1. Advertising
    y u no do it?

    Advertising (learn more)

    Advertise virtually anything here, with CPM banner ads, CPM email ads and CPC contextual links. You can target relevant areas of the site and show ads based on geographical location of the user if you wish.

    Starts at just $1 per CPM or $0.10 per CPC.

Domain Legality?

Discussion in 'Legal Issues' started by ahmedlfc, Aug 24, 2007.

  1. #1
    Hi,
    SEMrush
    I am wondering if someone can advise me with regards to a rather interesting situation i seem to find myself in.

    I recently purchased a domain with the name of a designer in it. Now i am setting up the domain to give reviews of thier products, together were places to buy, what to watch out for in terms of what is geniune what is fake, how to spot it etc.

    Registered it only 4 days ago.

    Now today i recieve an email from thier Head office saying, that they are the owners of ALL domains with this name in it, and i should deregister it within 10days or they will take legal action against me?

    What is the deal with this, if they wanted all the domains in the world with this name in it surely they should have gone out and registered them.

    I would assume i am well within my rights to create a review and rating site on something? As long as i acknowledge the trade mark of the brand?

    A little bizarre, hoping someone else has run into something similar and can advise on the best thing to do.

    Thanks
     
    ahmedlfc, Aug 24, 2007 IP
    SEMrush
  2. Smyrl

    Smyrl Tomato Republic Staff

    Messages:
    13,701
    Likes Received:
    1,685
    Best Answers:
    78
    Trophy Points:
    510
    #2
    If they are a big company they have a legal team on retainer. I doubt this is one you can win.
     
    Smyrl, Aug 24, 2007 IP
  3. davewashere

    davewashere Active Member

    Messages:
    1,680
    Likes Received:
    33
    Best Answers:
    0
    Trophy Points:
    88
    #3
    If you're using their well-known trademark in your domain and the website is relating to their products, I'd say you would have trouble fighting this.
     
    davewashere, Aug 24, 2007 IP
  4. mjewel

    mjewel Prominent Member

    Messages:
    6,693
    Likes Received:
    514
    Best Answers:
    0
    Trophy Points:
    310
    #4
    A trademark holder does not have any obligation to register all or any of the thousands of possible combinations of domain names that include their trademark. They also do not have to register all the extensions available - they already own the rights to use their trademark for their particular classification(s).

    Registering a domain that has their trademark in the domain, combined with the fact that you intend to use it to review their products, is certainly trademark infringement. I would do as they say or they can sue you or just take the domain.

    You can have a site that reviews their products (as long as it is clear that you are not associated in any way with the company) but what you can't do is use their trademark in your domain name.
     
    mjewel, Aug 24, 2007 IP
  5. ahmedlfc

    ahmedlfc Peon

    Messages:
    60
    Likes Received:
    1
    Best Answers:
    0
    Trophy Points:
    0
    #5
    thanks mjewel, for clearing that up,

    I think i will just write to them outlining what i had planned for the site, and if they cant see that it would actually be good press as such then i will tell ask them to reimburse me the domain charges at least, surely there is a burden of responsibility on the registars then not to accept domain registrations for such domains.
    Otherwise only person suffing is joe public that bought the domain.

    Thanks!
     
    ahmedlfc, Aug 24, 2007 IP
  6. bluegrass special

    bluegrass special Peon

    Messages:
    790
    Likes Received:
    50
    Best Answers:
    0
    Trophy Points:
    0
    #6
    That's not exactly true. A trademark can be used in a domain name if the domain name consists of more than just the trademark and it is clear from the domain and site that the site is not affiliated with the trademark holder (such as the xxxsucks.tld domains). If the domain only contains the trademark then I don't think that having a review site is sufficient to keep the domain.

