Registering a domain name with corporate links

April 12, 2005 3:33 AM

I want to register a domain name that just happens to be the same as the name of a flavour of candy made by a major US company. Should I be worried about future legal issues?

For obfuscation's sake let's call the domain name I want berryblast.net (i.e. that's not really it). The major US company already owns berryblast.com. On their candy packaging, there is no little "R" or "TM" or anything next to the words "Berry Blast," nor can I find any legal info regarding this term on their website.

I am planning to use this domain name for a personal website: portfolio for my web design work, photos, possible future blog, etc. My thinking is that since I am not going to be producing candy or anything remotely related to this company's product, I should be safe from any sort of trademark infringement. Or am I walking into a trap?

posted by good in a vacuum to law & government (15 comments total)

I work for a major candy company....and I know how much effort and money is put into tracking down and stopping these sort of things...I know nothing about the process apart from the resources in the team that do that...

My advice on the surface would be to try and find something else to register...IANAL of course.
posted by mattr at 4:25 AM on April 12, 2005

I'd probably avoid purchasing a domain name identical to a famous brand name. It isn't necessarily a violation of their trademark, but I think you are definitely asking for trouble.

Start by checking if the candy name is a registered U.S. trademark. You can search for U.S. trademarks using the USPTO Trademark Electronic Search System. If the candy name is indeed a registered trademark, and since you are considering registering the domain under the .net top-level-domain (TLD), then sometime in the future they might simply attempt to take the domain name away from you using a UDRP action, rather than taking you to court. I recommend you read the UDRP FAQ at the Chilling Effects Clearinghouse. Of course, if they do have a registered trademark and they think you've been profiting off of their trademark they might take you to court rather than simply taking the domain from you with a UDRP action.

On the other hand, perhaps I have misunderstood your question. Your profile doesn't mention what country you live in, but if you don't live in the U.S, the candy name is indeed a registered U.S. trademark but not registered in your home country, you still really want to use that name for a domain name, and your home country TLD policy doesn't give special privileges to famous brands that aren't locally registered trademarks, then you can probably can safely register the domain under your home country's TLD.
posted by RichardP at 4:35 AM on April 12, 2005

I've passingly kept an eye on this issue over the years, so I don't know much, but my observations would be:
1. You are not at risk of infringing on a trademark. (Or at low risk)
2. This means nothing when it comes to whether you'll get to keep your domain if the company decides they want it.
3. The rules governing whether you get your registration taken off you are grey, and are sometimes even ignored completely in occaisionally stunning decisions that seem to systematically favour the company.
4. The system is still evolving. People dissatified with the insanity of some WIPO judgements have gone to court, recently with some success. It is unclear what the ramifications of this will be to future cases.
5. As it stands, things are not in your favour. This might change.
6. A textbook trick to get a domain from a smaller party is to offer to buy it from them. If smaller party does anything except a flat refusal, their response is cited as proof of intent to profit off the trademark, smaller party is declaired a cybersquatter and loses the domain.

You really should read how prior cases turned out and why.
Funnily enough WIPO just published a free online casebook of exactly this.
posted by -harlequin- at 4:43 AM on April 12, 2005

A French court ruled recently in favour of the US company Kraft Foods about the use of the "Milka" chocolate brand as a domain name by a seamstress who was actually named Milka. Sad story, and definitely a touchy subject.
posted by elgilito at 4:51 AM on April 12, 2005

You may be okay, you may not. However the big question here is "how much time, effort and a pain in the backside would it be if that domain was pulled away from you by the courts?".

For me, all my friends have my email address, all online shops, banks, mailing lists, websites and many many more. To suddenly lose that would mean hours of chasing every occurance and getting it changed and, even then, I may have missed some.

Personally, I'd go with something else - but you may be willing to take a risk.
posted by ralawrence at 5:44 AM on April 12, 2005

To a great extent, it depends on what you want to do with it. If you're looking to make money, be careful. If you're looking to do *anything* actually related to the brand itself, you're almost certainly going to lose the domain, especially if there is any way that you might be bringing in revenue through the site.

The UDRP requires that you registered the domain (or are using it) for a valid reason (for instance, if you're grabbing coke.tld, your name is bob coke); that you are not using it in bad faith (seeking to get visitors by using 'coke' or doing anything that might make people think of coke); and that you get the people who sit on the WIPO panel to believe you.

