Trademarks in domain names - any experience?

by IMDESTROYER Banned
3 replies
Resource: FAQ about Domain Names and Trademarks -- Chilling Effects Clearinghouse

in this Q & A it states that a company will complain to your register if it feels that you are infringing on what it represents. How many of you have and still use trademarks in their domain name and do anything irrelevant from what it represents?


Also does anyone else have a different point of view on the resource above.
#domain #experience #names #trademarks
  • Profile picture of the author Gene Pimentel
    This resource is spot on. That's how it works. Trademark holders are OBLIGATED to protect their trademark or risk losing it.

    Does that mean you can't use a trademark in your domain name? No. There are at least two situations where you may do this. 1) You have the trademark owner's written permission. 2) You are using the same word(s) in an entirely different industry that won't confuse the general population.

    I am not a lawyer and this is not legal advice. Just my own experience.
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  • Profile picture of the author Alexa Smith
    Banned
    Originally Posted by IMDESTROYER View Post

    Trademarks in domain names - any experience?
    I have experience of reading large numbers of threads here about trademarks, some of them started off by Warriors who have made the mistake of using someone else's trademark in a domain-name in a context which can be held to be "competing" in some sense, and - one way or another - have paid dearly for doing so.

    A trademark can even be deemed by a court to exist constructively, i.e. without having been registered as such, especially if it's a brand name, I think. At least in some countries.

    There are some gray areas, though. There are circumstances under which courts permit the use of other people's trademarks in domain-names. I think they exclude anything with commercial/financial intent in the same context as that of the trademark owner, though.

    But for the most part, these are for people with very strong stomachs, very good lawyers and very deep pockets!

    Among the things that can and regularly do happen, when the trademark owner discovers such breaches of trademark in a domain-name, are:-
    • They can tell you 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 for flagrantly breaching their legal rights
    Don't imagine that because "you're helping them to make sales" (as is so often the case, in these circumstances) they'll decide to be lenient. That isn't how it works. The point here 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/location of the defendant.

    I'm not a lawyer, by the way (did you guess?).
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    • Profile picture of the author SunilTanna
      IANAL:

      No, don't register a name that conflicts with the name & usage of a trademark holder. All Alexa's points are correct.

      That said, if you already have a domain, especially if you've had it for a long time and it's valuable and you are using it, you aren't necessarily in an indefensible position if somebody who is a trademark holder (or who pupports to be one) threatens you. Every situation is different - and depends on the facts of the specific case - so that's when you talk to a lawyer, do research, and get advice.

      If you're generally interested in this topic, you might also want to follow sites like domainnamewire.com, and UDRP decisions (that are all published), as it will give you a better feel for how these types of situations pan out, and when domain name holders have been able to retain domain names in these situations, and when they have been judged to be infringing or lost the domain to UDRP.
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