    Further more, there are several other issues that would be looked at. One would be whether the person that purchased the potentially infringing domain has registered other infringing domains. Another would be if the potential infringer tried to sell the domain to the trademark holder. Yet another would be whether the review content looked legitimate or if it looked like it was simply put there to meet he fair use rules or if it looked legitimate. A court would also look at the content itself to determine whether the main purpose of the content was strictly reviews or if the content was designed to lead people to buy competing products.

    At the time I wrote this, I don't know your URL so I would not guess as to whether it might meet fair use rules. Even then, the reality is that fair use is subjective and has been interpreted differently by different courts. You wouldn't know whether it would taken from you (even if you believed that it met the fair use guidelines) until ICANN or the courts make a decision. If it is just the trademark, then you can be sure you would lose.
     
    bluegrass special, Aug 24, 2007 IP
  7. mjewel

    mjewel Prominent Member

    Messages:
    6,693
    Likes Received:
    514
    Best Answers:
    0
    Trophy Points:
    310
    #7
    Adding words to a trademark for a domain does not get around infringement. The courts have ruled xxxxsucks.tld is free speech, but that obviously isn't the case in this situation. Nominative use of a trademark can be possible is some situations, but can be a difficult argument - and most people aren't willing to spend tens of thousands of dollars to fight a case in court when they are up against a deep pocket who clearly objects to the usage and considers it infringement.
     
    mjewel, Aug 24, 2007 IP
  8. mjewel

    mjewel Prominent Member

    Messages:
    6,693
    Likes Received:
    514
    Best Answers:
    0
    Trophy Points:
    310
    #8
    Trademark law can be very complicated and much is in a grey area. Usually there isn't any way for a domain registrar to tell if a domain is infringement because many times it will depend on how the domain will be used. A good trademark search runs several hundred dollars and still isn't a guarantee that a name isn't infringing upon an existing usage. The registrars obviously aren't going to spend hundreds of dollars to research each domain someone wants to register. If you read the fine print, they probably had a disclaimer saying it was up to you to check for existing trademarks.

    The law was intended to "protect" businesses who have developed a trademark or brand from other people "riding their goodwill". A trademark holder also has an obligation to go after people who infringe upon their trademark - if they don't, it could become "genericized" and they could lose their trademark rights. This happened with "Aspirin" which used to be a US trademark for their product.
     
    mjewel, Aug 24, 2007 IP
  9. bluegrass special

    bluegrass special Peon

    Messages:
    790
    Likes Received:
    50
    Best Answers:
    0
    Trophy Points:
    0
    #9
    No, just adding words to a domain name does not get around infringement. If you read my post, you will see that the second condition (of the domain name itself before the courts would look at content) is that the name does not lead a person to believe the site is owned or affiliated with the tm owner.

    A domain name that only contains the tm would be found against regardless of content. The words added would make a difference. For example, buytm.com would most likely also be thrown out without the courts even looking at content. However, a domain name like bobstmreviewsite.com would most likely make it to the second round of consideration (content). If the page was merely a parked page then the plaintiff would win. If there were an actual review site then the defendant stands a good chance of winning.

    Note, also, I did not claim that he would win any case as he doesn't list the domain. And even if he had listed it, the only way to know if a person would win would be to fight it. I did not make any recommendation as to what action to take, simply clarified the law (in the US and ICANN policies) on this point.

    The OP states that the designer's name is in the domain, not simply is the domain. Without the domain, no judgement as to whether it even has a chance can be made. Furthermore, the OP does not state who the designer is. A designer can have a trademark without having tens of thousands of dollars for such litigation.

    While many people would simply give up, many also choose to fight (and win on occasion). If a defendant wins and properly counter sues for court costs then it is possible that no cost would be incurred. That being said, if this is a high profile designer with the kind of money for decent lawyers, then the type of lawyer that would defer all costs until after judgement is not likely to be good enough to win. So while there might not be cost to the defendant at the end (excluding time, of course), there could be a large initial layout. And it is a crapshoot even if you are in the right.

