Domain name/trademark question

[Atia]

Hi, I'm new here after lurking for several weeks. I'm hard at work designing a site from scratch, either because I've got that Protestant work ethic that never lets you do anything the easy way or I'm secretly a masochist who loves eye strain*, I can't decide which. I'm looking forward to hearing the input when I get it up for critique.

I have a question that I may need to go to a lawyer for, but thought I'd start here. The domain name I want is available but I looked the name itself up at uspto.gov and it's trademarked. I'm surprised whoever owns the trademark hasn't snagged the domain name, which makes me wonder if I use the name for my site if the TM owner's going to come after me for infringement. Especially considering the owner is using it for something mainstream, and I'll be peddling that nasty, unwholesome sex stuff. *shudder*

Thanks for any input. Also, compliments to the regular posters here as I've seen lots of friendly, welcoming attitudes to newbies and good advice. Cheers!

*A great way to relieve eye & wrist strain I've found is to have a 12 week old puppy hanging out next to you on the couch. He needs to go outside to pee about once an hour so I'm forced to take a break I otherwise might not.

[Ledrak]

I think it really depends on what the trademark is of. You can't really trademark the name "soda".... but "coke" or "Pepsi" is a different story. So if the name is something that everybody uses and doesn't identify with one specific product/brand, then you could probably use the name without a problem.

[mynameisjim]

I'm no lawyer but it sounds like they could easily sue you if they had the means.

Didn't the courts just make a bunch of decisions against domain squatters who were doing this type of thing? I know that's not what you are doing, but I think some legal precedence has been set along those lines.

You could always be an ass and buy the domain, throw up some awful porn then contact the company and tell them you just found out they own the trademark and sell it to them for some quick cash. Don't do that though.

[pyratas]

You could always be an ass and buy the domain, throw up some awful porn then contact the company and tell them you just found out they own the trademark and sell it to them for some quick cash. Don't do that though.

Tell me the domain and I'll do it.

[SharkFace]

I got done by Google, it wasn't pleasent..

[phuckbunny]

This better be a good name.

There are many ways this could go into litigation without the TM owner owning the actual domain, though if he's in the 21st century he should be smart enough to spend $10USD a year to have a domain name on his baby, whatever it is.

Apart from infringement there's also what's called trademark dilution. I'm squatting on a couple of domains that bear a certain resemblance to some mainstream companies and haven't done anything with them until I get some more knowledge in this field.

Trademarking or patenting is a long process, again I'm surprised the guy didn't buy any domain names with this. Without knowing more details I can't really comment much.

I seem to recall that the Hun sued some guy in Tx over thehun.org or .net and won. But again, this is something that can only be decided judicially because "the Hun" isn't a registered TM although "the Hun's Yellow Pages" is.

[Hammer]

Like Phuckbunny said, we don't know enough details to be able to answer your question. For example, is the company that trademarked the name in the same business as you and is the name such that they would likely put an adult site on that domain?

For example, if your name was McDonald and you owned a pig farm called "McDonald's Farms" and you had registered "mcdonalds.com" before the restaurant did, regardless of the fact that they had a TM on the name, it's not likely they'd win a legal judgement against you. They'd have to buy the name from you.

Now, on the other hand, if your name wasn't McDonald but you owned a restaurant called "Old McDonalds Burgers" and registered the domain mcdonalds.com, I guarantee you that you'd lose a lawsuit quicker than I can eat a french fry.

[nolimits4]

wow tm is funny business


i always under impresion domain names were who registered it first had rights

this thread proves not

so even if you get a cool domain name first but company has tm the rights they can sue you

[pepperlegal]

There are a few moving parts here, as trademark law is ridiculously complex.

In general, if a party owns a trademark which constitutes a word or words, they would also have rights to the associated domain name.

If you were to registered that domain name, your rights and the risk of infringement depend upon how you use the website with that domain name. If you operate a business within the same "class" of goods or services as the trademark holder, you are likely infringing their mark.

If the mark is a "famous" mark, and that concept is a complex one, then you may be liable for trademark dilution even if you sell goods or services that are NOT within the same class as the trademark holders.

And even if those rules don't apply, if you register the domain name in bad faith, you could be liable under ICANN's Uniform Dispute Resolution Policies and be forced to transfer the domain back to the trademark holder.

Bottom line: retain a trademark lawyer to advise you. I've worked with a number of folks who ended up spending a LOT of money cleaning up a big mess because they didn't do their homework.

[sunfunbill]

But what about all the sites that have "Disney" in the name? There are thousands of sites that make money off Disney and have some type of domain with that word in it.

I myself own "Disneyinside" and hope to use that for a google adsense site. Are you saying that would be quickly slapped by Disney? If so why do they not do that to those thousands of others?

All those others DO use the words "this site is not affiliated with walt disney world in any way".

But that is not enough, I am sure. I just don't understand why they don't do anything about them. Then again, they all promote them, giving them free advertising, so maybe that's why.

[pepperlegal]

Companies like Disney actually do go after many of these types of sites, but do to the sheer number of them, they will go after the ones Disney believes harms its business interests the most.

And no, the "no affiliation" disclaimer won't help ya!

[Atia]

Originally posted by pepperlegal
Bottom line: retain a trademark lawyer to advise you.

Yeah, that's pretty much what I figured. A quick google search looks like there's at least one trademark lawyer in my area who gives free consultations so it might be worth the investment of time before I ditch this name as too much of a hassle and go with my second choice. Plus their website says they're aggressive which has always turned me on, so I might get a pair of wet panties to go with my sound legal advice.

And speaking of wet panties, nice avatar.