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Help! I'm being attacked for trademark violation!

what are the rules on this?

     
5:46 pm on Mar 13, 2004 (gmt 0)

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I hope someone can help me with this. I can't really afford a lawyer at this time.

I registered a domain name that has a registered trademark included in the domain itself.

for example: the trademark is "cool widget"

my site is: www.cool-widget-stuff.com

I added a dash in between the words, and also another noun at the end.

Can this be considered trademark violation?

I don't use the actual "cool widget" name anywhere on my site. I am however selling a similar product through affiliate marketing.

Do I have anything to worry about with this? Anyone have similar experiences that can help me out?

Thanks a ton! If you sticky me, I'll tell you the actual trademark and domain if you are interested.

6:16 pm on Mar 13, 2004 (gmt 0)

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Can this be considered trademark violation?

Yes, this is a trademark violation. It may not be worth in spending day and nights in the promotion of a domain that you may lose one day.
6:34 pm on Mar 13, 2004 (gmt 0)

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You should get some real legal advice, but in general companies can be quite sticky about their trademark being used in domain names. One factor that might be relevant is the intent and content of your site. Because identical or similar trademarks are used by different firms in different industries, no one trademark owner can claim absolute rights (although the uniqueness of the trademark comes into play, too). But if you are selling (or linking to) similar or competing products, it's hard to imagine that you could successfully argue the position that your domain name isn't intentional infringement.

You can do a search of the web to see how litigious the firm has been - if you find a bunch of cases where they have sued other infringers, I'd suggest you get rid of this liability in a hurry...

6:38 pm on Mar 13, 2004 (gmt 0)

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so I'm assuming that the dashes don't make a difference either way.

thank you for your replies by the way.

all indications so far show that they don't really know what they are doing.

What if I went out and trademarked my domain? Or trademarked: "cool-widget" with the dash included.

[edited by: Justinnerd at 6:39 pm (utc) on Mar. 13, 2004]

6:38 pm on Mar 13, 2004 (gmt 0)

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If you can't afford a lawyer, the domain isn't worth fighting for. I'd get rid of it as quickly as possible. As it is, from your description, you don't have much of a case.
10:41 pm on Mar 13, 2004 (gmt 0)

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A dash won't convice a judge... Do you think it would work with "Coca-Cola"? ;)
12:14 am on Mar 14, 2004 (gmt 0)

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It is possible to use a trademark to refer to goods: the trademark owner doesn't have absolute monopoly over use of the mark as it would reduce overall competition. For example, use of "www.fuzzybarsfanclub.com" where the site indicated that was unofficial fan club may be acceptable. Other case is for the resell of second hand goods or spare parts, e.g. "www.used-sun-workstations.com".

However, in your case, you are definitely infringing the trademark: you're using the trademark to attract customers to your site so that you can sell a competitive product. This is a fairly blatant abuse of the fundamental right of a trademark to identify the source of goods. Litigation against you would be easy and profitable.

1:21 am on Mar 14, 2004 (gmt 0)

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well crap! ;)

looks like i need to figure out a similar site name that will still achieve the same purpose and not use the two trademarked words in succession or something.

Thanks everyone!

1:22 am on Mar 14, 2004 (gmt 0)

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Harvard Law School runs the Chilling Effects site as a public information service, and there's an entire section on domain names

[chillingeffects.org...]

From one of the points made on the FAQ page, it looks like there might be enough grounds for the company to get ICANN to take action on the domain registration altogether.

Justin, the key is to use something that's not likely to cause any confusion.

1:31 am on Mar 14, 2004 (gmt 0)

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Harvard Law School (specifically the Berkman Center) only maintains that section of chillingeffects.

The eff and many other law schools contribute.

For the current case, you should consult a lawyer or probably just give-in. It's a lot easier to think up new domain names than fret over being sued.

To the point about using a dash with coca-cola. As I understand different companies have different strengths of claim on their trademark. Once it is registered it is pretty much golden, you also get great strength from longevity of use, but new trademarks get almost no protection.

1:37 am on Mar 14, 2004 (gmt 0)

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"looks like i need to figure out a similar site name that will still achieve the same purpose and not use the two trademarked words in succession or something"

This may still be a problem if there is an element of confusion. Recently, Lonely Planet publications won the return of domain names that involved mispellings of "lonelyplanet.com" (which redirected to a site offering discount airfares ...). In fact, I read the judgement: and it made the point that there was no other reason for such a site to exist other than to play on the original trademark.

Finding some way to reorder the words may not be good enough. If someone searches google for "mercedes benz", and comes up against your site "www.benz-and-mercedes.com", the fact still remains that the purpose of your site is to springboard off the original trademark.

