What are the legal issues around using a company's trademark in a domain name?

July 31, 2005 8:00 PM

What are the legal issues around using a company's trademark in a domain name?

For instance, let's say I wanted to create a site that reported on items for sale on BigStore.com. Is there any problem with using BigStoreReport.com as my domain. What if I want to use affiliate links to BigStore.com?

posted by dripdripdrop to law & government (8 comments total)

If you carry links to "BigStore.com," it's pretty much guaranteed that "Big Store" will be able to shut you down. The whole point of trademarks is to uniquely identify a company. It would be trivially easy for a lawyer to show that "BigStoreReport.com" dilutes the trademark and creates confusion for consumers, since linking to the "parent" site would tend to make "BigStoreReport" look like an official "BigStore" site. So, be prepared to kiss "BigStoreReport.com" goodbye.

Now, "BigStoreSucks.com" may be OK, since "BigStoreSucks" is less likely to be perceived as an official site of "BigStore." But companies can and have acquired the rights to "*sucks" sites.
posted by SPrintF at 8:26 PM on July 31, 2005

Consider that trademark holders are required to actively enforce their trademarks -- which means that even if they aren't likely to win, the trademark holder has an interest in suing you nevertheless. So you must not only conceive a scenario supported by legal precedent, you must also be prepared to bear the legal costs of defending your actions.

In other words: Use a different name.
posted by cribcage at 8:44 PM on July 31, 2005

iPodLounge seems to be doing OK. I think you have leeway if your site is beneficial to the trademark (although corporations can be cruel even to fans).
posted by themadjuggler at 10:10 PM on July 31, 2005

If your site is in no way connected or related to the products or services of the company whose mark you are using, then you're probably fine.

If your site is completely non-profit and there's not even a conceivable way that you could make money from it (including advertising), then you're probably fine.

If your site is clearly intended for criticism or public comment about the mark holder and in no way could be confused as an official site (such as paypalsucks.com or walmartsucks.com), then you're probably fine.

If your site could be construed in any form as confusing the public into thinking you were somehow associated with the company, or that your product was, then you will be sued and they will win.

If your site did anything to lower the value of the mark (and didn't fall under any of the above) then you will be sued and they will win.

If your site is clearly related to the product or service of the company, but does nothing to try to fool customers (contains a disclaimer, has no similar graphics, slogans, layout, etc.) then I think you're in a gray area. If the company views your site as providing a useful service then they'd probably leave you alone. But I think that they could still sue you and win if they wanted to. It sounds to me like you're in this boat.

IANAL
posted by Rhomboid at 1:04 AM on August 1, 2005

I recommend contacting a trademark professional to clear up the many misconceptions and inaccuracies in the above responses and to give you an accurate opinion regarding your original question.
posted by anathema at 3:35 AM on August 1, 2005

FWIW, iPodLounge has recently changed its name to iLounge.
posted by matildaben at 7:00 AM on August 1, 2005

While Rhomboid's remarks are probably correct as far as what you can and can't legally get away with, consider that being on the right side of the law doesn't mean you won't get sued - it just means that you (may) win. As a specific example, Rhomboid sites paypalsucks.com and walmartsucks.com. I used to work for a company that has a "sucks.com" website directed against it, and while they eventually lost, it didn't stop them from suing the owners of the site. While I have no idea what it cost, in general one should consider that thousands or maybe tens of thousands of dollars in legal fees for a large corporation is nothing, but will most likely be a HUGE deal for you. A lot of times, it's not about winning - they will figure that you lack the resources to fight off their suit and will be forced to give in, even if you are, technically speaking, in the right.

So unless you have more money for lawyers than the trademark owner, I'd listen to cribcage: pick a different name.
posted by robhuddles at 7:37 AM on August 1, 2005

Check out the World Intellectual Property Organization (WIPO) - it's the forum where most of these disputes are resolved (via arbitration).

In general, the original trademark holder will have to show that their trademark has "acquired the status of a famous mark," and that the unauthorized domain name is confusingly similar to that mark. Factors to be taken into account with respect to the latter include evidence of actual confusion, the possibility the consumers will think that the mark is "used, approved, or permitted" by the trademark holder, the sophistication of the complaining company's consumers and the sophistication of the consumers that patronize the allegedly violative web site, whether the complaining company "routinely uses its mark with other generic words in domain names for websites offering services related" to that company (such as BigStoreEmployment.com to list available jobs), whether the complaining company owns and operates all legitimate web sites incorporating the mark, under which classifications the complaining company has registered its word mark with a patent and trademark registry (such as the U.S. Patent & Trademark Office). Additionally, WIPO panels also consider whether the unauthorized domain name holder has its own legitimate interests in the domain name (including duration of use, nominative application of the term, scope of goods/services provided, whether unauthorized domain name holder is using the name "in connection with a bona fide offering of goods or services," competition with trademark holder's site), dilutive effects, and whether the domain name holder registered or used the site name in bad faith (intent to disrupt the mark-owning company's traffic, cybersquatting - intent to transfer name for profit, intent to attract consumers for own purposes by confusing, lack of statement disclaiming association with mark-owning company, etc).

Again, you'll find a lot more in WIPO than you would in making your way through domestic court cases, so I recommend starting there.
posted by roundrock at 7:49 AM on August 1, 2005