Advice Needed

**James Jean** · 12-04-2008, 11:31 AM

Lets say I own a domain name that is 1 letter off from the name/brand of a major media giant.... can I be sued if I used the name to parody their site or portrayal of the news. I can pm the name if that would help. I wanted to create a sort of anti-site or a site that mocks and mimic their work. Any advice would be appreciated.

-James

**INVIGOR** · 12-04-2008, 01:19 PM

It's possible...

**diecipher** · 12-04-2008, 05:13 PM

I wouldn't, but that's just me

**Carter** · 12-04-2008, 05:16 PM

It's a risk.
You want create this anti-site for earn money?

**James Jean** · 12-04-2008, 05:31 PM

Originally Posted by Carter

It's a risk.
You want create this anti-site for earn money?

Like most things I would eventually insert a profit structure however the initial intent of the site would simply be parody base. I'm just not surely that given the similarity amongst the names if I would be violating "fair use" rights and/or any mark relating rights that the company is entitled to. I always thought that its ok if the site is used in a fan or anti-fan type manner. Or am I wrong. Or am I right and the issue is the name?

**Carter** · 12-04-2008, 06:05 PM

It's not easy.
The main company is famous?
You parking the name before start develop it?

If you think to earn not much money from this project I prefer don't develop this domain.
But it's only my personal point of view.

**James Jean** · 12-04-2008, 06:12 PM

Originally Posted by Carter

It's not easy.
The main company is famous?
You parking the name before start develop it?

If you think to earn not much money from this project I prefer don't develop this domain.
But it's only my personal point of view.

The company is super huge... profit would be substantial given that the name alone gets significant traffic. Lucky for me with that 1 letter addition it creates a new word which gets adds. Yes it is parked and pulls no add relating to the company. I'm going to throw something on it this as to minimize risk.

**Johnn** · 12-04-2008, 06:14 PM

There is always a gray line with the TM issue.

"Money Talk" - The question is if they file against you, do you want to spend the money to fight with them?

Walk away and you will know exactly what you lost. If you fight then ......good luck!

**stewie** · 12-04-2008, 06:18 PM

what is the upside? and what is the downside?

to be honest without knowing more details... I would think the downside is much larger. It sounds like this is a major company and I'm sure the cost of a lawsuit would be nothing to them. Not to mention your time and energy and cost to build a site ...I would lean towards not building that site, waste of time, energy and $$$money. JMO

of course i'm just giving general advice without details. Good Luck

**INVIGOR** · 12-04-2008, 06:21 PM

It's a simple matter of "is the juice worth the squeeze."
Typically, if you gotta ask about tm infringement, then you probably are.

**James Jean** · 12-04-2008, 06:29 PM

Originally Posted by wmloz

It's a simple matter of "is the juice worth the squeeze."
Typically, if you gotta ask about tm infringement, then you probably are.

That's the thing though, with that 1 extra letter it becomes a new word in the English language. I have never used it in an infringing or bad faith manner. My dilemma is future content. if I were to develop it in aforementioned manner could I be found libel and liable due to the similarities amongst the names and usage. I know it's ok to have GoogleSucks.com and have a site representing those feelings, however, the quagmire herein is that the names are similar. Can I develop a parody site on CNN if my domain name is CNN'N'.com?

**EnricoSchaefer** · 12-05-2008, 02:02 PM

Gotto love the first amendment. But it sounds like maybe you have already used the site for commercial profit? Even if it is for different goods and services, you could still ahv ea problem if the trademark is strong and/or famous. Can't un-ring that bell.

In any event, these are always fact specific issues and there is always risk someone will bring you to court if for no other reason than page waxing (threat letters designed for censorship).

Good luck.

__________________
Enrico Schaefer, Attorney
Trademark & Domain Dispute Lawyers
enrico.schaefer [@] traverselegal.com

**Gileyal** · 12-07-2008, 03:52 AM

As a lawyer (though not an american lawyer or expert on domains) I have to say that the TM is only one concern. Posting a website like the one you described may expose you to claims of slander and causing them commercial damages.

It works out well for companies to sue in these cases since most website owners don't have the funds and motivation to defend themselves adequately.

I would focus my energies on something else, unless you are certain you can stay on the right side of the fine line between humor and commercial torts.

**Brett Lewis** · 12-12-2008, 06:31 PM

can I be sued if I used the name to parody their site or portrayal of the news.

Yes. Whether the major media giant has the a legitimate claim or not, you can always be sued.

There are really two questions here. First, did you register a known trademark as a domain name, or something confusingly similar, with the bad faith intent to profit off of the mark? One of the factors considered in an ACPA cybersquatting case is whether the registrant makes a bona fide noncommercial or fair use of the mark in a Web site accessible by the domain name. A parody site, at least under U.S. law, should be protected speech. I'm not sure off-hand what difference adding a commercial component makes, other than potentially to cast the true intent behind the site into question.

The other issue is trademark infringement. Lanham Act trademark infringement is a strict liability claim, however, it, too, is subject to a fair use defense. A number of different factors would have to be evaluated to say whether or not the defense would likely prevail in a given situation.

Accordingly, if you do decide to build the site, make sure you know what's permissible and what is not.

**jberryhill** · 12-13-2008, 02:07 AM

Aberzombie.com -

http://www.wipo.int/amc/en/domains/d...2003-0260.html

The Panel entirely missed the boat here, but probably because they did not want to issue a decision on the basis of parody. The site itself is pretty amusing.

Instead of tackling the parody defense, the Panel found the name not to be confusingly similar to the mark, which IMHO was something of a cop-out. In a parody, the entire point is to call to mind the subject of the parody, that's *why* the name was chosen - i.e. for its phonetic similarity with the mark that is the subject of the parody itself.

**James Jean** · 12-13-2008, 01:54 PM

Thanks John, exactly the info I needed. I think I'll steer clear of the 500 pound gorilla for now. The name would be very questionable both in viewing (how it looks) and duality in meaning. The article was informative despite the panel getting it right (domain stays with registrant) for the wrong reason. Thanks again.

**jberryhill** · 12-13-2008, 04:26 PM

A parody site, at least under U.S. law, should be protected speech. I'm not sure off-hand what difference adding a commercial component makes

UDRP panelists have strange views about that. In the real world, of course, making money from a parody is usually the *point*. One of the more amusing pieces of software I ever owned was "Microshaft Winblows 98" http://www.giantbomb.com/microshaft-...s-98/61-21812/

**James Jean** · 12-13-2008, 04:48 PM

Originally Posted by jberryhill

UDRP panelists have strange views about that. In the real world, of course, making money from a parody is usually the *point*. One of the more amusing pieces of software I ever owned was "Microshaft Winblows 98" http://www.giantbomb.com/microshaft-...s-98/61-21812/

LOL

That was awesome! Curious to know if Microshaft ever gave you crap either for the name or the similarity in the logo.