Using a TM domain legitimately

[spikedo]

Let's say I own bugsbunny.com. Now Warner Bros. could come after me for the domain and be within its right to take it away. Could I prevent that if I developed, for example, a bugs bunny fan site? What components would I need to fulfill the requirement of a fan site (e.g., forum, guestbook, etc.)?

 

[anthonyjdoe]

Either way I don't think it matters as Bugs Bunny is a made up thing so it soley belongs to them. If your fan site was popular and full of kids I dont think you would have to worry.

 

[RJ]

This is a great topic for discussion.

There is not a black & white answer. Usually it ends up in front of a judge who will decide whether or not you have established legitimate rights to use a term.

Two possible legitimate uses to utilize a trademark,

- You are an authorized distributor or reseller of a product. If you sell licensed Bugs Bunny merchandise, you may have the rights to use BugsBunny.info

- An established fan site or informational site (a form of fair use of the trademark) may be able to establish rights to use a trademark in its domain.

In both cases it's important that the site does not confuse visitors with the trademark use into believing that that is the official site, or owned by the trademark holding company. A clear disclaimer can go a long way to that effect.

It's reasons like this that domains containing obvious trademarks are not neccessarily undevelopable. You may be able to develop a domain name if you have a legitimate use for using it.

 

[GamingHybrid]

There is a major advantage in having text at the top left of your Site saying "Unofficial Bugs Bunny Fan Site"
A lot of Gaming Sites do this.

GOD BLESS

 

[spikedo]

- An established fan site or informational site (a form of fair use of the trademark) may be able to establish rights to use a trademark in its domain.

Yes, RJ. This is what I was getting at. I have a great TM DN and I'm setting up a shop to sell merchandise. I don't want to get the domain taken away so I want to make sure it will qualify for an unofficial fan site. I've got the disclaimer included already, but what else do I need to include?

 

[RJ]

- An established fan site or informational site (a form of fair use of the trademark) may be able to establish rights to use a trademark in its domain.

Yes, RJ. This is what I was getting at. I have a great TM DN and I'm setting up a shop to sell merchandise. I don't want to get the domain taken away so I want to make sure it will qualify for an unofficial fan site. I've got the disclaimer included already, but what else do I need to include?

That's basically it. Just make sure that the merchandise is legal/licensed and you're not violating any copyrights by using unauthorized content.

 

[armstrong]

I have a great TM DN and I'm setting up a shop to sell merchandise.

Also, be careful that you don't offer products from competitors, as this could be a bad mark against you if the domain gets contested in court or UDRP.

 

[suthra]

Also, be careful that you don't offer products from competitors, as this could be a bad mark against you if the domain gets contested in court or UDRP.

Exactly!.

 

[spikedo]

Well, did a bit more research. Turns out the studio owns the .com, .org., .info, and .biz. I own the .net and someone else owns the .us. Makes me a bit nervous. I want to put up affiliate links to products. These would compete directly and indirectly with the official .com site's store. But the products are sold by licensed merchants. Is this a problem RJ? Not sure what your previous post meant.

 

[RJ]

Well, did a bit more research. Turns out the studio owns the .com, .org., .info, and .biz. I own the .net and someone else owns the .us. Makes me a bit nervous. I want to put up affiliate links to products. These would compete directly and indirectly with the official .com site's store. But the products are sold by licensed merchants. Is this a problem RJ? Not sure what your previous post meant.

This is not legal advice, but my opinion is that you would be okay as long as the products you were advertising are licensed or being sold by an authorized channel of distribution. No bootlegs, knockoffs or competitors products. That way you are providing a legitmate use for the domain.

 

[wlspro]

Are you trying to find out how you can get away with an illegal act or asking if the act is illegal?

You have registered a domain name that is a registered trademark of another party. You have done so with the knowledge of the trademark and intend to make commercial use. This is sufficient grounds to deem your activities an infringement on the trademark holder’s rights.

It is really not important what content you put up given your intent. You can put all the disclaimers you want, respect all copyright laws, sell “licensed” products, avoid competing products, place links to licensed resellers, … Without an explicit permission by the trademark holder for you to use its mark as a domain name to make money is prohibited by trademark laws. Any advice by others about ways of covering up or sugar coating the matter is improper and wrong.

The question should be why did you do this in the first place and not how you can get away from being caught - which seems to be the thrust of this thread and the advice being given.

 

[armstrong]

He's asking how to play the game legally, which seems a fair enough question. If there is a way for him to use a TM domain within the bounds of the law, then why not? It wouldn't be illegal then. Isn't there a concept in law called 'curing'? IANAL, but I've heard this term used before, where a questionable act can be 'cured' and made legal after the fact.

One example that comes to mind is in immigration law (an illegal alien taking advantage of an amnesty offer). Maybe there are others?

 

[Nunim]

kinda off topic but, if I registered a domain lets say a year or two before some corporation lets say citigroup registered a trade mark of that name its legal for me to use the domain for whatever I wanted as long as its not really selling like a bootleg copy of what they're selling right?

 

[armstrong]

The act of registering a trademark isn't the only way to establish a claim on the mark. If citigroup has been using the mark, then they could claim a prior trademark for common-use.

 

[Nunim]

lets say their new product was something totally diffrent then their current trademarks lets say they and having a fast food chain now, and I owned citifood.com could I use it for my purposes?

 

[jdk]

I believe they only own the trade mark on Citigroup not the word Citi...Otherwise words like "Citi"zen etc would be considered a trademark as well. Now if you were to register a name like Citi-group .com I think they would mind.

 

[Riceman]

citi is a common name, although perhaps trademark I doubt theuy could enforce it

 

[spikedo]

Working back to the original point of this thread, I'm curious if it would be worth sending an e-mail or letter to the copyight holder, asking for permission to use the domain name. I guess they could either say "Screw you and, by the way, give us the domain name" (which would put me out only $60) or "Go ahead but here are our conditions." If it was the latter, I just hope they wouldn't ask for some kind of monthly fee. I'm still not sure what to do. Any recommendations?

 

[Nunim]

Try to sell it to them for between 1xxx-5xxx

 

[AdoptableDomains]

Well, did a bit more research. Turns out the studio owns the .com, .org., .info, and .biz. I own the .net and someone else owns the .us. Makes me a bit nervous. I want to put up affiliate links to products. These would compete directly and indirectly with the official .com site's store. But the products are sold by licensed merchants. Is this a problem RJ? Not sure what your previous post meant.

I think an affiliate site is a lot more shakey than being an actual licensed merchant of the TM products. Some TM holders will allow licensees to use their trademark either specifilally by contract or just fair use as long as it doesn't harm them. As a third party to a licensee, most companies having no contratual relationship with you, would probably just as soon file a C&D to make sure it's not used against their wishes.

Some TM holders do tolerate fan sites as long as content is not harmful to them. You could throw up a discussion forum, but be careful not to use any TM'd images or logos without prermission and it had better be moderated to keep derogatory remarks off it.

I would avoid the advice to put the domain for sale as a domain only, as this just helps to prove bad faith that you intended only to sell and make a profit on their TM rather than provide a complimentary service or site.