Trademark and a web site name

[samtha25]

Hi all,

Some friends have developed a web site to promote the database program, Paradox, which is owned by Corel Corporation. The site is called ParadoxCommunity.com. They also recently did a little community-building event called "Paradox Day" and sold some "Paradox Day" T-shirts. Recently, they received a threatening letter from Corel's lawyers claiming trademark infringement. (Why Corel wants to threaten a group that is only trying to help the product is anyone's guess?)

If this is illegal trademark infringement, I'm wondering how domain names like microsoftsucks.com can be legal. I have a vague recollection of reading something about some company unsuccessfully trying to shut down a <company name>sucks.com site, but can't find anything on it now.

Anyone have any thoughts or pointers to more information on this type of problem?

 

[Michael Wechsler]

One key to the difference between the sale of t-shirts with a trademark and a site that discusses a company whose name is a trademark is exactly what you see above.... the sale. When your friend's company sells a t-shirt using Corel's trademark they are using the mark in commerce and making money from it without sharing with the mark owner. That is just one factor, including the need to enforce or possibly lose the right to enforce. I'm not saying that not prosecuting this instance would cause such to happen. Corel may give them the ability to use the mark with permission. However, most corporations fail to grant limited permissions because sometimes the cost to do so to them just isn't worth it.

I was legal counsel to one of the largest Internet companies and we were hounded by people who wanted to use the company's trademark for everything under the sun -- we had no idea whether a certain usage was going to be a decent production or a total fiasco. Someone called me up and wanted to include our site for their publication and small convention but I had never seen their publication or convention and had to also clear the use with the rest of the officers in the company who had an idea as to how they wanted to market the company. What would be the total value to the company if there was exposure to, e.g. 75 people? Not much given the number of people involved in the decision but the damage caused could be large if the press got hold of something gone horribly wrong.

How did Corel even find out about this event? The question you would have would be more along the lines of whether a company that provides services for a company with a trademark can use the name of the trademark within its own name. This is different than comparing these apples to the oranges of the "sucks" sites.

Here is a link to an interesting article from Wired. http://www.wired.com/news/politics/0,1283,38056,00.html

 

[samtha25]

So, it's OK to have the site yourtrademarksucks.com, but not yourtrademarkrocks.com, because no one would confuse the former with a site associated with the trademark holder?

The site is not a "company". It's a bunch of enthusiasts, covering the costs out of pocket and the T-shirts were only a fun thing, sold at cost. But, putting aside the question of selling anything with the trademark on it, can a trademark holder just up and say you can't use our trademark as part of your domain name if your site is also about our trademarked product, which is what Corel is saying? I guess they can.

They did offer to license use of the site, but the terms include a provision that at any time, without notice and without reason, they can require the use of the domain name to be discontinued or transferred to them. That rather sucks.

There's actually a book on this stuff, The Domain Name Handbook.

 

[Michael Wechsler]

The site "yourtrademarksucks.com" is not necessarily a right either.... I'll explain.

The first paper you cite is a basic primer on trademark law. That is the easy part! The difficult part is the application. Traditionally the courts have held that if you have a site with the trademark name in it but don't use it at all (whereby you are not using the mark in "commerce") then you could hold on to it. People got themselves in trouble once they used the site for something or were accepting offers for sale and thus brought the mark for use in commerce. Many of these cases are based upon questionable logic and are the courts trying to deal with a problem by stretching the law as much as possible to get there. This is pre-WIPO (wipo.org), which now deals with domain name disputes.

Here are some WIPO decisions regarding the sucks sites:

Freeservesucks.com:
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0585.html

Dixonssucks.com: http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0584.html

Note that in these cases the WIPO panel seems to impute bad faith in the the registrant of the domain names registered several names to impugn the name of these companies. Porsche has been known to send infringement letters to every company that uses its name, regardless of whether you are even a fan site. However, there have been several cases dealing with fan sites in which the trademark owner has lost, most noticeably Mercedes.

I'll be posting articles in our law journal section this week that will have interesting reading on this topic, including cases, summaries, law, and other fun stuff of the like. About the domain name book -- I haven't read it and it sounds like a good resource. However, there are almost as many legal articles on domain name disputes as there are personal injury cases.... which should say something about the number! Additionally, rulings change and changes occur so quickly that dynamic sites at this point might be the optimal solution. This topic deserves more talk time and I'll make sure the articles are up by tomorrow.

 

[samtha25]

I look forward to your articles, especially because our own site may be similarly affected, but also because it is an interesting topic. I read the WIPO policy papers, but they didn't seem to have much to say on the substance of the issues.

You're right about the rapidly evolving nature of the law. Even Web sites seem to be having trouble keeping up. A couple I found through Google hadn't anything new in the last couple years. Plus, many of the links were to paid services, such as WestLaw.

 

[rachel]

I think someone said that this site is getting more of a law library soon. I have been using lexisone.com, which is OK. I think soon that most of the court cases should be online for free for people to search. That is the way it should be.

 

[Michael Wechsler]

Yes, we will have a searchable law library up soon. It has been very busy here in New York and difficult to put up online everything that was planned on time. However, we do look forward to implementing our publishing system so that TheLawJournal.com will be functional again and will be publishing new journals each month. Additionally, TheLawNewsletter should start rolling some time soon. The World Trade Center incident has thrown so many things for a loop and prior committments have now been changed in every industry....

Thanks for asking and the articles will be up by November 9.

 

[Michael Wechsler]

Originally posted by samtha25:
I look forward to your articles, especially because our own site may be similarly affected, but also because it is an interesting topic. I read the WIPO policy papers, but they didn't seem to have much to say on the substance of the issues.

The old articles are now available online by perusing the main menu here under "The Law Journal."