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Domain Names Forum

    
3 Letter Domains and Trademarks
Isn't every 3 letter trademark potentially subject to many claims?
lizzie




msg:3533453
 5:53 pm on Dec 22, 2007 (gmt 0)
I recently purchased a 3 letter .com domain name which is trademarked, not by me though.

Will I get in trouble if I setup a website under that domain name? Is that something that should not be done legally?

All of the 3 letter combos are trademarked probably by someone or some company.
Does anyone have any idea of the legal problems that may be associated with using or owning a domain name trademarked by someone else?

 

Laker




msg:3533495
 7:20 pm on Dec 22, 2007 (gmt 0)

Lizzie,

You may wanna read:
[webmasterworld.com...]

and, (optionally ;-) the last post in this thread: [webmasterworld.com...]

lizzie




msg:3533499
 7:27 pm on Dec 22, 2007 (gmt 0)
Thanks Laker.

I don't understand why it should be taboo to have a general discussion of this issue here since it is so important and needs to be discussed. Most of us don't have personal lawyers on retainer. No one is asking for legal advice.

But it is the American way according to the first amendment to the United States Constitution that people can say what they want as long as it does not slander or libel anyone.

To be so afraid of lawyers suing us that we can't even have a discussion of trademark law as it pertains to domain names is sad.

Webwork




msg:3533506
 7:31 pm on Dec 22, 2007 (gmt 0)

Lizzie, Laker did a nice job of responding. The threads he linked to explain the problems with threads on the topic of trademark.

Without getting further into the issue I suggest you read a few WIPO or National Arbitration Forum opinions. They really help to layout the issues.

You might read, I believe, the PWC.com opinion.

[wipo.int...]

I believe there are other 3 letter opinions. The focus tends to be on efforts to trade off the value of the brand.

Folks, I'd appreciate it if the thread ends here but if there's any public document that really helps bring this limited issue - the trademark of 3 letter domains - into focus and it's not on someone's blog post it up.

jtara




msg:3533939
 5:31 pm on Dec 23, 2007 (gmt 0)

Well, I have to agree that we've gotten too paranoid here, and think we're capable of having a general discussion about a legal issue without giving legal advice.

And I also agree that not everybody here can afford to run off to a lawyer every time a legal issue comes up. Not all of us here have the luxury of being able to consult ourself. ;) So, I'm going to push ever so gently on the edge of the envelope.

I think you have to start by reading about the trademark laws in your country, starting with the official website of your trademark office. In most cases, I think you will find not only the law itself, but more readable summaries and guides. In the U.S. there are some quite-specific guides - even dealing with domain issues.

Realize, too, that international and foreign laws may apply, but your trademark office is a good starting-point.

When you do that, I think you will find (at least for the U.S.) that trademarks are not so broad as to preclude the use by anybody else, but only by anybody else within the specific industries declared by the filer.

In other words, IBM does not claim a trademark on all uses of "IBM", but in certain industries - say, computers. (Caution: look up the trademark, and see what industries they have filed on. There are often several, and some might be surprising - sidelines, abandoned product lines, etc.

There's a simple moral test that, while it won't substitute for the precise legal test that only your attorney can advise you on, I think will work most of the time: are you trying to take advantage of and draw traffic because of somebody else's famous name?

We had a good local case a few years ago. A resale shop operated for several years with the creative name "Sacks Fifth Avenue". It took a few years, but I think you can guess the inevitable result: Saks Fifth Avenue sued.

Sacks Fifth Avenue claimed that there was no way anybody could confused them with the real Saks Fifth Avenue, as they were a resale shop, and Saks sells top-of-the-line new merchandise. Saks made the point that they'd recently opened an outlet store in the area.

The judge sided with Saks, and Sacks was sacked.

Oh, the store *was* on Fifth Avenue. Now, what if they'd actually been selling sacks?

While I can't guess the outcome, I can imagine that it would have been an even BETTER news filler than it was!

Every website owner really needs to understand the basics of trademark and copyright. And here's where that expensive lawyer comes in. I think it would not be a bad idea, AFTER reading-up, to schedule a half-hour or hour with your attorney just to ask "do I understand this right?". Then you can ask your specific personal questions and "what ifs" that you can't ask here. This might be more important, actually, than seeking out an attorney when a situation actually comes up. If you understand the law, a problem is less likely to come up later.

Now, be good little boys and girls, keep "me" and "my site" out of the discussion, and maybe Santa won't leave you a lump of coal.

Webwork




msg:3533963
 6:29 pm on Dec 23, 2007 (gmt 0)

jt, I'm not opposed to the discussion of trademark issues.

What won't fly is the redundant "I've received a C&D letter, what should I do?" threads - or all the variations thereof - which cannot and will not lead to a more productive outcome than "Talk to a lawyer" because of WebmasterWorld's general prohibition (with rarest of exceptions) against talking about specific website names or, in this case, domain names.

That anti-identification policy exists for a variety of reasons, perhaps foremost to bar "outings", i.e., public targeting. In any anonymous forum one never really knows who is grinding an axe for whom, so even threads such as "I am the registrant of domain Example.com and I wonder if I have a problem" might actually be a pretense to out someone else. We're just not going there.

WebmasterWorld has a strong anti-identification policy for good reason and the strength of the policy is backed by a provision that outing someone else's website is one of the few offenses that will get a member banned.

When it comes to trademarks the reasons for not naming names goes beyond outings. Dealing with specific legal issues in public forum s is just plain stupid. Loose lips sink ships. Anything you say can and will be held against you in a court of law. Words chosen in forums are seldom chosen with deliberation or consideration of their legal consequences. Yet, when it comes to potential legal matters, it's always better to choose words circumspectly than it is to labor to "explain away" poorly chosen ones in a subsequent legal action.

If people insist on acting ill-advisedly that's an option, but not an option exercisable here. If laboring to protect people from themselves serves to label me as a bully or paternalistic to some I can live with that more readily than I can live with facilitating someone shooting themselves in the foot - or having to constantly monitor "Are they going too far?".

Also, WebmasterWorld TOS has provisions dealing with giving legal advice, too, that preceeded the similar provisions in the Domain Forum Charter.

We can talk general issues of trademark law all day. We can discuss WIPO or NAF decisions. We're just not going to play host to any effort to address anyone's specific legal problems because - absent specific information - it's the same old, same old every time and that will never change unless and until the "we don't name names rule" changes. I don't foresee that rule change happening, nor would I urge a change.

Dialogue that is a bit more abstract, than concrete, can be a bit more challenging but a bit of a challenge can also serve to attract better minds, don't you agree jt? ;-P

gpmgroup




msg:3533967
 6:47 pm on Dec 23, 2007 (gmt 0)

I think even “talk to a lawyer” in itself can be bad advice.

Lawyers are human and as such some are more informed on domains names than others.

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