I think the fact that you (i) know it's a well-known trademark; (ii) have no valid claim on that trademark; and (iii) are already asking whether it's allowed or not on a public forum means that when it came to the crunch, you'd probably lose it.
posted by humuhumu at 6:35 AM on April 12, 2005

I asked a similar question a while back. No fallout so far, but then I haven't done anything with the domain. I do have a similarly-named blog, though.
posted by MrMoonPie at 7:28 AM on April 12, 2005

Did you get the name from the candy bar, or is it something you had separate inspiration for? If it's the former, you'd have very little chance if the company complained. If it's the latter, it'd still be a lot of hassle, but there's a much better chance of you keeping it.

(Also, if you do buy it, never ever offer to sell it to the company, even at a comedy price, because that will immediately mark you as a cybersquatter)
posted by cillit bang at 7:34 AM on April 12, 2005

I used to be in a band named Liquid Plumber. We owned the domain liquidplumber.com. Note that this is a completely different spelling from the product Liquid PLUMR. We went unnoticed for quite a while, until we finally got a letter threatening legal action. We ended up just putting a notice on our main page, saying we weren't affiliated with the drain cleaning product, with a link to their site. A year went by... and finally we heard from them again. They were all ready to go to court over it. We talked to a lot of people, got some free legal advice... Pretty much everyone agreed they just didn't have a case. It just wasn't worth the time or money for us to fight them in court though, so we finally gave it up. They owned the domain for a while, but now it belongs to some squatter offering it for sale. Seems they didn't want to use it themselves, they just wanted to be sure no one else was using it.

Unless you don't mind going to court over it and fighting them for it, I'd think of something else.
posted by robotspacer at 7:56 AM on April 12, 2005

You haven't made a case for why the name you've picked is important to you. Why not (to follow your hypothetical) berryblaster.net or berriesblast.net or berrygoblast.net or something else that doesn't raise the issues you mentioned? If there aren't very significant advantages to the name you've come up with (advantages lacking anything that is fairly close), then why take the risk of having a corporation come down on you?
posted by WestCoaster at 8:35 AM on April 12, 2005

If it's a very specific name that is only associated with 1 product, like Turkey & Gravy soda, it would be difficult to hold onto it if challenged. If it's a name that is less specific, like green apple, you could make a better case for keeping it. In any case, I'm wicked curious about what it is, and I think you should register the name.
posted by theora55 at 9:12 AM on April 12, 2005

It just wasn't worth the time or money for us to fight them in court though, so we finally gave it up.

A long time ago now, I ran a computer webzine called Spire Magazine. Our logo was just the lower-case word "spire" in Arial, which we thought would be fine. We went for years, actually, albeit with little success, starting in 1994 and finishing in about '98. (We were very young.)

Anyway, it was only a matter of time before the Spire Corporation, a giant advanced technology company with a very similar logo, decided they'd like to sue us for using their corporate image. Not realising they were threatening a bunch of headstrong 16-year-olds, they sent us a couple of cease-and-desist letters.

We held our ground, knocking back cocky but businesslike letters for ages. The crux of the matter, we felt, was this: they made really boring electrical equipment. We wrote about computer games. There was no overlap and no way we were taking profit from them.

And, inded, they could not take it from us. Eventually they simply sighed and went away. Your mileage may, of course, vary.
posted by bwerdmuller at 9:44 AM on April 12, 2005

Well in our case they had legal documents drawn up, ready to file with the court. They may have been bluffing, but it seemed pretty certain we'd be going to court if we didn't give in. Our case was also a little bit shakier... We would have had a hard time proving our name was in no way influenced by theirs. Not to mention I'm sure the Clorox company has a lot more money to blow harassing teenagers than this Spire Corporation! I'll always have a little bit of regret for giving in, but oh well. Good to hear you had better luck fighting The Man.
posted by robotspacer at 1:44 PM on April 12, 2005

Wow, thanks for all your input everyone. I think I'll probably follow the general consensus and pick a different domain name. I'd rather not have to go through all the legal hassle down the road, and, judging by the poor French woman in elgilito's link, I don't think I'd stand a chance (and she had a much better case than I do).

To answer some questions: yes, I was inspired by the candy, I didn't come up with it on my own. I used it for a while as my name in online games (Day of Defeat, Counter-Strike, etc.), and I've just always liked it. I've been wanting to get my own domain name for awhile, and when I saw that the .org and .ca variants (I'm Canadian) were available, I thought I'd maybe go for it. Ah well, I'll have to keep thinking I guess.
posted by good in a vacuum at 3:54 PM on April 12, 2005

You could always contact the company, explain the situation and ask for their blessing.
posted by krisjohn at 6:47 PM on April 12, 2005