Trademarked Domain Names – How to Minimise the Risks

by Tom McEwin on 2 November, 2010

Have you ever found a great keyword phrase that happens to include a registered trademark?  Perhaps you’ve done a quick domain check and the ideal domain name for this phrase is available.  In this post I look at some of the risks in registering a trademarked domain name and what we can do to reduce them.

What is a Trademarked Domain Name?

Trademarked Domain NamesWhen I refer to a ‘trademarked domain name‘ I mean a domain name that contains a word that has been trademarked, as either part or all of the domain name.  For example if we find that the word ‘facebook’ is a registered trademark (which it is), then the following domain names would all be trademarked domain names under my definition:

  • facebook.com (the official facebook)
  • facebook.org
  • facebooksecrets.biz
  • facebookaddicts.org

To find out if a particular word is trademarked, you’ll need to search the particular trademark registers in each country:

  • To search the US Patent and Trademark Office, click here
  • To search the UK Intellectual Property Office, click here
  • To search IP Australia, click here

What are the Risks in Using a Trademarked Domain Name?

Using a trademarked domain name risks a number of possible unpleasant consequences if done incorrectly, including:

  • loss of the domain (especially if just cybersquatting);
  • loss of any work put in to building a site on that domain; and
  • possibly even a financial claim for breach of trademark.

The most obvious way to avoid the risks associated with using a trademarked domain name is to ensure that when registering a domain name it doesn’t contain a trademark.  But what if we really want to use a trademarked domain name, but also minimise the associated risks?

Now this gets a bit techincal – hence why alot of sources suggest consulting a trademark attorney.    But the key point will be to ensure that using a domain name won’t breach the trademarked associated with a word in the domain name. To explain this point a bit more, it is necessary to know a bit more about how trademark law works.

What is Trademark Infringement?

The law relating to trademarks will vary by country.   As an example, here is a general overview of US trademark law according to the Overview of Trademark Law provided by Harvard Law School and guidelines provided by the US Patent and Trademark Office (not by me):

  • A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another (eg Apple computers);
  • the use of a trademark in connection with goods constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods;
  • the owners of a particular trademark can sue people who infringe that trademark;
  • owners of trademarks can also bring an action for trademark ‘dilution’ if the use of the mark diminishes a sufficiently famous trademark, even though it may not cause confusion to a consumer;
  • a claim for dilution can be made:
    1. if the use of the mark weakens the trademark through its identification with dissimilar goods (known as ‘blurring’ eg Kodak bicycles); or
    2. if it tarnishes the trademark by associating it with inferior goods (eg Toys-R-Us vs adultsrus.com);
  • in some circumstances it will be okay to use a trademark where:
    1. a particular product or service can’t be identified without it (eg using the phrase New Kids On The Block to refer to that particular band); and
    2. there is no suggestion of endorsement.

How Can We Minimise the Risks?

What we can take from this is that if we want to stay out of trouble when using trademarked domain names we should, at a minimum:

  • make sure the use of the trademarked word in the domain name or on the website won’t cause confusion;
  • specifically avoid any uses of the trademark in the domain name or on the website that might come across as some sort of endorsement;
  • have a disclaimer indicating that the website is in no way affiliated with or endorsed by the company owning the trademark;
  • make sure the website has a legitimate reason for referring to that trademark;
  • see if other websites are making similar references to the same trademark.

What this all means is that before charging ahead (and either paying big dollars for a trademarked domain name or spending lots of effort building a website on one),  it is important to:

  • do the necessary due diligence first;
  • fully consider the trademark law for the jurisdiction in question;  and
  • figure out how the law applies to your circumstances (and seek legal advice if in doubt).

There will always be some risk in using trademarked domain names, but following the above steps should help reduce the exposure.

© Tom McEwin
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Jayne Pleysier November 3, 2010 at 11:11 PM

I love your posts Tom – great topics and information.

What about using trademark names after the .com/ eg jaynessite.com/facebook?
Jayne Pleysier´s last blog post ..Why Is It Important to Apply Small Business Credit Cards

Dino November 4, 2010 at 12:09 AM

Great post Tom, and so relevant with more and more people buying domain names every day. A timely reminder to do your due diligence.
Dino´s last blog post ..The Legal Stuff

Tom McEwin November 4, 2010 at 1:35 PM

Thanks for your comments Jayne and Dino.

Interesting question you raise Jayne. There would seem to be much less risk in having a trademark as a directory to your actual domain – assuming you have a legitimate reason for doing so and aren’t also using that trademarked word as part of your branding. It all comes back to whether the use would infringe the trademark in question.

Harry Lynn November 4, 2010 at 2:07 PM

G’day Tom,
Can’t a trademark be copyrighted ? Whenever I compose a song and submit it to APRA [ Australian Performing Right Association ] I ALWAYS add my name, date and the copyright symbol of the ” C ” in a circle. As far as I know, that gives great protection.
Cheers
Harry
Harry Lynn´s last blog post ..Teach Yourself Piano in Five Easy Steps

Tom McEwin November 4, 2010 at 6:56 PM

Hi Harry,

Trademarks and copyright are 2 different types of intellectual property rights. Copyright protections can arise automatically, but trademarks protections really require registration. I’ll post a video which briefly explains the difference, in the context of domain names.

