Don't Use a Trademark in Your Domain Name
Disclaimer: I am not a lawyer. This is not legal advice. I have zero legal training. Any questions regarding infringement should be directed towards a trademark attorney.
This morning a WA member was asking for comments regarding his website and how he can improve it. He posted the domain name in chat and the first thing I noticed was that he had used the word "iPhone" in his domain name. The word "iPhone" is a registered trademark owned by Apple.
Using registered trademarks in domain names is NOT OKAY.
In fact, it's more than just not okay. It's trademark infringement and it can land you in a world of hurt.
When you register a domain name, you click on a box that says that you agree to the Uniform Domain Name Dispute Resolution Policy (UDRP) and that the domain name being registered DOES NOT infringe upon a third party's rights. This includes trademarks.
You are committing trademark infringement when using another's registered trademark in a domain or the domain name is likely to cause confusion in others about the affiliate of the owner's trademark and your site.
Example: if you own the domain name iphonecases.com, you are implying affiliation with Apple and consumers may be confused that the site iphonecases.com is owned and operated by Apple when it is not.
The trademark owner must prove you're using the domain name in "bad faith" and this includes:
- the domain was registered primarily for the purpose of selling it to the complainant or a competitor for more than the documented out-of-pocket expenses related to the name; or
- the domain was registered in order to prevent the mark owner from using it, provided that the registrant has engaged in a pattern of such registration; or
- the domain was registered primarily to disrupt the business of a competitor; or
- by using the domain, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.
The trademark owner can file a complaint with ICANN UDRP and can force you to shut down your site and transfer the domain name to the trademark owner. This means, you can lose weeks, or months, or even years of hard work if you commit trademark infringement.
It gets even trickier if you try and sell the domain name for a profit as you can be held liable for cyber squatting and face fines of up to $100,000 per domain name.
The best course of action here is to AVOID using someone else's registered trademark in a domain name.
iphonecases.com is NOT OKAY.
However an article titled "iPhone 5 Case Reviews" at the domain name newphonecases.com is OKAY.
And now for the most common question...
If this is such a big deal, how come I see all kinds of domain names using the word iPhone or other company's trademarks?
Look, my neighbor cheats on his taxes, but that doesn't make it okay for me to cheat on them as well. Some people commit trademark infringement because they don't know they're doing it or because they don't care, but that doesn't make the infringement any less infringement-y.
Using a trademark in a domain name can cause you to lose the domain name IF the owner of the trademark decides to act.
Again, I'm not a lawyer. Consult one if you have further questions.
Additional Reading
Online Trademark Search
Apple Seizes 16 Domain Names From A Guy In One Fell Swoop
Everything You’ve Ever Wanted to Know About UDRP
Domain Names,Trademarks, and Infringement
What to Expect When You're Expecting to Be Sued for Trademark Infringement
Trademark and Domain Name Basics
Recent Comments
31
Well Done, Great Blog Post! I now avoid trademarks in my domains at all costs....
But.. if the Traffic is enough .. I have a separate registrar, that I use to buy domains with Trademarks, that I use for more of a Churn and Burn Style (I even have one with iPhone in it for the past 2 years... how ironic lol) and apple has yet to do anything.... they could.... but I look at it like I'm giving them FREE advertising since i'm sending people to Amazon to buy Products for the Product Apple is selling.....
These Sites are mostly Time based (in 6 months to 1 year the site will be worthless) and I use more of an Aggressive Link building Strategy since I don't mind if these sites get sand boxed etc.. (Never had 1 get sand-boxed before so I doubt its "TOO" aggressive lol)
But when It comes to a Long Term Site, I'm with ya .... Never , ever put a TM name in a website you intend to keep for Along while .... best bet is to use a Brand-able domain and than "Become" an authority in the Niche and it becomes easier to the RE-Target Adwords feature (Where you only send ads Only to people who visited you site though specific keywords)
- Cheers
Not sure if you know the answer to this but if you own a Domain name and a company comes along and registers the same name as a Trademark Name - does this give them the right to your domain even though you purchased the name concept before they registered the name as a Trademark - Colin
Again, this will depend on jurisdiction. In the UK, you would be fine because you would be able to demonstrate prior usage. Barbican Cars and Barbican Art Supplies were able to successfully argue this when the City of London trademarked "Barbican", which is the name of a tube stop!
Sound advice Steve. I made the mistake of buying a Levi Jeans domain last year. Fortunately I never set it up as I quickly realised the mistake I had made!
Tough, but very sound information. One place you can check trademarks: http://www.uspto.gov/trademarks/index.jsp
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Great post, Steve. I got burned on this with out understanding what I had done.