Trademark Example/Question

[dan_Vt]

How is this site not infringing on a trademark? Or is it, but the guy's lucky the NFL may not care?

http://www.nfltalk.com

I'm asking because I own a similar name, but for another sports league, and would like to develope it.

 

[Dave_Z]

This is just a layperson's opinion. But based on what I see from nfltalk, it has
the potential to both infringe on NFL's trademark and be taken from the owner
due to bad faith.

Although it's currently a forum, it has a link to purchase football products. Not
a good idea.

Of course, only a seasoned attorney like JBerryhill can say for sure, or the
domain gets taken to UDRP.

 

[dan_Vt]

That was sort of my take too. The forums are innocent enough, it's the revenue generating ads that may cause the problem.

Thanks,
Dan

 

[jberryhill]

http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0160.html

Respondent is serving as a clearinghouse for information concerning Complainant's vehicles and is selling parts and accessories exclusively for Complainant's vehicles. The domain name and the name of Respondent's web site "MercedesShop" is descriptive of the business conducted there. In conducting the business that Respondent is conducting, "it would be difficult, if not impossible for [Respondent] to avoid altogether the use of the word 'Mercedes . . .which [is] the normal term[] which, to the public at large, signify [Complainant's] cars." Volkswagenwerk Aktiengesellschaft v. Church, 4111 F.2d 350 (9th Cir. 1969). Respondent's site contains a clear disclaimer, which states that it is displaying trademarks that belong to Complainant and that Respondent is in no way affiliated with Complainant. Moreover, Respondent operated the web site for more than two years without receiving any notice of dispute from Complainant. Accordingly, the majority finds that Complainant has failed to prove that Respondent has no rights or legitimate interests in respect of the domain name at issue.

 

[dan_Vt]

Great link, thanks.

So for the layman (me), as long as you are not trying to convince visitors that you are the one who owns the trademark you are ok, even if you are using it for commercial gain. You can use "NFL" on sites with ads or products if you clearly state you are not the NFL, or affiliated with the National Football League.

Is that an accurate nutshell?

The part that gets me is the last three sentences: "The majority also notes that the Policy was not designed to deal with, nor is the Panel asked to determine, the issue of trademark infringement. Whether the use of Complainant's trademark on Respondent's web site constitutes trademark infringement is not for the Panel to decide. If Complainant wishes to pursue that issue, other forums are available."

That makes me think that the above example could in fact still be infringing on the NFL's trademark.

Thanks for the help.

 

[jberryhill]

That makes me think that the above example could in fact still be infringing on the NFL's trademark.

Correct. The UDRP addresses a very narrow issue.

 

[sunken]

Besides even though he may be making money off the affiliate ads, you have to remember that those ads are going to stores that pay the NFL money for selling their items, so they are not losing anything in this. Yes, it could be a trademark infringement still, but whether the NFL would choose to exercise that right would be up to them. It's doubtful they would since it's an avenue of income and the site is based on their fans (and is not detrimental to the image of the NFL). Though there have been companies that have ignored that concept, but most are fairly tolerant of it.

 

[Jamie Bing]

Man am I glad I found this post!

I had been draggin my head because I have two NFL related domain names and I was told to "get rid of em". GoPhiladelphiaEagles.com and GoNewEnglandPatriots.com are the two they said I should dump. Heck I posted them on ebay LOL

I have them hooked to an officially licensed team fan shop and the people at team fan shop didn't think it would be an issue either. This post makes me feel better.

Now I am thinking... Keep em and make some money.

 

[dan_Vt]

I think posting them on eBay would be much worse then using the name.

 

[Dave_Z]

I think posting them on eBay would be much worse then using the name.

Posting the domain name in a forum is even much worse, sometimes.

 

[spikedo]

It's interesting to note if you follow jberryhill's link that one of the panelists stronly disagreed with the ruling and presented his case for approving the transfer of the domain to the trademark holder.