Further Idea’s on Brand Names Used in URLs and Subdomains

by Alex on April 5, 2013

brand names in your domain and the legal implications

This is a follow up post from my recent article on how to choose a domain name in 2013 and is one of the most well researched and thoroughly thought out follow up articles ever. I unfortunately cannot take the credit for this incredibly well researched update but instead have to highlight the brilliance of one of my readers, Mike Steinberg.

Mike, take it away mate…

I know the subject of using Brand Names in Domains has been talked about but there is still one thing  I think needs to be looked at. I did some Google work on the subject, and there are conflicting idea’s on whether a brand can be
safely used in the domain as a sub-domain.  i.e.;

sony.mydomain-com/,

as opposed to making it a main page/directory:

mydomain-com/sony/ .

I didn’t really find any solid evidence that you can’t do it that way, except for one case:

Jews for Jesus vs. Google.

They apparently went to court over this. No decision was handed down, and the case was dismissed, because they  settled out of court <undisclosed>. So, apparently, there is no legal precedent set as a result. However, it does leave the door wide open for speculation!

I felt that everyone who is involved in Niche Marketing should have another look at this and make up their own minds as to how risky this is, and of course how they prefer to proceed with it. I have included four opinions on the subject that I researched through Google. I thought they were revealing, and worth looking at.

At one point, someone below has an idea that on the surface, I thought maybe could have been workable. But, after weighing all the evidence, there still remains the question of what the trademark holder might do, because of your INTENT. That is: to include model or identifiers with the brand name: i.e.;

makitalxt.mydomain-com/ .

Again, the one word concerning this whole thing seems to be “Intent,” as implied by the very definition of Trademark Infringement:

“Usage of a trademark or similar trademark in order to create confusion, or take advantage.”

When you are putting the Trademark out in front in the sub-domain, even though there is a dot there…honestly…isn’t that exactly what you are trying to do? I hopped around in Google Search for a while, to confirm what I already knew, and generally what most marketers do is create a domain with a “Sub-Directory.” i.e.;

 mydomain-com/makitalxt/

and make the Sub-Directory your main static page. Your “mydomain” keyword will be a general one: i.e.; <cordless drills>, to  target the Niche.

Internet Responses To The Use Of Trademarks In Domainslegal implications of brand names in your URL subdomain

 

  • Avoid trademark infringements by using subdomain?
    You are right. A subdomain or folder under main domain (which I think a subdomain really is anyway) – it can be whatever you want. It matters not what Sony or anyone else thinks. I think you may want to read up on trademarks before you get yourself or others into trouble. The definition of Trademark infringement is, and I quote:

“Usage of a trademark or a similar trademark in order to create confusion or take advantage. Infringement happens if the prior consent of the mark holder is not taken.”

They would have a VERY good case against you and for the reason you started this thread. You said you already know that sonyproductreview-com is infringing on trademark and so you are looking for other ways to manipulate the setup of your domain so it appears as the same thing to the customer.
You are trying to create the confusion between your site and the domain you already know is an infringement of trademark. Otherwise, why not just use yoursite.com/sony as you said. This makes the distinction a whole lot clearer to customers and would be much harder for Sony to say you are using their brand name to your advantage.

  • “If a word is trademarked, it’s trademarked. I don’t see what difference adding a dot (.) makes.”
    I beg to differ. So do you think this url is breaking any laws?
    Amazon.Amazon
    How about this one:
    http://www.phonesreview.co.uk/catego…sony-ericsson/

Sometimes, a subdomain has been contested by WIPO. It depends on Intent. But if you have:  e.g.

sony.productreview.com

Then it’s clear you are not pretending to be Sony. “Sony” is simply a category in your site. And I’m pretty sure that a subdomain is nothing more than a mapping to a sub-folder anyway. If subfolder/web page names could not contain brand names, the internet would die overnight.

Of course, you should seek legal advice. But if you consider cyber squatting on one side, and legitimate website use on the other, I would put the use of subdomains much closer to the latter.

Now if you make a domain like:

sony.europeheadquarters.com

then clearly you are pretending to be Sony and that is not on. But I am sure that is not your intention anyway.
In the example of: sony.myreviews.com:

A customer looking quickly at that domain setup, could very easily think that they are looking at a Sony website. That is where the confusion lies and that is the only grounds they need, for them to take action against you.

As I mentioned, if you are not trying to deceive customers then you will have no problem using the setup such as:

myreviews.com/sony/

There is no real advantage to using sub-domains, so folders should be fine. If you do see any domains using trademarked brands as subdomains, then they have either gotten permission, or they have not been caught yet.

  •  <This guy is supposed to be an  Attorney – I can’t verify that>
    kindsvater
    Senior Warrior Attorney
    War Room Member
  • Re: Avoid trademark infringements by using subdomain? 

    Here’s the skinny on what can quickly become a complex area of law:

-” It is not against the law to use a trademark in a domain name.”

