Advice on Domains with potential Trademark questions

Hi, all.

I have a few questions about Domains that I'm hoping some of you out there can shed some light on.

I'm in the proccess of starting a couple content sites, and will be buying a couple domains in the near future. While researching names I have come across a few available domains. So while I'm developing my content sites I was thinking of *why not* buying a few domains and throwing them up and putting a couple ads on them.

The problem is I'm only slightly versed in Trademark issues, and need some advice on three different types of domains. I don't want to buy domains only to find I have gotten myself into trouble/headaches.

1. Names of famous people. (For the sake of easiness, and because I'm not the owner of these domains yet, I'll just use generic/hypothetical examples of domains already owned.) Say I owned JuliaRoberts.com -- is this okay? And is this something I could potentially put ads on a make money off of without infringing on any Trademark issues? The name I have in mind is not nearly as big as Julia Roberts, but it is a widely known name.

2. Names of fictional characters. For example, georgecostanza.com. Is it okay to have a fictional character domain name, especially if it's a minor character?

3. Domain that includes a company name, and something they're know for. For example, Tiffany is known for their color blue, would the domain tiffanyblue.com be okay?


Thank you all in advance. I've only just signed up for this forum, but already have found a lot of useful information. Thanks again.

David

 

A name doesn't need to have been trademarked to have the same legal rights as a trademarked name. The first person to use a name owns the rights to a name. Some generic terms are not able to be trademarked.

Trademarks and Servicemarks are by classification. That means if someone first to use a name like bluewidet shirts, they would have the rights to the name for that usage. A person would probably not be infringing upon their rights if they used bluewidet computers as there is no overlap with shirts.

Large companies like "Coke" have taken steps for broad protection in many or all 40 some classifications which means they own the exclusive rights to the name and any attempt to use the name would likely be infringement. You also can't add words to a name to get around infringement i.e. bestcokebeverage.com. Even misspelling and foreign spellings can be infringement. It comes down to intent.... are you using the name in a manner to ride the goodwill of the name? If your name is JuliaRoberts and you had a personal website that didn't mention the actress or run adsense that was making money off the actress, you might be ok. Put a picture of the actress or talk about her, and you would be infringing upon her goodwill.... Many famous people have taken action against people who have registered their name and turned it into a commerical site. Commerical means the site takes in income (even donations for bandwidth is considered commerical). Some famous people allow forums to operate, but legally they could probably take the domain if they wanted. True fan sites that don't run advertising are more likely to not have trouble - which isn't the same as saying they legally have the right to use the name. Some game companies allow forums to operate without any problems, but they could legally stop them if they wanted too.

Are you attempting to use a famous or trademarked name to make money? If yes, you are infringing upon the goodwill they have established.

It sounds like what you want to do is certainly infringement - whether or not they take action against you is an unknown. Fictional characters are also protected. Tiffany is known for being very aggressive in protecting their name. I actually spent about $30K in a lawsuit with them years ago (although it wasn't domain related). In the end, we came to an agreement and each party paid their own legal fees. I felt they were wrong, but it would have cost me about $200K to $300K to take it to court and I made the business decision that it wasn't worth it and only had to make minor policy changes to settle their objections.

Look at it from their perspective (I also own several Federally registered trademarks/servicemarks). They have built their name (possibly invested millions of dollars doing it) and then someone else comes along and tries to ride their coattails to make money off of it. If you built up a business, would you want someone coming along and making money off of it?

Legally, a trademark owner has to be proactive in protecting their name or they risk losing the rights to the name (like Kleenex). They aren't as concerned with some small time operation making a few dollars, but are protecting their name as required by law. I own a trademark on a four letter word for a certain type of use. There are people who come along and either don't check, or don't care, and open up a business using this name. I have to spend money going after them to protect my rights to the name - and these are usally people with very little money to collect my legal fees. I've only collected legal fees once out of several dozen infringement cases (I don't even usually try).

If you do try to make money off the name of someone else, you could get a C&D letter, or they make go after you for monetary damages and in cases of trademark infringement, they are able to collect treble legal fees. The bigger the name, the more risk you assume. There is a famous case of a teenager with the real name of Mike Rowe and his failed attempt to use the domain MikeRoweSoft.com. Microsoft didn't go after him for damages, but he did lose the domain.

Just because a domain isn't taken, it doesn't give you any legal rights to use the name. You could always buy an hour of time from an intellectual property rights attorney if you think it is a possible problem.