    I am not for "fighting the man" at every opportunity. I am, however, for people understanding what their rights are and what is involved before they make a decision.
     
    bluegrass special, Aug 24, 2007 IP
  10. mjewel

    mjewel Prominent Member

    Messages:
    6,693
    Likes Received:
    514
    Best Answers:
    0
    Trophy Points:
    310
    #10
    I've spent close to seven figures on trademark related disputes - and having been on both sides, it is a situation where the lawyers only win. In Europe, you would get court costs and legal fees if you successfully won an infringement claim brought against you, but rarely so in the US. As long as the trademark holder had a remotely legitimate argument, you wouldn't. On the other hand, a registered trademark holder can be awarded treble legal fees if they are successful.

    The poster wants to do reviews on their products - which tells me you are likely dealing with a deep pocket company that could easily spend the money to bring you to court. A domain that was only registered 4 days ago isn't worth a fight imo.
     
    mjewel, Aug 24, 2007 IP
  11. bluegrass special

    bluegrass special Peon

    Messages:
    790
    Likes Received:
    50
    Best Answers:
    0
    Trophy Points:
    0
    #11
    Court costs (which do not include lawyer fees) are automatically awarded to the prevailing party unless expressly denied by the court. The plaintiff acting in good faith or having a remotely valid argument has been struck down by most US courts. There must be some impropriety on the part of the prevailing party during the litigation. The specifc rules vary state to state. Florida, for example, does not award court costs to the prevailing party if that party submitted briefs that were not materially substanciated by the evidence in the case. This move was to cut down on the practice of flooding the court and the opposing party with as many briefs as possible to hamper the other party's ability to act in the case.

    Lawyer fees are much harder to recoup. Generally speaking, for a defendant to recoup lawyer fees the case must be dismissed with prejudice or fall under statutes that specifically include lawyer fees as court costs. There are other reasons that a judge might award this, but they are along the same lines.
     
    bluegrass special, Aug 24, 2007 IP
  12. Dave Zan

    Dave Zan Well-Known Member

    Messages:
    2,320
    Likes Received:
    121
    Best Answers:
    2
    Trophy Points:
    115
    #12
    http://www.internetlibrary.com/cases/lib_case100.cfm

     
    Dave Zan, Aug 24, 2007 IP
  13. ahmedlfc

    ahmedlfc Peon

    Messages:
    60
    Likes Received:
    1
    Best Answers:
    0
    Trophy Points:
    0
    #13
    Ok just to clarify the domain name is not just the name of the company
    it is nameofbrand-reviewer.com

    so it is not the case that i am offering the site for sale to them, or holding thier primarary domain or the likes.

    which is what i find silly.
     
    ahmedlfc, Aug 25, 2007 IP
  14. bluegrass special

    bluegrass special Peon

    Messages:
    790
    Likes Received:
    50
    Best Answers:
    0
    Trophy Points:
    0
    #14
    Well, nameofbrand-reviewer.com gets you in the ballpark of being able to fight for it. That does not mean that you would win. Having actual review content would help you out. If the site is currently blank or parked then it doesn't help you as much.

    Case law in the US suggests that you might have a good chance of winning. The next question would be how they plan to dispute this domain. If they went through the UDRP process that would cost you only time as the defendant (unless you agreed to an in-person hearing). However, a UDRP decision can be fought in court. So if the TM holder does take this route, then they could still take you to court if they lost in the UDRP.

    If they chose to take you to court, it is likely to cost you money (unless you chose to defend yourself). You would probably be awarded court costs if you won, but that does not include lawyer fees, which will be the single biggest expense. Of course, that is in reference to US law. So, even if you win it could be expensive.

    So, now you need to look at the whole picture and decide what is worth it to you. You might do some research on the web to see how they have (or if they have) disputed domains in the past. Other things that can make a difference in the outcome, if you have other domains that contain other trademarks, some courts (and the UDRP) take this as evidence of your bad-faith intentions. Take a look at the whole thing and decide whether it is worth it to fight for this very new domain.
     
    bluegrass special, Aug 27, 2007 IP