is this a trademark violation?

[BlueOrchard]

ya buying other ppl's brand names is copyright infringement if you're buying like tide.net and the real site is tide.com. Just get offshore domain accounts. Remember though, brands have a lot more money than you and will dish out millions to protect their rep. Look how taco bell reacted when some smuck spread a rumor about its shit beef. It was straight to court followed by milions of dollars in corrective advertising.

You could try monetizing with domain parking ads, but you can forget about SEO for the most part... you'll never outrank the real brand. Well hardly never....

Tide, Offshore... I see what you did there

 

[fieldinspector]

That's precisely what the cases I linked to were about... domain name issues.

I actually couldn't find a case where a trademark was enforced across a domain name unless that person squatted a domain the trademark holder previously owned.
Domain squatters still to this day own seescandies and seescandy for instance.

The ICANN rules are precisely of the kind that lend themselves to deny disparaging trademark names.
paypalsucks .com is still around... and there's not a damn thing paypal could probably do about that.
Legitimate complaints are still legitimate. Smear sites are a type of libel if untrue.
At any rate, profiting from selling the company's actual products and using their trademark in your domain is 100% legal.

Fieldinspector is the same tier 4 law student giving bad advice in the other thread.

Paypalsucks is around because there is no commercial gain. You don't seem to understand this process is separate to the court systems. When I get some time will pull up some cases from ICANN which show this clearly.

For what it's worth I go to a top 10 ranked law school (top 10 internationally).

 

[jon_xx_x]

Paypalsucks is around because there is no commercial gain.

Thanks, I was wondering this, because I put up a xxxxxsideeffects.com. But I made it a positive site saying xxxx has very minimal side effects. ANd I got a letter from the lawyer saying to take it down and give them the domain. I just took it down, but always wondered why paypalsucks could. My affiliate paid me per click so thee was no affiliate link or anything, just looked like an info site.

Back to the original poster, I'm not saying take my advice, but I'd probably still do it. The way I see it is, they'd probably send a letter to take it down before anything else, it's too much time and money. And the way I see it is, in the end, you are making them money in the end. You are creating sales, and they are still making money.

Anyways, if the above poster said paypalsucks is okay because of no commercial gain. Why don't you put up a free site, with no affiliate links, and try and flip the site when it's ranking high?

That being said, EMDs don't have the pull they did a year ago. Google is putting a lot more weight into authority sites. So you're gonna have a tough time outranking the authority sites ranking for it, and youtube, etc.

 

[fieldinspector]

Here is a case from 2000 with regard to Madonna.com

wipo.int/amc/en/domains/decisions/html/2000/d2000-0847.html

Background:

Complainant is the well-known entertainer Madonna. She is the owner of U.S. Trademark Registrations for the mark MADONNA for entertainment services and related goods. She has used her name and mark MADONNA professionally for entertainment services since 1979. Complainant?s music and other entertainment endeavors have often been controversial for featuring explicit sexual content. In addition, nude photographs of Madonna have appeared in Penthouse magazine, and Complainant has published a coffee-table book entitled "Sex" featuring sexually explicit photographs and text.

Respondent is in the business of developing web sites. On or about May 29, 1998, Respondent, through its business Whitehouse.com, Inc., purchased the registration for the disputed domain name from Pro Domains for $20,000. On June 4, 1998, Respondent registered MADONNA as a trademark in Tunisia. On or about June 8, 1998, Respondent began operating an "adult entertainment portal web site." The web site featured sexually explicit photographs and text, and contained a notice stating "Madonna.com is not affiliated or endorsed by the Catholic Church, Madonna College, Madonna Hospital or Madonna the singer." By March 4, 1999, it appears that Respondent removed the explicit sexual content from the web site. By May 31, 1999, it appears that the site merely contained the above notice, the disputed domain name and the statement "Coming soon Madonna Gaming and Sportsbook."
[...]
By his own admission, Respondent has registered a large number of other domain names, including names that matched the trademarks of others. Other domain names registered by Respondent include <wallstreetjournal.com> and <edgaronline.com>.

So recall the three elements from my post above:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and used in bad faith.

As to (i) both parties agreed the domain was confusingly similar. This was not an issue.

As to (ii) - The court said the owner had no legitimate interest. He did not provide any reason from using Madonna. The WIPO panel ruled:

that name was selected and used by [the owner] with the intent to attract for commercial gain Internet users to [owner's] web site by trading on the fame of [Madonna's] mark.

As to (iii) they could not find a good faith reason for the site:

Because the evidence shows a deliberate attempt by [owner] to trade on [Madonna's] fame for commercial purposes, we find that [Madonna] has satisfied the requirements of [(iii)]

WIPO also said:

[The] use of a disclaimer on its web site is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from [site owner's] actions. Such confusion is a basis for finding a violation of [Madonna's] rights. See Brookfield Communications Inc. v. West Coast Entertainment Corp.

So a disclaimer isn't good enough.

Madonna received ownership of the domain.

 

[fieldinspector]

Some other cases from this year:

"Nescafe" Case
wipo.int/amc/en/domains/search/text.jsp?case=D2011-0022
Summary: Someone registers a whole lot of .coms with "nescafe" TM. They redirected them to a site selling water products and a "Site may be for sale" link. All domains transferrred back to Nestle.

