Is this domain a trademark infringement?

10 replies
If you put a drug name (not the generic name) in your domain name?

Here is a site I found Paxil Side Effects - (Paroxetine Hydrochloride)

Is this OK or could they get in trouble?
#domain #infringement #trademark
  • Profile picture of the author Dan Riffle
    It's dicey. I, personally, shy away from dicey.

    While I'm no attorney, this article provides some interesting insights:
    http://simmonstrialpractice.com/fair...ninth-circuit/
    My interpretation, and that's all it is, is that you might be able to defend your domain name in court. The question is do you want to take the risk?

    Edit: Here's a direct link to the entire Court opinion.
    http://www.ca9.uscourts.gov/datastor..../07-55344.pdf
    The case has to do with how the nominative fair use doctrine applies to internet domain names. I'd be interested to see Brian Kindsvater's opinion.
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    • Profile picture of the author Cali16
      Paxil is a trademarked name - most likely owned by GlaxoSmithKline (the pharmaceutical company behind Paxil). So yes, unless GSK owns the site, it is probably a trademark violation (I say probably, as I am not an attorney).

      And based on the content, which unfortunately contains several crucial inaccuries about the drug (largely in the way several things are worded), I'd bet money that GSK did not create the site nor do they endorse it.
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  • Profile picture of the author davezan
    Originally Posted by sexyandiknowit View Post

    If you put a drug name (not the generic name) in your domain name?

    Here is a site I found Paxil Side Effects - (Paroxetine Hydrochloride)

    Is this OK or could they get in trouble?
    The latter if the trademark holder sees fit.
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    David

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    • Profile picture of the author deuces81
      Would you guys wait until the company/lawyers contacted you?

      OR, would you delete right away?
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      • Profile picture of the author bengirwb
        paypalsucks.com

        paypalsucks.net

        PayPalWarning.com

        Folks, trademark does not prevent someone from saying the product sucks, or giving a bad review.

        Suppose you named your site UsedFordCarsForSale.com

        Will Ford come after you?
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        • Profile picture of the author Alexa Smith
          Banned
          Originally Posted by bengirwb View Post

          Folks, trademark does not prevent someone from saying the product sucks, or giving a bad review.
          Are you aware that there has been litigation over at least one of the domains you listed in your post? :p

          There are some permitted uses of other people's trademarks in domain-names, it's true. They tend to be tested in court, partly according to precedent law, by people with very deep pockets. They also tend to exclude "making money from the site".

          You're giving some potentially misleading advice here, Bengirwb.

          Among the things that can happen are:-
          • They can tell you to take it down
          • They can take the domain from you
          • They can take from you any money you've ever made through the site
          • They can sue you for additional damages
          Don't imagine that because "you're helping them to make sales" (as is often the case) they'll decide to be lenient. That isn't how it works. The point is that owning a trademark effectively confers obligations as well as rights on the holder: when it comes to trademark renewal time, if it can be shown that they've knowingly failed to protect their rights with regard to the trademark, that can be held against them. Some companies, for this reason, have the policy of pursuing all breaches of the trademark routinely and without reference to the motives/purposes/circumstances of the defendant.

          My own not-legally-qualified, five-word opinion is "Don't even think about it".
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        • Profile picture of the author davezan
          Originally Posted by bengirwb View Post

          paypalsucks.com

          paypalsucks.net

          PayPalWarning.com

          Folks, trademark does not prevent someone from saying the product sucks, or giving a bad review.

          Suppose you named your site UsedFordCarsForSale.com

          Will Ford come after you?
          Well, what do you think is the OP's reason for asking in a money making forum?
          And unless whoever owns that sample Ford domain has circumstances very similar
          to the Toyota vs. Tabari case, why wouldn't Ford go after that one?

          Search online, and you'll see how aggressive Ford can be.
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          David

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  • Profile picture of the author mikefrommaine
    There's always a chance that they will send you a cease and desist letter. If that happens you will have to give up the domain.
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    I'm the host of a show at http://mikefrommaine.com

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  • Profile picture of the author Black Hat Cat
    Banned
    Originally Posted by sexyandiknowit View Post

    If you put a drug name (not the generic name) in your domain name?

    Here is a site I found Paxil Side Effects - (Paroxetine Hydrochloride)

    Is this OK or could they get in trouble?
    Now that the doom-and-gloom-afraid-of-their-own-shadow posters have replied, I'll throw in my 2 cents. Could they get in trouble? Sure. Will they? Most likely not. Lawsuits are expensive, and most of these website owners don't have any money, so there's no monetary gain to be had. The first thing almost every trademark owner does is tell you to stop using the domain, and will likely ask you to transfer the domain to them. If you comply, that is usually the end of it. If you don't, THEN it could start to get ugly.

    The biggest risk is in losing an income-producing website that you've invested time and money into building up because you agree to transfer it to them. That's reason enough not to do it. It's not like you have to use the trademark in the domain to have success.

    Originally Posted by bengirwb View Post
    paypalsucks.com

    paypalsucks.net

    PayPalWarning.com

    Folks, trademark does not prevent someone from saying the product sucks, or giving a bad review.
    You'd have a point if the site in question was paxilsucks.com

    Suppose you named your site UsedFordCarsForSale.com

    Will Ford come after you?
    Probably. Doesn't mean they will win though.
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