Brand related domains

Discussion in 'Domain Names' started by onLoad, Mar 21, 2008.

  1. #1
    Do you think owning a domain such as acerprinters.com and compaqscanners.org is legally not the best idea? Would it create legal issues? What is the worst that can happen?
     
    onLoad, Mar 21, 2008 IP
  2. mjewel

    mjewel Prominent Member

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    #2
    Using a trademark as as part of a domain name can be infringement. You cannot ride the goodwill established by someone else. Most companies will send you a C&D letter asking you to turn the domain over to them, but others are much more aggressive and will file a WIPO action or lawsuit against you. Trademark owners have a legal obligation to protect the mark.

    The worst case scenario is that the would sue you for trademark infringement, ask for all revenue the site has ever generated, plus punitive damages, ask for treble their legal fees (which they can do if they have a registered trademark) and have the domain turned over to them. Some high profile cases (madonna.com) have resulted in the former owner losing over a million dollars.
     
    mjewel, Mar 21, 2008 IP
    onLoad likes this.
  3. onLoad

    onLoad Peon

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    #3
    Mjewel - Thanks for the quick response.

    I am not going to use their trademark like madonna.com or acer.com but rather acerprinters.com and compaqscanners.net to build a review site on their products. Is it the same?
     
    onLoad, Mar 21, 2008 IP
  4. mjewel

    mjewel Prominent Member

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    #4
    A trademark gives rights to use the term i.e. "compaq" and adding words to it like "scanner" does not get around infringement (nor compaq-scanners). You could use a name like "printerscanners.net" and then review scanners which as that domain isn't likely to create consumer confusion. Using any domain with "Compaq" in it would allow them to argue that consumers would be tricked into clicking a link thinking it was an official site - and even a disclaimer on the site isn't going to prevent someone from clicking the link.

    There are a few exceptions (like "compaqscannerssuck.com") as the consumer isn't likely to think that is an official site with that domain. You might be able to make an argument for a domain like "compaqscannerreviews.net", but many times it comes down to how willing you are to spend a significant amount of money to defend you right to use a domain. If the trademark holder thinks you are infringing upon their mark, and they have deep pockets, you are going to spend tens of thousands of dollars defending this right. Even if you win, you are out legal fees. If you lose, you could be forced to pay treble their legal fees.

    Most people aren't looking to get into a legal dispute and spend large sums of money in legal fees, so you could either try to obtain permission from the trademark holder in advance, or choose another domain that doesn't involve using their trademark.

    Some companies are not aggressive in going after every case of infringement, some are. I wouldn't want to put a lot of effort into a site only to have it taken for infringement. Most companies won't resort to suing you if you turn over the domain at their request or seek monetary damages (although some do).
     
    mjewel, Mar 21, 2008 IP
  5. Skinny

    Skinny Peon

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    #5
    Yup you are still infringing on the trademark. . . even if you add those words after it.

    Think about it:

    Would someone think that acerprinters.com comes from the acer company. Most likely they would. Once there is this confusion Acer would be try to get that name away from you.

    Even if you aren't making money, or are putting up reviews encouraging people to buy acer printers you are still violating their trademarks.

    mjewel has explained things rather well. I would advise you not to take the risk because what you could make is not worth what you could owe these companies (who have lots of money to hire really good lawyers).

    Skinny
     
    Skinny, Mar 21, 2008 IP
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  6. onLoad

    onLoad Peon

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    #6
    Mjewel & Skinny - Thanks for your help. I learned a lesson here. Won't waste my time and money in such names. :)
     
    onLoad, Mar 21, 2008 IP