains to be the domain name.

The first level domain name (also called the top level domain or TLD) is:
.com
.org
.net
.biz

...etc.

Then working to the left:
kurt.com
google.com
walmart.com

kurt, google, walmart are the second level domain names that come into question. And I'm guessing third level domain names could also be a problem, such as:

walmart.kurt.com

So, anything to the LEFT of the first level domain name is what is considered a "domain name".

However, a URL includes the domain names to the left and often contain file paths, directory names and page names to the rigth of the first level domain name:

kurt.com/walmart.html

In this case, it is fine to use a trademark/brand name. My use of "walmart" as a page name does not restrict Walmart from buying or owning the domain and it doesn't indicate Walmart owns the site. Just like Walmart can place products with trademarks on their shelves, freedom of speach allows me to talk about Walmart on my pages, including page titles.

Where you can get into trouble is HIDING keywords on pages, like invisible text or in meta tags not see by most real humans.

But you are allowed to use trademarks in titles, just like newspapers do when reporting news. And you can also use trademarks in URLs, as long as the URL is NOT part of the domain.

To be safe...

Use trademarks to the right of the top level domain (TLD)

Do NOT use trademarks to the left of the TLD

kurt.com/walmart.html is fine.

kurtsWalmartsite.com is not.

.com is the TLD in the two examples above.

No, I'm not a lawyer. I'm the expert witness your laywer should hire to discuss what a domain name really is.

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davezan

12 years ago

Originally Posted by Kurt

Actually, the semantics are very important, especially when discussing legal issues.

The problem is, many people confuse the difference between a URL and a domain name. While a domain name is technically a URL, not all URLs are domain names.

Most people consider what are known as second level domains to be the domain name.

The first level domain name (also called the top level domain or TLD) is:
.com
.org
.net
.biz

...etc.

Then working to the left:
kurt.com
google.com
walmart.com

kurt, google, walmart are the second level domain names that come into question. And I'm guessing third level domain names could also be a problem, such as:

walmart.kurt.com

So, anything to the LEFT of the first level domain name is what is considered a "domain name".

However, a URL includes the domain names to the left and often contain file paths, directory names and page names to the rigth of the first level domain name:

kurt.com/walmart.html

In this case, it is fine to use a trademark/brand name. My use of "walmart" as a page name does not restrict Walmart from buying or owning the domain and it doesn't indicate Walmart owns the site. Just like Walmart can place products with trademarks on their shelves, freedom of speach allows me to talk about Walmart on my pages, including page titles.

Where you can get into trouble is HIDING keywords on pages, like invisible text or in meta tags not see by most real humans.

But you are allowed to use trademarks in titles, just like newspapers do when reporting news. And you can also use trademarks in URLs, as long as the URL is NOT part of the domain.

To be safe...

Use trademarks to the right of the top level domain (TLD)

Do NOT use trademarks to the left of the TLD

kurt.com/walmart.html is fine.

kurtsWalmartsite.com is not.

.com is the TLD in the two examples above.

No, I'm not a lawyer. I'm the expert witness your laywer should hire to discuss what a domain name really is.

Interesting thoughts, Kurt. Thank you.

Originally Posted by Mitsakis

So tell me, do you think warriorforum and the majority of wordpress blogs infringe copyrights?

Mitsakis, remember that this is about trademarks, not copyrights. While both of
them involve intellectual property, they have their own functions and context.

Speaking of context, that and/or use is essentially what this boils down to aside
from likelihood of confusion. Note also what Caliban subsequently said.

But...to keep it maybe simple, consult a lawyer with real-world experience. Then
again, the OP since admitted what he essentially intended to do anyway.

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David

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Mitsakis

12 years ago

Originally Posted by davezan

YouTube - Broadcast Yourself.

Other than semantics or nomenclature, what's the difference between a URL and
a domain name if/when they both give the impression of its trademark holder?

I don't know what the law says but there is a big difference between a domain and a URL. A domain is like the brand name of your business. A URL is part of the content of your website. Saying that you are not allowed to use for example the word walmart on any URL is like saying that you are not allowed to write any article which has the word walmart in the title. Look at the following example and you will understand why I am saying this. Here is a URL from the warriorforum: http://www.warriorforum.com/main-int...ter-tools.html A user of this forum opened a discussion about google webmaster tools. The forum created a URL to this thread which includes the trademarked word "google". In fact every wordpress blog that uses URL rewriting uses keywords from the post in the url so the only way to avoid having trademarked word in the URL in such a blog is to disable URL rewriting or to never post any article about "google" "walmart" or any other trademarket term which is ridiculous.

So tell me, do you think warriorforum and the majority of wordpress blogs infringe copyrights?

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Matthew Shelton

12 years ago

The peopleofwalmart.com is a poke fun at walmart site, yet they have a "store" on the site where the word walmart is right on the tshirts - think they had to do a licensing deal?

