Saturday, June 5, 2010

No DMCA Notice for using trademark in domain

Dear Rich: I wonder if it is alright to create a website with a product name. If I create a website with the word wii in the domain and sell wii products, will I get a DMCA letter in future? How can I check if a word can be used in a domain name or not? If I check the USPTO and the mark states that it is "Live," does that mean that the word cannot be used in the domain at all? (SPOILER ALERT: This is a pretty boring answer.) (1) No, you won't get a DMCA notice for using someone else's trademark in your domain name.  DMCA notices are issued when someone infringes a copyright by, for example, posting unauthorized copies of music or pictures. Domain names are a whole different trip. (2) The use of "LIVE" at the USPTO means that the trademark is active and registered or that the application is in progress and has not yet issued. Abandoned or cancelled marks are marked "DEAD." Just because a mark is listed as "DEAD" doesn't mean it's not being used; it just means there is no federal registration.
Domain names and trademarks.If you're using someone's trademark in your domain name, you may be okay. Then again, you may not. There are three types of claims you might trigger:
  • trademark infringement -- you create a domain using another company's trademark that is deliberately intended to confuse consumers into believing that the other company endorses, sponsors or is commercially associated with your website--for example, AmazonBooks.
  • dilution of a trademark -- you use a famous trademark in your domain name in a manner that tarnishes or blurs the reputation of the famous mark. For example, if an adult site were to tarnish a famous children's game and its trademark such as www.Candyland.com.
  • cybersquatting -- you adopt a domain with someone else's trademark in bad faith. For example, you would be cybersquatting if you adopt a domain for the purpose of holding it hostage and selling it to the trademark owner, or for the purpose of diverting customers of the trademark owner in order to make money from Google advertising.
What's going to happen to you? For the use you describe, we can't predict how Nintendo will react. Other sites have incorporated "wii" into their domains -- for example, Wii Chat and Wii Mommies -- and seem to be operating without a problem (although these sites don't directly compete with Nintendo or appear to sell Nintendo products.) At the same time, many other companies appear to permit the use of their marks in conjunction with domains selling products -- for example, Apple and Mac related sites. So, it's hard to tell (although our inclination is to avoid it.) If you do use Wii in your domain, you should disclaim any connection with Nintendo by prominently stating that the site is not affiliated with, endorsed by or associated with Nintendo. That won't prevent Nintendo from coming after you. But it could make your life easier if a dispute arises by showing your good faith attempt not to confuse consumers.
What's the worst that could happen? It's always hard to predict the worst that could happen. Arguably, if a claim is made, and Nintendo proves that you are likely to confuse consumers, a court could require you to pay all your profits and shut down the site. The Dear Rich Staff believes that if Nintendo learns of your use and is unhappy, the most likely result will be that Nintendo will ask you to shut down the site and hand over the domain name.