Is a TM sub-domain a violation?

[PokerPie]

Say I own zoomoo.com

Can I create and develop the following sub-domains?

paypal.zoomo.com
mtv.zoomoo.com
michaeljordan.zoomoo.com
cnn.zoomoo.com

On those pages say I target for those TM names and have advertising and the whole 9 years. Stuff that would be blatant TM infringement if ona regular domain.

Is this a violation? What could happen? Could I lose zoomoo.com with one complain on any of my sub-domains?

[flybuzz]

Without considering the content, I believe you can use whatever subdomain you want even if it's a trademark word. The risk I think is very low, but if you publish content that saying bad things about a company then your risk might increase a little despite freedom of speech. That's my opinion.

[PokerPie]

Thank you.

Many TM names are probably easy to rank for. Lesser known TM names that is. I imagine it would be quite easy to be the 2nd or 3rd listing in Google for some TM names.

I don't see why more people don't do this if it is in fact legal

[phineasphog]

I doubt there's anything to fear from a UDRP. But you could still get in serious legal hotwater if you arnt very careful.

[sdsinc]

As long as there is potential for confusion... you could get in trouble.
Subdomains like paypal.zoomo.com will most likely raise a phishing website alert somewhere.
In case of complaints/legal action the registrar can still take down the whole domain. Obviously all subdomains would be affected as well. The name is one thing, the content you put is another. Don't do anything silly.

[marcorandazza]

I believe you can use whatever subdomain you want even if it's a trademark word.

Good luck with that.

[draggar]

Originally Posted by phineasphog

I doubt there's anything to fear from a UDRP. But you could still get in serious legal hotwater if you arnt very careful.

Originally Posted by sdsinc

As long as there is potential for confusion... you could get in trouble.
Subdomains like paypal.zoomo.com will most likely raise a phishing website alert somewhere.
In case of complaints/legal action the registrar can still take down the whole domain. Obviously all subdomains would be affected as well. The name is one thing, the content you put is another. Don't do anything silly.

I fully agree with these. While you might be safe from a WIPO case you are still standing on extremely thin ice.

[marcorandazza]

On those pages say I target for those TM names and have advertising and the whole 9 years. Stuff that would be blatant TM infringement if on a regular domain.

This is trademark infringement. The operative issue is whether you are trading off the name of another, not where in the URL your infringement occurs. In this circumstance, you have both bad faith registration (although that might be open to argument) and bad faith use.

I doubt that a UDRP panel would find against you, as this seems to be beyond what the UDRP is supposed to deal with (but, research might reveal otherwise and a panel might buy a complainant's arguments to the contrary).

On the other hand, if you got sued in "real court," you would likely get pounded.

[dvdrip]

How is this a trademark infringement?

[draggar]

Originally Posted by dvdrip

How is this a trademark infringement?

If you make confusingly similar to their site, steal their content, or violate their TM, it's infringement.

I can register Quazzlestomp.com and if I make it look like a Google page, Google can go after me.

[dvdrip]

He didn't say anything about stealing.

[marcorandazza]

No, he didn't say anything about "stealing," and I think that term is unnecessarily accusatory.

However, the OP seems to fully understand trademark infringement - but seemed to be under the mistaken impression that if the infringement happens before the first "dot," then it isn't infringement. It is.

[dvdrip]

OK but that is still not infringement.
If you have a domain company.com and want to have subdomains for all the companies in the world like sony.company.com and list eg their financial situation, stock prices etc. then you are not infringing.
Also sony.company.com is the same as www.company.com/sony/.

[PokerPie]

I wasn't under any impression, I was asking a question.

The reason I asked was because I see a competitor of mine is using <my website>.<his domain>.com and he is ranking well for it for the name of my website. His site is a directory so he is not directly competing...and is actually advertising my site, however he never asked me for permission.

I'm not going to try and sue him for it but I may do it myself if it is legal.

[marcorandazza]

OK but that is still not infringement.
If you have a domain company.com and want to have subdomains for all the companies in the world like sony.company.com and list eg their financial situation, stock prices etc. then you are not infringing.

That isn't what the OP said.

The OP wrote:

On those pages say I target for those TM names and have advertising and the whole 9 years. Stuff that would be blatant TM infringement if ona regular domain.

[dvdrip]

"advertising and the whole 9 years" is ads and related content to me.
If he meant something else then...

But the only thing I can think that would be infringing is stealing content and/or pretending to be that other company.

[PokerPie]

advertising and the whole 9 yards* is what i meant.

i did not mean stealing their content, phishing or trying to confuse customers. i just meant that you were actively monetizing the sub-domain.

[marcorandazza]

I understood what you meant.

If you are monetizing a domain by attracting users to that domain by using another company's trademark and keying ads to those marks, that is trademark infringement -- whether you are trying to confuse, or merely "happen to" confuse, it still is consumer confusion.

We'll use the hackneyed example of "apple"

If you use http://apple.zoomoo.com and there are ads there keyed to apples, apple picking, applesauce, apple pies, apple strudels, and apple butts, you're fine.

But, if there are ads for computers, you're committing TM infringement.

Naturally, there might be fair use defenses -- for example, if apple.zoomoo.com has stories and news about Apple computer co., then fair use may apply.

[PokerPie]

That was a very clear answer, thanks.

Any other Legal Eagles agree with that?

You sound fairly certain about this, are you aware of any decisions by a court or other body backing up what you are saying?

[marcorandazza]

I'm actually not familiar with any cases that have specifically ruled on sub-domains. However, even invisible metatags have been held to cause "initial interest confusion" and thus were infringing uses of others' trademarks. (This theory is not without its critics, but the principle behind it seems sound).

If you have access to legal cases (I think these are available online), you might want to take a look at Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), and Promatek Industries, Ltd. v. Equitrac Corp., 300 F.3d 808 (7th Cir. 2002). Those discuss metatag infringement and initial interest confusion. And again, while the whole metatag thing is a bit open to debate, I think that the logic in Brookfield is sound:

"[a]lthough there is no source confusion in the sense that consumers know they are patronizing [the competitor] rather than [the plaintiff], there is nevertheless initial interest confusion in the sense that, by using [the trademark] to divert people looking for [the plaintiff's] web site, [the competitor] improperly benefits from the good will that [the plaintiff] has developed in its mark."

Ah, wait, Jews for Jesus v. Google, Inc., 05-CV-10684 (SDNY 2005) involved Jews for Jesus suing google for the name of a blog, jewsforjesus.blogspot.com. However, I think the case settled.

Patmont Motor Werks v. Gateway Marine, 1997 U.S. Dist. LEXIS 20877 (N.D. Cal. Dec. 17, 1997), seems to contradict my analysis, as that case involved a domain www.idiosync.com/goped -- and in that, the "goped" was just the "path" of the URL. Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 695 (6th Cir. 2003) was similarly decided.

However, I see a strong distinction between paths and portions of URLs. Nevertheless, a court might have held otherwise. I can do more research on it, but just not right now. It is a fascinating question, and I'll put up a corrected post if I find any decisions that hold otherwise.