I'm creating a forum about a big name band and was wondering if there would be any legal problems with using "BandNameForums.com". A while back I was selling some name brand products via droppshipping and had a manufacturer name in my URL (it was AllManufacturerName.com). When the site got popular I received a certified letter from an attorney with the company who told me I had to remove the site because of trademark infringements and that I had to transfer the domain to the product manufacturer's ownership. Anyway before starting this new site I want to make sure I'm not at risk... anyone know about this?
You cannot ride the goodwill of someone else for a site, meaning that you cannot legally use the name in a site, even if you add to it (and protection can extend to misspellings and foreign spellings). You don't even need to have a trademark to have the same legal protection. Trademark protection is by classification - which can be broad (extend to all classifications) or limited to one. If your site has anything remotely to do with the original owner, you cannot use it without the risk of losing the domain or worse, being sued for damages. The idea behind it is that the original company spent a lot of time (and usually money) developing and branding the name. Another person cannot come along and use the goodwill built by others for their own benefit. Even if your site is a positive towards the company, it does not give you any legal protection, and the company is required by law to defend against unauthorized use of their trademark or they risk losing it. This is why you see a big company like Microsoft going after some teenage kid who registered Microsoft-tech-forums etc. They aren't worried about losing business, but need to protect their trademark. (Adding "Forums" or other words doesn't do anything). Get written permission or don't do it. You'll spend a lot of time only to risk having the domain taken away from you.
Darn, just what I didn't want to hear So, as an example, GreenDayForums.com would be at risk, correct?
If the forum was about the band, it would be infringement. If the forum was about gardening tips, you might be ok. Some common words are not able to be trademarked unless the usage is unique.... "Apple" pie could not be trademarked for baked goods, but "Apple" for computers could. If a person was able to register apple.com, "Apple corp" would have been unable to do anything about the domain unless it was used for computers or music. A lot of times it's more about usage than the actual name.
Although, from my past experience, using a name such as that would only make the band happier. I have seen many bands encourage the use of their band name to help attract users. I used to run sites like that but just don't have time for it anymore.
Maybe with a small band, but this is a huge band with a major record label that has a bunch of attorneys who do nothing but intellectual property rights. Things have changed quite a bit in the last few years, but if a band wanted to "encourage" the use of their trademark, then they shouldn't have a problem giving written permission. I think some may also look the other way if the site is non-commercial. non-commerical defined as a fan site that generates no income in any way, not even "donations for bandwidth".
When you trademark something, you do it by classes. Your name is not trademarked across the board. I remember a case some time ago in which Federal Express tried to sue a cafe shop called Federal Expresso. I don't believe any one of the many classes FE trademarked under was in the cafe sector. Contacting the company for a written response is excellent advice. Always get it in writing. BTW, non-commercial website is one not engaging in commerce. Any website that is sponsored or supported in part or whole by advertising (IE adsense), is a commercial website. Many people get confused in this area and believe that to be considered a commercial website you must be owned by a company or have profit as your main agenda, which is not the case.
Yep, they can take your domain. Unfortunately, because they have a copyright and trademark on their name, you are riding on the curtails of their 'other' marketing efforts. So, you are basically profiting off of their marketing dollars.
They have a registered Servicemark, which protects their right to do commerce under that name. While even similar names can be protected, it seems that it was a bit of a stretch to say that someone would likely think that "Federal Expresso" was owned by Federal Express. Year ago, a grandmother in Petaluma, California was sued by "Granny Goose" (potato chips) for operating a store called "Grammy Goose" (which was what her grandchildren called her). Even if you win, who wants to spend thousands, perhaps hundreds of thousands in legal fees fighting a large company? You don't even get your legal fees if you win. Some large companies do register names in all classifications to get very broad protection. I believe IBM is registered in most, or all classifications. I know they have a "jewelry line" just to gain protection in that classification - not because they have plans on getting into the jewelry business.
Yes. I had an issue with a company many years ago. They claimed the name of one of my companies was trademarked by them and people might get confused--uh huh. It went nowhere. I remember years back a company threatened a guy who had {companyname}.com. Turns out the company name was this guy's last name. The guy ended up losing the domain because, I think, he would have went bankrupt just trying to depend it all the way up. If you do a TM search, you will find companies registered in all sorts of classes that might not necessarily pertain to their current business structure.