Question about Tm'ed name with affiliate - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

11-02-2002, 04:09 AM

I recently got a name that contains the word of the company in addition with another word which is generic (similar to Darkfire's situation). However, I haven't been sent a C&D letter for it yet, although I can foresee a likelihood of that happening. The .net and .org are taken by this company, but for some reason the .com lapsed and I was compelled to pick it up. I emailed the company about their affiliate program and asked them if I could use their company name plus an addition in a chosen domain name and they responded with generic info on how to join their affiliate program.

I am thinking that I just got sent an auto email, but how can I find out if they allow this or not? I called them the other day and got somebody on the phone who didn't know a thing about the affiliate program, maybe the lady was new or something, but no one there at the time could tell me anything about it and they instructed me to email the website.

The name I got is so well-known that I'm getting considerable traffic to it already after just picking it up. My intentions are to join their affiliate program, utilize the traffic that would benefit them while also making commission off of sales. I know most of you will say I should have spent my money elsewhere, but in the case they contact me wanting this domain, what are the measures I should take? Is this one I should not have even messed around with? Thanks in advance for your advice and opinions.

**dvdrip** · 11-02-2002, 08:15 AM

Was the .com theirs before it expired?
I think they should learn not to depend on autoresponders that much. You should use that against them if they send a C&D.
I would say go ahead and use it with the affiliate program.

**LawyerSturgeon** · 11-02-2002, 09:09 AM

I have won a couple of cases for retailers who have used trademarks in their domain names.

One is ChantelleBra.com - the manufacturer of lingerie was Chantelle and the retailer was marketing the products. We were able to keep the domain name.

Another is FakeBake.com - The Complainant had a trademark in FakeBake and the Respondent was retailing the product. The respondent, my client, was able to keep the domain name. Case is here http://www.disputes.org/eresolution/decisions/0968.htm

News article about fakebake.com victory is here http://www.domain-name-dispute-lawye...20Articles.htm

However, there are other cases that hold differently.

Hope these help.

Stephen H. Sturgeon, Esq
DomainEsq.com

**Ari Goldberger** · 11-02-2002, 11:24 AM

One important issue is whether or not the company's affiliate policy prohibits the use of their trademark within a domain name. If it does not, there is a good argument that such use does not violate the UDRP since it can be argued you have a legitimate interest in the domain name. If the policy does prohibit such use you would be less likely to prevail.

11-02-2002, 12:47 PM

In the Affiliate Agreement, there is no mention of not being allowed to utilize their trademark within a domain name. That is why I am not sure if I stepped onto some potentially rough territory or not. I'll email them once more to see if I generate a "human" response, and if I get the same reply, I'll move forward with the affiliate. If I get an unfortunate letter, I'll let you know. Thanks for your helpful advice.

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Btw, nice article, Steve.