Revlon Case
wipo.int/amc/en/domains/search/text.jsp?case=D2011-0014
Summary: Here the domains were revlonperfect1.com, revlonperfect1.info, revlonperfect1.net and revlonperfect1.org There wasn't any site on them but WIPO ruled that because the owner didn't respond the formal process there must have been some bad faith and so Revlon received the domains.

 

[fieldinspector]

At any rate, profiting from selling the company's actual products and using their trademark in your domain is 100% legal.

Wrong again.

wipo.int/amc/en/domains/search/text.jsp?case=D2011-0004

This involved the domain "allstateautoinsurance.com". The site was used as an insurance comparison site where people could get All State insurance as well as policies from other providers.

WIPO ruled that the domain was registered "with complete knowledge of [All State] and its rights, and with an intent to trade off [their] goodwill." They go on to say that "bad faith exists where, as here, there can be no question that owner knew or should have known about All State's trademark rights before registering the Domain Name." It notes that the owner is "benefiting from the likely confusion between All State's trademark and the Domain Name." The domain was transferred to All State.

So ExpertPeon, can you explain to this "tier 4 law student" (lol) why this was an exception your statement?

 

[Expertpeon]

Paypalsucks is around because there is no commercial gain. You don't seem to understand this process is separate to the court systems. When I get some time will pull up some cases from ICANN which show this clearly.

For what it's worth I go to a top 10 ranked law school (top 10 internationally).

lol no commercial gain? The site has a permanent paid banner.
http://www.paypalsucks.net/
http://www.aboutpaypal.org/paypal_sucks
http://thetruthaboutamazon.com/ (affiliate sales)

Again you are so incredibly wrong about this, you really should ask for a refund from Thomas Jefferson Law School.

You're allowed to profit off a trademark if you're selling the product. That's why you cannot be sued by Nike for hanging a sign in front of your store that Nike Shoes are 50% off this week only.

 

[Expertpeon]

Wrong again.

wipo.int/amc/en/domains/search/text.jsp?case=D2011-0004

This involved the domain "allstateautoinsurance.com". The site was used as an insurance comparison site where people could get All State insurance as well as policies from other providers.

WIPO ruled that the domain was registered "with complete knowledge of [All State] and its rights, and with an intent to trade off [their] goodwill." They go on to say that "bad faith exists where, as here, there can be no question that owner knew or should have known about All State's trademark rights before registering the Domain Name." It notes that the owner is "benefiting from the likely confusion between All State's trademark and the Domain Name." The domain was transferred to All State.

So ExpertPeon, can you explain to this "tier 4 law student" (lol) why this was an exception your statement?

He's not selling allstate insurance... again you completely missed the distinction.
You cannot create COMPETITION sites generally with the trademark in the title.
But if you're a retailer of the product?

Do these UDSP claims generally result in handing over domains? probably...
Does it mean it's legal? no... especially in the case of foreign registered domains, the rules are simply, well... too impossible to enforce.
Cross border domain enforcement is a non-starter.

 

[fieldinspector]

Do these UDSP claims generally result in handing over domains? probably...
Does it mean it's legal? no... especially in the case of foreign registered domains, the rules are simply, well... too impossible to enforce.
Cross border domain enforcement is a non-starter.

You clearly have no idea. It's actually UDRP and the whole point of it is to enable easier cross-border dispute resolution. The World Intellectual Property Organization (WIPO) oversees most cases and WIPO's processes were "developed by leading experts in cross-border dispute settlement." The UDRP applies to all gTLDs regardless of what country they are registered in. Registrars in any country are bound to comply with any ruling under the UDRP and "either party retains the option to take the dispute to a court of competent jurisdiction for independent resolution" however the WIPO highlights that "in practice, this is a relatively rare occurrence."

Stick to the SEO champ...

 

[fieldinspector]

Paypalsucks was also an exception for "freedom of expression" cases. There is actually a whole lot of law on domains which include "sucks" in the URL. From the "walmartuksucks.com" case:

The Panel stresses that this decision does not address legitimate freedom of expression sites established by parties critical of trademark holders. The Panel is aware that there are numerous websites identified by "-sucks" formative domain names, including "walmartsucks.com". The Panel anticipates that Respondent (and others) may choose to characterize this decision as seeking to stifle freedom of expression on the Internet by ordering the transfer of "-sucks" formative names. Certain trademark holders might choose to characterize this decision as supporting action against "-sucks" formative domain names in other contexts. The Panel intends this decision to serve neither of these aims. This decision is directed to a blatant case of abuse of the domain name registration process -- no more, no less.

So this is really an exception to the rule in cases where there is a bona fide use of the TM in the domain for critical opinions. See here for more on "sucks" domains:
wipo.int/amc/en/domains/search/overview2.0#24

Again you are so incredibly wrong about this, you really should ask for a refund from Thomas Jefferson Law School.

The insults to my intelligence don't get to me. I finished in the top .45 percent of students and got into the most competitive course in my country (more competitive than medicine). I would have been accepted into any university in the world. Apart from studying TM law I also deal with TM issues regularly in my role as marketing manager at a technology firm.