You've seen this URL at the domain registrar that is similar to a national brand and you think, "I've got to have that! I'll put up a site about how much I love their product!"
So, you register it. You start talking to your buddy about it and he says, "You can't register that domain name. It's got a trademark in it. You're in big trouble, man." So, who's right?
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| Yum! You know what this needs... Bacon! |
You want to put up a forum that talks about McDonald's. You're planning to put some links to your site, but it'll be mostly to talk about McDonald's.
If you asked me for advice, this is the conversation that we'd have...
In and of themselves, the URLs including the McDonald's name violate McDonald's trademark. If McDonald's wants them back, you can be subject to not only transfer of the domain, but also statutory and other damages for trademark infringement.
First, we should look at if you're going to lose the name in a domain name challenge. ICANN ("Internet Corporation for Assigned Names and Numbers"), among other responsibilities, oversees the administration of internet domain names. ICANN has created the Uniform Dispute Resolution Policy ("UDRP") to handle internet name disputes. Those disputes are brought before the World Intellectual Property Organization ("WIPO").
In order for McDonald's to win at WIPO, McDonald's would have to prove that they own the trademark "McDonald's", which is indisputable and they're famous, which gives them even more protection. So how can you defend against that presumption?
The only defense to using a trademarked word is spelled out by the UDRP, which states in paragraph 4(c) that a respondent may have rights or legitimate interests in a domain name if:
"(i) before notice of the dispute over the domain name, the respondent has made "use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services";
(ii) the respondent has been "commonly known by the domain name"; or
(iii) the respondent is "making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.""
In the situation above, you would need to defend under subsection (iii). That means that you cannot make ANY money off of the site at all, no AdSense, no banner ads, NOTHING. I'm not sure that this was your plan.
So, you'd lose the name. Big deal.
But that's not necessarily the end of your problems.
Now that you've lost the name, we have to look at trademark law.
The thing that is most important is whether your usage falls within a fair use exception to the Lanham Act (which is the US law governing trademarks). Generally, there is a nominative fair use defense that is used to overcome the presumption that you've infringed the trademark.
The nominative use defense requires that:
1. There is no readily identifiable way to discuss the product or service without mentioning the trademark (e.g., You're not required to refer to McDonalds as "the fast food chain with the golden arches as its logo");
2. That you're using the minimum amount of the mark necessary to identify the service or product (i.e., the name, but not the logo or font); and
3. That you do not suggest affiliation or sponsorship in any way by the trademark holder.
You need to stay within the bounds of both the UDRP and the Lanham Act to avoid problems.
Short answer? Unless you're really careful, it's a bad idea. My advice would be to stay away from other people's trademarked names when you're registering domain names. It's the easiest and safest way to avoid big headaches later.
Don't say I didn't warn you. Better safe than sorry....
Visit us at www.ebusinesslawgroup.com anytime to discuss your intellectual property issues.
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