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Domain Name Copyright Issue - When Do You HAVE To Give Up Your Domain?

Discussion in 'Legal Issues' started by Vozzek, Feb 14, 2011.

  1. #1
    Hey all, I have a copyright infringement question I'd like your feedback on.

    Basically, I want to know under what circumstances a company can force you to give up a domain name, if you're using their copyrighted or trademarked name within the URL of your website.

    For example, I had a website called greenbuildingenergystar. It was an informative, useful website that gave tons of tips on saving energy through the latest green techniques and through purchasing energy star products. I had numerous disclaimers on the site explaining that I was not affiliated with Energy Star in any way, but basically promoted the use of their products for homeowners to save money and energy.

    The dept of energy contacted me and very nicely asked me to give up the domain. They even gave me a year to do it. Rather than challenge the Federal government, I changed the domain to greenbuildingenergysavings, and that was that. Plus, hey, they asked nicely. :)

    A year later, I was designing a website for a client who is selling the Kosmodisk spine massager. He ended up providing his own url, but before he did that I managed to register kosmodiskbackmassager.com, with which I've done absolutely nothing.

    Today I got a Notice of Infringement email from Kosmodisk claiming that I need to 'discontinue any use of the domain name'. I never built a website with the url, nor do I plan to. But I was wondering if they could FORCE me to give up the domain, or if I still had any legal right to it.

    Now here's where things get confusing, because I know 99% of you will tell me I can't use a copyrighted or trademarked name within my url. In that case, I'd like to direct you to paypalsucks.com, which not only uses the trademarked PayPal name, but has BLASTED and maligned PayPal for years and years now... and rightfully so! :)

    So my question is this: If a company as powerful as PayPal hasn't been able to force the discontinuation of paypalsucks.com, why is that? I've read that as long as you're not misrepresenting yourself as the company in question, or misleading visitors into thinking you're affiliated with them, it's okay.

    Is this how paypalsucks gets around it?

    Looking forward to hearing your opinions on this, and whether or not anyone here has had any experience with domain copyright issues.
     
    Vozzek, Feb 14, 2011 IP
  2. Law-Dude

    Law-Dude Active Member

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    #2
    Paypal can't stop Paypalsucks.com because "Paypal Sucks" isn't confusingly similar to Paypal's name. Nobody is going to confuse something that says Paypal sucks with a Paypal-owned service.

    The same cannot be said about Kosmodiskbackmassager.com. That's just blatant trademark infringement. They can come after you with an ICANN domain dispute, or a trademark infringement lawsuit.
     
    Law-Dude, Feb 14, 2011 IP
  3. Vozzek

    Vozzek Active Member

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    #3
    I can see what you're saying.

    So by that logic if I had Kosmodiskreviews.com it would be okay, because I'm offering non-affiliated reviews of the product? Something tells me they'd still send the infringement email.
     
    Vozzek, Feb 14, 2011 IP
  4. Law-Dude

    Law-Dude Active Member

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    #4
    No, it might still suggest that they're the ones making the reviews, and therefore be confusingly similar.

    But if you had Kosmodisksucks.com, you'd probably be ok.
     
    Law-Dude, Feb 14, 2011 IP
  5. attorney jaffe

    attorney jaffe Member

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    #5
    Here is the correct answer - There is a doctrine in trademark law know as "Nominative use". Nomative use provides an affirmative defense to trademark infringement when the trademark is used as a discription of the other product, or a comparison to your product.

    Therefore, paypalsucks is a nomative use - naming what sucks. I think kosmodiskreviews would be OK, unless you were trying to drive traffic to your site by claiming it was a review site but you are actually trying to sell competing product. Then you could have a problem.

    Trademark law is complicated. It is hard to cover the nuances in a short post, but I hope this helps.
     
    attorney jaffe, Feb 14, 2011 IP
  6. mjewel

    mjewel Prominent Member

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    #6
    This is not a copyright issue, it is trademark infringement. You should turn over the domain. You should also review the anti-cyberquatting laws. Even if you had a good argument to keep the domain (and I personally think you have none) you could easily be looking at spending tens of thousands of dollasr (seven figures is not unheard of) to defend your position in a court case for infringement. If you win, you are out legal fees but get to keep a domain that isn't even close to being valuable. If you lose, you could be ordered to pay treble their legal fees (if their mark is registered) plus damages. It isn't worth the risk. Trademark law is complicated (and there are sucks sites that have lost their case) and fair or not, the side with more money has a huge advantage as they can bankrupt you in legal fees. Stay away from using trademarks in a domain unless you have express permission from the trademark holder.
     
    mjewel, Feb 14, 2011 IP
  7. Vozzek

    Vozzek Active Member

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    #7
    Like I said, at the time I reserved the URL I was doing it for a company that did have express permission to both sell and promote the product. They chose not to use this particular domain, and I never built a site for it.

    I have no plans on using the name, and will let it expire. No one was cyber-squatting.

    That said, I still have my doubts as to how these laws work. It's sticky and all too conditional. The "nominative use" thing sounds very accurate though, and would explain why I've seen so many trademarked names embedded within certain URL's not affiliated with the company that owns the trademark. After all, Burger King can make commercials making fun of the Egg McMuffin, even going as far as to claim they stole McDonald's recipe and slapped the item on their dollar menu out of spite.
     
    Vozzek, Feb 14, 2011 IP