Trademark fair use

doodlebug · May 11, 2010

I thought you could use a TM in fair use eg, if you had a site peppapigproducts;co;uk and sold peppa pig bedding and curtains and toys and bikes etc then that would be excessive use.

If you owned peppapigbedding;co;uk and only sold 1 type of item would this be fair use ?

I'm thinking not but then what is the point of fair use or is it for eg, Argos selling sony tvs and using the Sony logo on their pages ?

Thanks

Edwin · May 11, 2010

No, it's not generally fair use. Unless you're an authorised reseller (which is a much stronger relationship than an affiliate). In that case, there have been certain legal decisions which lead to suggest that there is a precedent for being able to keep the domain name in the case of a dispute - but you'd still not be insulated against being targeted in a dispute, you'd just have a fair chance of winning!

Think of it another way: if the creators of "peppa pig" (to run with your example) hadn't created the character, then peppapigbedding.co.uk would be worth literally zero. Not regfee, zero. No other way of looking at it - any value at all within the domain name is 100% created by the "fame" of peppa pig, and that's what you'd be trading off of with that domain name.

crabfoot · May 11, 2010

Trademark owners don't like people using their trademark in a domain name because the use in the site name implies a direct connection to the trademark holder.

Most big name companies will start sending "cease and desist" stuff if their trademark is used in a domain name - even if you are legitimately selling their products.

It is a grey area - I seem to remember that the people behind "Still Tango" got away with selling their product for a while, and survived a few court cases - but it is not worth the hassle using a trademark in a domain name, because the "cease and desist" stuff will start.

And under ICANN rules, a tm holder only has to object in writing to a name and the site will be taken down until the legalities are resolved. That was implemented last year and "short-circuits" the law.

doodlebug · May 11, 2010

Thanks, I tend to stay away from TM issue domains but I found some character domains getting 10k + UK exacts in December

Ah well, guess I'll have to live without them

Thanks

retired_member12 · May 11, 2010

This approach to so called TM domains should, like the existing TM system itself, be inline with what are good practices and what is 'obvious'. If the TM is, for example, 'Orange' (2185792), and the domain name in dispute is (for example) 'orange-mobile-phones. org.uk', then it's pretty obvious you are trading off the TM. However, if the site is 'orange-toasters.co.uk' then it's clearly not, especially if you happen to be selling orange toasters!

Edwin · May 11, 2010

The more that so-called "character domains" (I assume you mean things like Postman Pat, Peppa Pig, etc.) get searches, the stronger their case will be. None of these sorts of characters are inherently "generic" in the sense that if the character didn't exist - and had never existed - that domain name would be worthless.

So in other words, the more popular the character, the more dangerous it is - what looks like a "wasted opportunity" is in fact a minefield waiting to be stepped on.

doodlebug · May 11, 2010

No worries, I have and will continue to avoid TM domains, I've advised newbies on here to delete theirs enough times, just wondered about fair use but to be honest it wouldn't be worth the hassle.

Generics all the way