There is no such law.
For example, here is a domain I could register,  which is perfectly legal and I guarantee (as much as a lawyer can guarantee anything) does not by itself infringe any trademarks:

why-brian-loves-his-new-ipad.com-

What a trademark does is protect an identity associated with a product to prevent consumer confusion as to who is responsible for the product. That is why my domain example is not infringing. There is no possible consumer confusion as no one would believe that is an Apple website.

(I expect someone to come along and say that is what “they” think — so let me word that differently — it is not something your average, reasonable consumer will think.)

Of course, registering:

why-jared-loves-subway.com

could result in a different outcome. And of course, if I register:

appleipad.com

there is plenty of potential confusion as that appears to be an official Apple site. Generally, a trademark does not give someone monopoly rights on that word.

Now for the ultimate question, what about subdomains?

Although there was the one lawsuit years ago by an “interesting” group on the issue (that garnered it plenty of publicity) that did not result in any rulings, there are not “lawsuits” being filed over this issue.

In my opinion, as a general rule the practice is fine.

Naturally, I have to say “as a general rule” because if I say it is simply fine, someone will come along with an example I have not thought of and I might have to change my mind for that example.

But after reviewing literally hundreds of domain dispute judicial rulings, and having litigated similar issues, I have not seen a situation, or read any court opinion, that would make me think there is a problem with subdomains.

Here is the rub …

The problem with a trademark as a domain is the initial consumer confusion that may arise from seeing the domain. You’re not going to have that with a subdomain.

* But that doesn’t mean it’s open-season to do anything you want with the subdomain.

For example: if you create your own “Sony Camera” to sell on:

sony.yourdomain.com

then you’ve got a problem. Not just with the product, but possibly also with the subdomain because it is part of a broader scheme to infringe on Sony’s trademark.

That is the scenario I see as most likely, if such an issue ever reached a court.

But, if you’re an affiliate for Amazon, Best Buy, etc., and you’re promoting Sony cameras as sony.yourdomain.com, that’s fine.

In fact, there are opinions ruling that type of situation can give you certain rights to use a trademark, even in a regular domain.

That is because it is a legitimate use.

This “skinny” is getting a little long, so I’ll stop. But here’s a rule of thumb I’ve learned from 20 years in practice … Person A can do something that is trying to make an infringing use of a trademark and be real slippery in trying to avoid liability.
Person B will do the exact same thing, but it’s a wholly innocent situation and there is no attempt to infringe. Judges tend to find a way to hold Person A liable – but not Person B.

Conclusion

Well there you have it… you DO have it don’t you? Good – can you fill me in then, my brain hurts… think I’ll go shopping instead, I could do with a new leather briefcase ;)

 

{ 6 comments… read them below or add one }

AvaReed April 5, 2013 at 5:09 PM

Impressive POV, that’s truly something to thing about, and now my head hurts too. At the end of the day it boils down to internet/business ethics. Btw, on Part 1– that gardenbling thing made me laugh. ;)

Reply

Alex April 6, 2013 at 10:58 PM

Glad I’m not the only one who’s brain collapsed mid post LOL.
Thanks for the comment Ava, and thanks for reading part 1 too :)

Reply

Sergio Felix April 6, 2013 at 5:16 AM

Very interesting article Alex, you just reminded me of the Blu Ray issue when they attempted to name the new optical technology.

They actually tried to register “Blue Ray” but they were obviously rejected, they were like “you can’t register a color, are you insane?” LOL so they went with “Blu Ray” instead.

Anyway, I don’t think you are causing any harm or taking any “advantage” by genuinely sharing your thoughts on a product you love, although this apparently changes when people see you want to make a profit from it.

About using subdomains or categories, I think that’s just BS.

If I ask my mom if she’s on a Sony site or not by showing her “sony.mydomain.com” or “mydomain.com/sony” she wouldn’t see the difference and she would still believe both are genuine Sony entities.

Sergio

Reply

Alex April 6, 2013 at 10:55 PM

You make a valid point there Sergio. Thanks for highlighting the fact that people outside of the IM or web field are ignorant to either option and therefore deems the position of the ‘brand’ irrelevant.
Sure makes the legal issue even more convoluted!
As for the Blu Ray example – classic! Actually, I remember when Cadbury tried to sue some other chocolate brand because they were using the same ‘purple’ colour on their packaging. Same thing happened – it got thrown out because you cannot patent a colour!!

Reply

assurance auto April 12, 2013 at 9:40 PM

Yur artcile ” alex” is reall interesting and usefull!!! i enjoy reading it!!!!”At one point, someone below has an idea that on the surface, I thought maybe could have been workable. But, after weighing all the evidence, there still remains the question of what the trademark holder might do, because of your INTENT. That is: to include model or identifiers with the brand name”

Reply

Melisa April 27, 2013 at 6:35 PM

Great analogy one should keep the design simple, if it is complex people will face problem in using it. More visitors will follow if the design is simple.

Reply

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