There were a couple of reasons I didn’t post it initially but I think it could be useful to help explain things. First reason was I found the initial ad annoying (although funny the first time). Second reason was because while it shows how to check to see if there is a trademark in play, and mentions some of the risks, when it comes to reducing those risks it simply says to consult a lawyer (which is a good idea, but doesn’t provide much in the way of practical tips).

Credit for this video goes to tubetorial.com

Galia November 4, 2010 at 3:10 PM

Hi Tom

Thank you for bringing to our attention these trademark issues we should be aware of. I find your posts very informational. Looking forward to your next topic.
Galia´s last blog post ..Pole Dancing Lessons Sydney

Daisy November 7, 2010 at 6:54 PM

Just don’t buy a trademarked domain. There are so many other domain names out there that relate to the niche your trying to break into. Take a keyword that relates very closely to the product/trademark.

Some merchants (on CJ for example) do not allow you to have their trademarked name in the url anyway. Better safe than sorry!
Daisy´s last blog post ..Eco Friendly Holiday Lights- Which Should You Buy And How Should You Use Them

Tom McEwin November 7, 2010 at 7:51 PM

Thanks for your comments Galia and Daisy

Daisy – you are right in that the best to reduce the risk is to simply get another domain name. Hence why getting a domain with a trademarked word in it is something that needs to be done with careful consideration, particularly if there are other requirements to consider (as you point out regarding affiliate programs).

But in the right circumstances I can see the reason for doing so. Allfacebook.com is a great example of this – a blog about all things facebook. This may be especially so when the domain constitutes a great keyword phrase, given the weighting given by Google to having keywords in the domain name.

Jan Littlehales November 12, 2010 at 10:43 AM

Hey Tom,
Yet again, you’ve put in a massive effort to educate us about minimising the risk when registering a trademarked domain name.
I own an Australian and a US trademark for a product of mine and when I was setting them up I was absolutely amazed at the number of trademarks out there. There’s a good chance many internet marketers own domain names that have a word or words that are trademarked and they don’t even realise. So your comments on ‘how can we minimise the risk’ make a lot of sense for all internet marketers, just to be on the safe side.
Great blog Tom. :)
Jan Littlehales´s last blog post ..Learn to Type – Ergonomically – Part 2

David Moloney November 13, 2010 at 1:22 PM

Hi Tom,

Well researched post which gives the lowdown on a trademarked domain name. I would always err on the side of caution with these issues, as the last thing you want is for your website to be ‘pulled’, or forced to change name (like Groggle and Scroogle were recently). Now that’s a rebranding issue that cuts to the core of your awareness.
David Moloney´s last blog post ..Rework 37Signals Book Review

Tom McEwin November 13, 2010 at 5:48 PM

Hi Jan and David. Trademarks are definitely something to be wary about when it comes to domain names. The safest cause of action will always be to avoid a domain name which contains any trademarks (as Daisy notes). But as Jan points out there are so many trademarks there, and this may result having to give up some great opportunities even where it may be possible to legitimately refer to a trademark in a domain.

I kept an eye on the recent Groggle news – I understand that the matter was settled and that Google probably paid the founders of Groggle a cash settlement to make them stop using the name (rather than fighting it out in court). But a non disclosure agreement was apparently signed, so I’m not sure if anyone other than the parties involved will know exactly what the deal was.

Wilson Tiong May 11, 2011 at 3:47 PM

Hi Tom,

This is very nice post. I’m about the registered the domain name with the trademarked keyword and I still wondering if there is risk involve. Luckily I found your post which is very helpful in answering my question. Thanks for that.
Wilson Tiong´s last blog post ..Why Cant I Sleep

Tom McEwin June 19, 2011 at 9:40 AM

Hi Wilson. There will always be some risk involved (in whatever we do), but the question is how to minimse the it. Glad my post helped.

Lacey September 4, 2011 at 8:11 PM

Hi Tom,

Thanks for sharing this important information with us. Im kind of scared now, but then one has to take risks in life. But your post will help me in minimising the risk.. Thanks once again!
Lacey´s last blog post ..Get Diapers and Tons of Free Baby Stuff

David November 8, 2011 at 5:16 AM

Hi Tom. I’m wondering what you think about a site, for example, united-airlines-guide.com, where it’s clearly someone’s opinion and you state that prominently on the homepage.

Any thoughts?

Tom McEwin November 16, 2011 at 10:34 PM

Thanks for your comment David. If you’re talking about US trademark law, then the following paragraph of the Harvard Law School guide seems to be relevant:
http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#10

It could be that the use you describe would be ‘nominative’ in nature and defensible. Still, big organizations tend to have deep pockets, and be rather protective of their branding, so I’d bear this in mind when considering how much time / money to invest in the site.

David November 17, 2011 at 3:34 AM

Thanks Tom!

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