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Can I use a trademark as part of a domain name?

Memphis, TN |

Let's say I want to create a website helping people to quickly analyze the MLB schedule and find games for their favorite teams. Can I purchase and utilize a domain name such as "2013MLBschedule.com"? The site would probably be ad supported and by its very nature it would also mention the names of the individual teams within the MLB (eg Cincinnati Reds). I know newspapers print schedules all the time, but I'm not so sure about using what is surely a trademark (MLB) in the domain name. [Note: I'd be glad to place a banner at the top of the page specifying that the site is not affiliated MLB if that would do the trick]

If, this is a violation, then would simply owning the domains be a violation of some kind? And if yes, then how would one mitigate the problem if they already owned the domains? Thanks!

Attorney Answers 5

Posted

Q: " Can I purchase and utilize a domain name such as '2013MLBschedule.com'?"
R: Registering that particular domain name would be unlawful. No one can pass judgment on other domain names "such as" that one – every domain name requires its own analysis.

Q: “If, this is a violation, then would simply owning the domains be a violation of some kind?
R: Yes. Registration alone is unlawful – publication of a webpage at that domain or offering it for sale or selling it is not required.

Q: “And if yes, then how would one mitigate the problem if they already owned the domains?
R: Speak with your registrar’s customer service department about surrendering your registration. Or speak with MLB’s legal department about transferring the domain name registration to them [or, better yet, have your own attorney do that].

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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7 comments

Asker

Posted

Will simply canceling the domain name registration at the registrar be good enough if I already have a site at (YYYYMLBSchedule.com) and several years worth of domains that match that pattern? I was planning on doing this for years to come so I already bought the domains and built the current year's site. I'll gladly just shut it down and cancel the registrations. I haven't heard from "the league" or anything of that nature and I'm hoping to just head it off before it even might become an issue, but if it's better for me to offer it to them first then obviously thats additional issues. I guess I'm wondering if it would show enough good faith to simply cancel it and be done with it rather than possibly drawing their attention to it.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Only your own attorney can properly advise you after learning all the facts of your particular situation. Good luck.

Asker

Posted

That sounds like a reasonably lawyerly answer. ;) Thanks for the advice you were able to provide.

Bruce E. Burdick

Bruce E. Burdick

Posted

Questioner, use prudence and see an attorney before giving up years of work. There are a number of ways to transition to a safer domain name. You need to see a lawyer. DO NOT do as you propose and "offer it to them" as if you do that wrong you peg yourself as a cybersquatter and just call their attention to you. Your lawyer can advise you how to do this at minimum inconvenience and lowest risk. Buying a new domain is cheap, so research it a little and come up with your own name in cooperation with your attorney, so it is properly cleared. If you get a catchy protectable servicemark for this you may actually come out ahead in the long run for having made the change.

Asker

Posted

Bruce, thanks for your comment. My code base and databases will still exist so I won't be "losing" any work, and as you imply, the site itself doesn't care what it's called. It just needs a place on the web. I'll work on a new domain name that is "safe" and perhaps TM it as well. I may even already own the perfect domain name. As far as the "league specific" names I already own I believe I will simply "disown" them via the registrar's "delete from account" tool. I'm in no mood to take any chances by keeping them, and as you said no need to draw any attention to it by even offering it to the holders of the marks. Before putting any new domain out there for this type of project I'll talk with a TM attorney about using the actual team names in the site to get an understanding of what they feel is the proper way to do it.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Questioner, contrary to Attorney Burdick's admonition, there is no downside to offering MLB the registration for the cited domain name. You've already told us that you have never published a website using the domain name. While use is not necessary for a finding of cybersquatting, there is no likelihood that MLB would file a lawsuit and incur the costs of litigating a case when you are VOLUNTARILY offering to transfer it the MLB domain name. In fact, its legal department would thank you.

Asker

Posted

Ha ha. A legal department "thanking" me. Why don't I like the sound of that? I say that somewhat in jest, but at the same time I have no intention of doing anything other than letting sleeping dogs lie and getting out of their yard asap. They might like it if I bring them a bone, but if it could even conceivably cost me a limb then why chance it... especially when at most they'd give me a wag or two of the tail and then watch me suspiciously as I exited the premises (that's their job and I don't fault them for it).

Posted

In principle a Trademark and a Domain are different registrations and are independent of each other. Having said that, there are many exceptions to that rule and if you register a Domain corresponding to a famous Trademark, your registration would be tantamount to cybersquatting and will be removed at a minimum.
With respect to the idea you propose, you are literally walking on a mine field and while you may be able to accomplished what you want, you must consult a TM attorney to ensure that you make permitted use of the teams registered trademarks.

USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.

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Posted

No. That is trademark infringement.It's nothing but an obvious attempt to rip off the MLB and imply an association. The MLB is likely to say drop and give us fifty (thousand dollars, that is!) and the domain name. Don't do this.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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Posted

Well, if you're itchin' fer a fight with the Major League Baseball folks, you might develop the Internet site you outlined and await a letter from one of their attorneys. Then you could engage an attorney to respond, urging that your use of MLB and the team names is permissible "nominative use" of the respective trademarks. Perhaps the dispute would be resolved in some way short of litigation, perhaps not.

For some background, see the article I coauthored in the August/September issue of World Trademark Review. That article was about "nominative" use of another company's trademark and cites the case New Kids on the Block v. News America Publishing 971 F.2d 302 (9th Circuit 1992).

For any actionable legal advice on the subject you wrote about, you'd need to hire your own attorney to advise you confidentially as to your rights and obligations, as well as the costs of litigation or an administrative proceeding under the UDRP, an arbitration procedure set up by ICANN for such disputes.

This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA www.elman.com

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Gerry J. Elman

Gerry J. Elman

Posted

PS - My article was in August/September 2010 issue of WTR.

Bruce E. Burdick

Bruce E. Burdick

Posted

Nice article.

Posted

Asker: I just read the very useful answers and commentary by my colleagues. But they are not being blunt enough with you. It sounds from your questions and commentary that you are planning to handle this without legal counsel. Let me stress to you what a terrible idea that is. You are hoping to silently walk away into the sunset without getting the attention of MLB and its cavalry of lawyers. But how do you know whether you have already received their attention. Indeed, you have now essentially admitted engaging in blatantly illegal conduct on this public-web-site. I assure you that members of law enforcement any many private attorneys carefully review these questions and actions and are always looking for money-making opportunities. There is a very good chance that this dialogue will come to the attention of MLB and/or that you are already on their radar screen. You have created a mess for yourself by engaging in illegal cybersquatting, trademark infringement and unfair competition---and sometimes the cover up can be worse than the crime. Now that you realize that you have done something shady, I hope you are smart enough to retain experienced IP litigation counsel with criminal defense experience to guide you through the process of minimizing the damage. Remember not to talk about this situation with FBI, law enforcement or any other third parties---while criminal prosecution for what you have done is unlikely, it cannot be ruled out. You need to protect yourself---you have already demonstrated terrible judgment by engaging in the conduct described here and you can neither talk not "self help" your way out of this mess. Get a lawyer.

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