Subdomain trademark issue

[pam]

Doing a search in Google today for one of my domain names (it's trademarked) I noticed a lot of people using that name in their keywords to get higher placement. Nothing I can do -- but -- there is one website using my trademarked name as their subdomain, i.e. trademarkedname.theirdomain.com.

They are using the site for the exact purpose as I am, as described in the trademark description.

Is this 'legal'? The site is registered with GoDaddy and the registrant is in China.

[jberryhill]

"Nothing I can do"

Why do you believe there is nothing you can do about use of your trademark in things like keyword meta-tags? That's a very cut-and-dried area of TM enforcement.

Oddly, there are people who have gone after nLD's on bad theories, and have gotten some bad judgments, but you are on much clearer enforcement ground with the keywords than you are with the 3LD's. The bottom line, though, is that if your trademark is being used for the purpose of unfairly competing with you, then the likelihood is high that there is a legal remedy.

[pam]

"Nothing I can do" as in Google doesn't give a damn and won't intervene. They claim if the words are used as part of an AdWords campaign, they will investigate, but so far have done nothing.

First page of Google has almost 100 listings with my trademarked name in the keywords, or in text on the website to mislead the public. I would think the legal costs to go after all these people, especially those on free hosts, would be ridiculous.

[HOWARD]

Your problem is not with Google, but with protecting your trademark. Filing a UDRP Action would probably cost between $2500 and $5000, including attorneys fees, although a law suit under the ACPA will be much more.

[NameAlot.com]

Well in terms of the trademark being used as keyword... a formal letter of possible suit can be sent out to those companies. The cost of losing customers to there unfair competition may offset the cost of the lawyer fees in the long run from the customers you get back. And in terms of dealing with the site that has your trademarked name as a subdomain.... filling junction via WIPO is probably the best way to go. It is cheaper then the courts, you get swifter decisions, and WIPO traditionally falls in favor of the Plaintif. This is not legal advice, just advice from experience. But good luck with everything.

Cheers

[actnow]

Pam,

I suggest you start the process by hiring one of the lawyers on this forum.

Everyday you delay, you are going to make it more difficult to stop.

Or, you can let the goodwill value of your trademark decline daily.

[jberryhill]

"especially those on free hosts"

On the relative scale of difficulty, they are the easiest targets, since trademark violations are normally against their terms of service.

"Or, you can let the goodwill value of your trademark decline daily."

If the trademark is challenged in the future, it is helpful to have evidence of enforcement activities. This does not have to constitute suing the entire world, as a hefty stack of c&d letters will normally do quite nicely.

[Steen]

I thought Pam was a lawyer?


Offtopic: Pam- you posted a helpful TOS/disclaimer generator link in a thread deleted because it was created by a member who was banned.

Do you happen to still have it?
Thx

[ZaZZeR.com]

Just a quick note: Google pulled all sponsored links that used the term "kazaa" and it is not even trademarked yet (to my knowledge). Maybe you could send them a letter like kazaa did and get them to at least not allow your trademark name in adwords.

[pam]

Me, a lawyer? LOL, no. Wanted to go to law school, never did.

I'm trying to remember that link, the only one I can think of offhand is the Privacy Policy link generator I use for all my adult websites. If that's what you want, just PM me and I'll pull it for you (no pun intended).

On the trademark issue, I've sent several emails to addresses in the registrar database and if they don't bounce back, they're ignored.

I also wonder -- my trademark is on my domain name, which is really 3 words -- so, for example, let's say I trademarked, "Sex Is Good" for sexisgood.com (this is totally made up, if it's owned, it's not mine). If these sites put "sexisgood" in their keywords and text instead of "sex is good", are they still infringing? Maybe a better example would be "Frito's Corn Chips" and people using "fritoscornchips" as the wording.

I thought Pam was a lawyer?


Offtopic: Pam- you posted a helpful TOS/disclaimer generator link in a thread deleted because it was created by a member who was banned.

Do you happen to still have it?
Thx

[jberryhill]

"Maybe a better example would be "Frito's Corn Chips" and people using "fritoscornchips" as the wording."

Well, what would be the purpose of their doing that? It should pretty obvious that if they are trying to generate traffic on the basis of your trademark, that is pretty much the essence of infringement.

[adoptabledomains]

My Recommendation:

Send a Cease & Desist letter to the domain holders who are infinging. Include a link or the text of your trademark to show it's no bluff and that you DO have the TM.

If sites on free or paid hosts are doing it, send a note to the abuse department asking that the site be removed. Reference your trademark and let them know they may be held liable for knowingly allowing it after you've informed them. You can also do a reverse IP and send on the the IP number holder which could be their ISP, Host, or bandwidth provider.

The last thing I'd do is ignore it, or you could forgo your TM rights forever.

Good luck.