Can I get a domain name similar to an existing one?

December 19, 2003 7:04 AM

I'd like to get my own domain. I assume I'd pretty quickly get a cease-and-desist letter from these guys, and that I really wouldn't have a leg to stand on, legally, even though my site contents have nothing to do with their flagship product. Are my assumptions well founded?
posted by MrMoonPie to computers & internet (9 comments total)

They have a trademark. And by registering that domain, which is bound to turn up when people search for their trademark, you'd be creating confusion in the marketplace. Seems like a slam dunk for them.

But........ That doesn't mean you shouldn't do it. It's cheap and chances are they won't care. If you look at their contact info it doesn't look like the sort of place that has a team of lawyers scouring the Internet looking for brand dilution.

Be sure to place a disclaimer in some obvious place saying, "This website is not affiliated with Chattanooga Bakery, or their fine MoonPie products in anyway."
posted by y6y6y6 at 7:26 AM on December 19, 2003

IANAL, but don't trademarks exist within certain categories? As long as you're not trying to sell MrMoonPie's Delicious Marshmallow Chocolate Covered Sandwiches (or probably any other type of food product), you should be ok.

Are you just planning on using the site as a personal site?
posted by bshort at 7:29 AM on December 19, 2003

To get a sense of the types of domains that are contested by corporations, and the possible outcomes, take a look at the voluminous WIPO case files.
posted by staggernation at 7:45 AM on December 19, 2003

"or their fine MoonPie products in any way."

Don't let 'em getcha on a technicality!
posted by soyjoy at 8:26 AM on December 19, 2003

Thanks guys! Yes, it'd just be personal stuff, pictures, my blog (which, by the way, already bears the MrMoonPie brand), things like that. I'm not a particular fan of MoonPies--it's just something I came up with years ago when thinking up an IM screen name.
posted by MrMoonPie at 8:48 AM on December 19, 2003

Be sure to place a disclaimer in some obvious place saying, "This website is not affiliated with Chattanooga Bakery, or their fine MoonPie products in anyway."

Despite common opinion, disclaimers are actually counterproductive as a defense in a domain name dispute claim. The fact that one has disclaimed association to a registered and well-known trademark acknowledges that there might be a likelihood of confusion between the registered trademark and the domain name.

That said, whether or not you receive a cease and desist letter depends on how aggressive the attorney's for the MoonPie company are in defending its trademark.
posted by lola at 10:59 AM on December 19, 2003

The fact that one has disclaimed association to a registered and well-known trademark acknowledges that there might be a likelihood of confusion between the registered trademark and the domain name.

As does this thread, unfortunately.
posted by staggernation at 11:22 AM on December 19, 2003

Here's a good example of how testy corporations can get about something that comes near their trademark...and how expensive it can be.
posted by dejah420 at 2:36 PM on December 19, 2003

IANAL, but don't trademarks exist within certain categories? As long as you're not trying to sell MrMoonPie's Delicious Marshmallow Chocolate Covered Sandwiches (or probably any other type of food product), you should be ok.

Technically, yes, but that doesn't mean someone won't sue you or threaten to sue.

I used to have a domain name that was the same as a furniture store. I didn't know this, because said furniture store only does (or did at the time, anyway) business in 6 states, in the Midwest. I am in the Pacific Northwest. I have never sold furniture. In addition, their trademark wasn't registered until after I had had the domain for a couple of years, though apparently the company existed for some time before that.

So then they decided they wanted my .com domain, and had Network Solutions take it away. So then I ended up suing both them, and Netsol.

It did end up costing me substantial money and stress. (More stress than money, because I was lucky to have an old friend who was a lawyer, and he took the case. But I did still have to pay him something. I am really grateful for his help.) Both suits were eventually settled, and I'm pretty happy with how it all turned out -- but I still think that I had a legitimate right to the name, as I could in no way be confused with the furniture company, and their trademark only applied to specific areas that I had nothing to do with. (There are exceptions for so-called "famous trademarks" like McDonald's and Disney, but this trademark isn't one of those.)

So the thing is, you have to ask yourself whether you are willing to deal with losing your domain name later if the snack company threatens you. I found that I had a strong emotional attachment to my domain -- I had been using it as part of my identity for so long that it wasn't just an address anymore, it was more than that. So the hardest part was dealing with the possibility that someone could just take that away. In the settlement I ended up being able to use the .org variant so that was acceptable to me -- the .com part wasn't so much the issue.

But then again, the fact that my .com address had been printed in books and on CD inserts by then meant that I also lost a lot of e-mail when I lost the domain without warning, and that's not something that's easy to deal with, either. Just having to change an address that has been used for a lot of projects is a major, major hassle.

And then there's the money, the having to find legal help, the stress of not knowing what is going to happen or how you are going to pay for it. It's just not fun. So you have to weigh all of this together when you decide to take this risk. (I got my .com domain in 1994. So I didn't even know about these risks. No one did, then.)

It's possible your domain might be fine, but do consider these things. If you aren't getting a .com domain, you are probably more likely to get away with it, as companies seem to really want that .com, still.

... disclaimers are actually counterproductive as a defense in a domain name dispute claim. The fact that one has disclaimed association to a registered and well-known trademark acknowledges that there might be a likelihood of confusion between the registered trademark and the domain name.

I second this, though IANAL of course. This was the advice from my lawyer, though.
posted by litlnemo at 5:47 PM on December 19, 2003