 

Concentrating on artiste names, you are perfectly entitled to use the domain, juliaroberts.com; if your name is Julia Roberts or you represent a client whose name is Julia Roberts. Registering the domain, juliaroberts.com and slapping some ads on it is not in itself illegal. You should make it very clear the site is in no way affiliated or connected to the real Julia Roberts.

Additionally, you run the risk of losing the domain should the actress, Julia Roberts, demand that the name be turned over to her. You lose out for all sorts of reasons on that one.

If you choose to set up the domain with ads, there is a chance that lawyers may go after you for trading off the name of their client, which is why you need the disclaimer. It isn't bullet-proof by any means but it gives you a defence to argue that you didn't trade off the client's name. Whether is stands or not depends on how good your lawyer is.

What you can do, is set up a fan site, for example, juliarobertsfanclub.com, and build that site as a fan club and use the domain, juliaroberts.com, to redirect to the fan site. Should the artiste send the lawyers after their domain, you could negotiate some sort of benefit for your co-operation.

 

mjewel -- thanks for taking the time to respond in such a thorough manner. I appreciate it!!

I really appreciate your response, too, mcfox. Thank you both!!

Quoting mjewel:
"Look at it from their perspective (I also own several Federally registered trademarks/servicemarks). They have built their name (possibly invested millions of dollars doing it) and then someone else comes along and tries to ride their coattails to make money off of it. If you built up a business, would you want someone coming along and making money off of it?"

This sums it up perfectly.

It's all definitely a lot clearer to me now. As a more creative-minded person ideas usually click in my head -- and then it's not until later that another voice chimes in and says "you better think a little more about this." It certainly wasn't my intention to get a domain that would infringe on another's work, but that's exactly what it would have done. I certainly wouldn't want my hard work to be exploited so someone else could come in and get a piece of it, however small.

With that said, a follow-up question -- to mjewel, or anyone else:

You wrote of people not checking to see if the name you own is or isn't available. Where's a good spot to check on this before committing to buying a domain? The rest of my prospective domains should all be pretty safe and I doubt they have (or could have) a trademark, but you never know.

 

The rights to a name are not an easy thing to check. If the mark is registered, you can check online at the USPTO. That would be the first place to check. The problem is that you don't need to register a trademark or servicemark to have the same legal rights - the rule is that the first person to use it, and continue to use it, has the rights to the name for that use. Some mom and pop business operating out of their house can have the legal rights to a name as long as they can prove they used it before you. The second place to check is the major search engines to see if you can find someone else using the name in the same way you intend.

The rights to the name isn't exclusive - meaning that if a t-shirt company had a business called "blue widgets" they wouldn't own the name if you wanted to use it for an entirely different business i.e. selling computers. You couldn't use it for clothing, but that is where the protection would likely end. Some large companies have very broad protection, like IBM, or Microsoft, where you probably couldn't use the name for any type of business.

There is no way to be 100% sure. There are trademark search companies that charge several hundred dollars and up. They look through phone records, credit filings, etc., to see if they can find any prior usage that may conflict with your intended use. Even those searches are not 100%. Some very small companies may not show up in a search and later come forward and claim infringement. There is always some risk unless you invent some unique name that you are certain has never been used before.

Even foreign spellings and misspellings can be infrigement.... i.e. "LOOK Magazine" could claim infringement if someone used a foreign word for "Look" and then used it for a magazine. LOOOK Magazine would likey also be infringement.

I own several Federally Registered trademarks and one is a 4 letter word. I don't own the dot com and have no rights to the name because it is being used by a large company for something entirely different - and they started using the name long after I was using the name.

The only way to positively own the rights to a name is to file for a trademark and then wait 6 years for it to be finalized. During that period, anyone can come forward and contest your filing and claim prior usage. If you mark is finally accepted, even if someone comes forward and claims infringement, they can no longer prevent you from using the name (and you probably couldn't prevent them, but could limit any expansion). The trademark process will run about $1,000 if you do it yourself, and can wind up being a lot more if you need an attorney to fight claims of prior usage. There are also ongoing filing fees that need to be paid if you want to keep the trademark after it has been accepted. I think it's currently $600 after 5 years. If you do it yourself, make sure you do it right. One little mistake and it will be rejected and you will have to pay the filing fee again.

 

Its interesting how domains with copyrighted words still make it to the net and survive.

Like www . ________sucks . com

There are TONS out there for big name companies.

 

IIRC, It has already been decided by the courts that all "sucks" domains fall under what is called "fair use", which is why there are so many of them out there.