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davezan 12 years ago

Originally Posted by Matthew Shelton

think they had to do a licensing deal?

That's my guess. If that wasn't part of their "deal" with Walmart, and if they see
that ad goes to a competitor, Walmart can make that an issue if they see fit.
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tpw

12 years ago

Originally Posted by Matthew Shelton

The peopleofwalmart.com is a poke fun at walmart site, yet they have a "store" on the site where the word walmart is right on the tshirts - think they had to do a licensing deal?

To my understanding, that falls under parody protection. So, no.

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timpears

12 years ago

If they have decided to go after you, unless you have the finances to match them with lawyers, I would do what they want. You ain't going to win if you take it to court because I am guessing they have a few more bucks than you to spend on lawyers.

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Kal Sallam

12 years ago

I would take these sites down and let them know.

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jrpt

12 years ago

Speaking from personal experience: Look up the ICANN laws. They're easily found and fairly straightforward in their rules.

In basic terms: If you have a trademarked name in your url and are not blatantly portraying yourself as them and are not selling a competitor product under this url and all of the other obvious things (pornography, explicit...) then the sites should be yours to keep w/ no issues. I currently have such a url in my possession which the company (a very large one) has emailed us 3x to transfer it over to them and I politely direct them to the ICANN website.

One suggestion: Inform your domain registrar of your rights under ICANN if you feel the company will go to them with a request to transfer.

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sbucciarel

Banned 12 years ago

Originally Posted by Mitsakis

I don't know what the law says but there is a big difference between a domain and a URL. A domain is like the brand name of your business. A URL is part of the content of your website. Saying that you are not allowed to use for example the word walmart on any URL is like saying that you are not allowed to write any article which has the word walmart in the title. Look at the following example and you will understand why I am saying this. Here is a URL from the warriorforum: http://www.warriorforum.com/main-int...ter-tools.html A user of this forum opened a discussion about google webmaster tools. The forum created a URL to this thread which includes the trademarked word "google". In fact every wordpress blog that uses URL rewriting uses keywords from the post in the url so the only way to avoid having trademarked word in the URL in such a blog is to disable URL rewriting or to never post any article about "google" "walmart" or any other trademarket term which is ridiculous.

So tell me, do you think warriorforum and the majority of wordpress blogs infringe copyrights?

Originally Posted by jrpt

Speaking from personal experience: Look up the ICANN laws. They're easily found and fairly straightforward in their rules.

In basic terms: If you have a trademarked name in your url and are not blatantly portraying yourself as them and are not selling a competitor product under this url and all of the other obvious things (pornography, explicit...) then the sites should be yours to keep w/ no issues. I currently have such a url in my possession which the company (a very large one) has emailed us 3x to transfer it over to them and I politely direct them to the ICANN website.

One suggestion: Inform your domain registrar of your rights under ICANN if you feel the company will go to them with a request to transfer.

I wouldn't feel secure in the use of a trademark without the advice of an attorney. I was just reading an Internet law library article on numerous cases and found this:

The Court holds that the purchase of keyword advertisements triggered by a search containing another's trademark constitutes a use of that mark in commerce sufficient to give rise to trademark infringement claims. The Court accordingly denied a motion by defendant The MLS Online.com to dismiss trademark infringement claims arising out of its purchase of keyword advertisements from Google and Yahoo that displayed 'sponsored links' to defendant's website when a user entered plaintiff's Edina Realty trademark as a search term.

The Court also denied defendant's motion to dismiss trademark infringement claims arising out of its use of plaintiff's mark in hidden text and links found on its website, and in the text of its sponsored links, which motion was premised on the ground that this was a permitted nominative fair use of plaintiff's marks. Adopting the 'fair use' test followed by the Third Circuit, the Court held such uses of plaintiff's mark were not necessary to the description of defendant's product or services.

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CDarklock

12 years ago

Originally Posted by Snow_Predator

Now they want me to get rid of all mention of 'Walmart' in my site that does NOT have 'Walmart' in the domain.

If you are using the word "walmart" for any purpose other than talking about Walmart, they are required by law to say "now you stop that."

This is just how trademark works.

Now, you do have rights and you do have options, but this is fundamentally a legal question. You should really consult with an attorney about what you are doing and whether you're within your rights and what exactly are you looking at if you just do nothing.

In general, if you are using the word "walmart" to indicate honestly and truthfully that the URL really does have something to do with Walmart, you are making a valid and protected use of the trademark. But marketers in particular are known for making some pretty strange associations when it comes to deciding that, like "this lamp I am selling uses light bulbs which can be bought at Walmart," so speaking with an attorney is a Good Idea.

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Am I not allowed to use trademark names ANYWHERE in the url?

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