1:54 am on Mar 14, 2004 (gmt 0)

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I actually just created a new domain that still has the 2 words in the domain but seperated by 2 other words.

I'm trying to get my keywords into my domain name for the purpose of ranking on a very niche product. And I actually think in this case that I won't get in trouble, because the product I am selling is in many ways considered a standard industry name for the product.

but of course, some very smart person decided to trademark the name.

I actually read an article on this issue dealing with this same product. The article claimed that since the product had a large article written about it in the New York Times under the same name before the name was trademarked, that it could be used as a public phrase in any reference to a similar product. Could this be true?

thanks again for all your help!

2:00 am on Mar 14, 2004 (gmt 0)

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"I'm trying to get my keywords into my domain name for the purpose of ranking on a very niche product"

The point is not whether they are your keywords or not, it's whether they are trademarks owned by another party for similar or identical goods used in the course of trade.

"I actually think in this case that I won't get in trouble, because the product I am selling is in many ways considered a standard industry name for the product."

That's a seperate issue: you're suggesting that the trademark owned by the other party is likely to be invalid because (a) it wasn't distinctive enough at the time of registration, or (b) it has diluted since. Be careful to separate the (a) right to use the trademark in the first place, and (b) whether the trademark is actually valid.

"but of course, some very smart person decided to trademark the name."

This not allowed. Even if the trademark registration succeeded, it could be opposed and cancelled, or would not be enforceable (i.e. a counterclaim for invalidity). However, the fact that the trademark registration was succesful is prima facie in favour of the owner as the burden of proof in infringement action will be upon you.

"I actually read an article on this issue dealing with this same product. The article claimed that since the product had a large article written about it in the New York Times under the same name before the name was trademarked, that it could be used as a public phrase in any reference to a similar product. Could this be true?"

Possibly. It's a matter of evidence and something to argue out with the USPTO or against a judge in a court of law. Sounds a bit hairy to me.

Last week I was part of a lecture given by a trademark person from a large fortune 500 company: they described how they subscribe to various services that give them regular reports on newly registered domain names and content of sites using said domains. In one case, small competitor was about to launch a new product that was confusingly similar to their trademark and she described how they pursued action on the issue. Interesting to have heard it from the mounth of someone who does it on a daily basis.

3:48 am on Mar 14, 2004 (gmt 0)

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Very interesting, mgream. I was just wondering if well-funded firms monitored domain registrations, and your comments indicate that some do exactly that. My concern for justinnerd is that he may already be on the radar...

Justinnerd, is there any non-trademarked slang term that might provide name recognition without the hassles?

4:03 am on Mar 14, 2004 (gmt 0)

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Trying to fight big companies with lawyers is next to impossible. It reminds me of the music industry. I would drop that name in a hurry.
6:13 am on Mar 14, 2004 (gmt 0)

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I have dropped the name due to the advice I have recieved on this thread. Thanks guys!

Just to let you know, the company is extremely small, and judging by the correspondence I have received from them, i'm not too concerned about any litigation or further action on their part.

To be honest, they just seem to be bullying me around, and don't seem to be sure of themselves.

8:09 pm on Mar 14, 2004 (gmt 0)

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Could you not also sell their products? Then your use of the name would be legitimate.
11:57 pm on Mar 14, 2004 (gmt 0)

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Welcome to WebmasterWorld, free! Actually, even selling a firm's products doesn't automatically enable you to use their trademarks. We work with several national vendors who place strict limits on how their partners can market the brands. Domain names containing the trademark are prohibited. Logo use is restricted to a "Widgetco Authorised Reseller" style as opposed to the plain Widgetco logo. The list goes on - but every firm is different, and some may not care about domain names. Read the fine print...
12:07 am on Mar 15, 2004 (gmt 0)

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> she described how they pursued action on the issue.

On the one hand, awww, big co. picking on the small guy. On the other, a failure to protect trademarks and servicemarks can see the same slip over into such common usage that all protection can be lost.

12:10 am on Mar 15, 2004 (gmt 0)

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...and a company I deal with have strict use on their name too. Logos must be a minimum of 5mm high. They have destroyed some companies stock (by fire! and printed photos of it in trade magazines!) in the past when they are selling competitors brands that infringe on something as simple as the same shape and size box!
7:46 pm on Mar 15, 2004 (gmt 0)

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The indication from the person (who works enforcing UK rights as part of a global company of which we'd all know if I disclosed it), is that they're so overworked that can't chase everything: they have to make judgements about whether time and effort is worth expending - just like the rest of us. In fact, they actually state that they have a hard time convincing management to pursue legal action: management typically wants to prevent anything like this, and only really takes the hard road when there's no other way out of it. I assume not all companies are like this, though.
 

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