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Old 05-01-2003, 06:57 AM   #1
robhoran
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Default Domain Legal Issues

Today I was hit with a letter from the lawyers of Warner Brothers over a domain name dispute. Bascically I own and have developed the domain shopharrypotter.com to promote Harry Potter gifts and offers from Amazon and the Warner Brothers online store.

Now, Warner Bros. want me to hand the domain name over to them as it is a violation of their trademark. They also want to ensure that I don't use the terms "Harry Potter" in any META tags in any future websites.

I do not believe I have a choice in this and will probably have to surrender the name.

However, the reason for my posting is that I wondered if anyone had an opinion of what can and can't be done with domain names that may relate to trademarked names.

There are hundreds if not thousands of websites out there that contain some or all of a trademarked product. "nintendo" who posts regularly on this board has a couple of websites who's URL actually contains the word "nintendo" which is a registered trademark. Does this mean that anybody doing this and/or containing these words in their META tags could be liable for prosecution?
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Old 05-01-2003, 04:17 PM   #2
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I think these sorts of issues are gradually becoming clearer as time goes on. I would expect that any domain which contains a trademarked term could be subject to a trademark holder's request to hand it over. It's particularly understandable when the site is being used to profit from the trademarked term.

Unless you refuse to hand over the domain, it's extremly unlikely that you would be sued/taken to court over this sort of matter.

I'm not a lawyer but I would imagine that the only time you might be legally able to keep such a domain is if you had an existing business (using that name) which pre-dates the trademark and/or does not attempt to confuse/dilute the value of the trademark.

Nintendo (the company) could certainly go after Nintendo websites if they had the desire to do so however consider how much time and expense that would be involved. Also, many game sites are primarily used by fans that are promoting, supporting them. Imagine the ill-will that would be generated if a big company squashed some of those sites that webmasters have been passionately building over several years....
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Old 05-01-2003, 04:42 PM   #3
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If it is worth it you could probably work out a deal to pay them for using the trademark.
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Old 05-01-2003, 06:12 PM   #4
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Sorry to hear this:

1. The meta tag issue along with perhaps the page title is far more obtuse and less clear. Perhaps each is a seperate issue but I'm inclined not to agree to not use them in a written statement although I'm not an attorney and you may wish to seek the advice of one .

These issues point to their desire to limit/remove your rankings in a given SE. An interesting topic which I don't think we have ever beat up on Note: Google already has a very specific series of actions to lodge a complaint on this issue but it's unclear to me exactly how this has been resolved in eitherr the courts and or WIPO?

2. I just checked for you. They have about 17 trademarks. Please note that many of these also include their "mark" aka logo and I respectfully believe that your logo/mark could also cause confusion in the marketplace since it's quite similar.

3. At this stage I would do this:

Email send, mail, and fax them a very very polite letter which states your case and only your case (not what other geeks do) in a very respectfull manner and offers the following:

I can keep my site and I will also:

1. Create a new logo/mark subject to your approval

2. Supply me with the exact verbiage I should use on every page of my site to avoid confusion in the marketplace. Not associated with -----bla bla bla

3. Begin this email with:

Hello <insert name on email>

Thank you for bringing this issue to my attention.

Hold your breath and wait for a response. Fingers crossed for you. If not, their is no sence in exstending the dialog.

<wew>
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Old 05-01-2003, 06:20 PM   #5
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Sorry to hear about your troubles. I think whether WB will allow you to ultimately retain this domain depends on their true motives for going after it. Shopharrypotter.com is a very catchy, "e-commerce" ready domain. If WB actually wants to develop it into a Harry Potter store, then they will go after it will full force, leaving little compromise and under the cloak of trademark violations. However, if their motive was simply to thwart potential trademark issues, then an email to them seeking a compromise in return for displaying some sort of legal notice on every page of your site often suffices.

Best of luck. I know of specific cases of Sun Microsystems going after domains with the name "java" a while ago, in which the compromise for keeping the domain was simply to display a legal notice on the site clarifying the webmaster's lack of relationship to the company.
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Old 05-01-2003, 06:43 PM   #6
Rhea
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A few years back WB very aggressively went after Looney Tunes fan sites that had little or no advertising on them. I wasn't aware of this until after I had spent weeks creating a rather large Looney Tunes section for one of my sites. When I did become aware of the situation I decided to hold off uploading those pages. I sure didn't want WB coming after me.

Anyway, the MINUTE I saw that WB had joined CJ as an advertiser I signed up with them and uploaded my Looney Tunes pages with tons of WBShop links all over it. WB has never bothered me about my site, which has disclaimers all over it, BTW. Perhaps this is because I generate a few bucks for them, however my domain name has none of their trademarks in it.

You might want to offer them a deal where in exchange for keeping the domain name you agree to only advertise WBShop products. It's impossible to know if there's any flexibility in their stand unless you offer a compromise and see how they respond.

Good luck. I do know what it's like to have corporate America (and their legal representation) breathing down my neck. No fun at all.
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Old 05-01-2003, 09:35 PM   #7
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"Does this mean that anybody doing this and/or containing these words in their META tags could be liable for prosecution?"


sorry but this is BS!!! they can't force anyone to remove any word from the tags...even if it is trademarks envolved.
about the rest i don't know :\
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Old 05-02-2003, 12:19 AM   #8
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Looks as though you are not alone with this. There is a brief mention of WB / Harry Potter here in an article in the Boston Globe:

http://www.boston.com/dailyglobe2/12...lusions+.shtml
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Old 05-02-2003, 09:35 AM   #9
Czar

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Warner Bros has produced a great deal of bad blood over its Harry Potter crackdown. This started in 2000 with a hugely aggressive and arrogant push against Harry fansites of all shapes and sizes. During that time, parent groups were calling on audiences to boycott the first Harry movie in response to several teenaged (or younger) fans receiving legal letters and demands from the WB team.

Fox and others engaged in similar action against Buffy and Star Trek fansites for a while, but seem to have eventually resigned to the idea that the underground fan culture helps their franchise brands more than it hurts them. The difficulty, of course, is in proving that they are active in cracking down on legitimate trademark infringement (this is a legal responsibility of all trademark owners), so as to preserve the mark against dilution or threat.

In regards to the meta tag issue, things are still unclear. The most notable case I recall concerning trademark claims over meta tags was Playboy's suit against one of its former Playmates who used the terms Playboy and Playmate within her meta tags and on her website. Both were cited as grounds for trademark infringement, but I understand that Playboy lost the case.

Once I get a bit more free time, I'll try to dig up links to these articles from within the unchartered depths of my bookmarks for reproduction here.
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Old 05-02-2003, 12:02 PM   #10
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To follow up on what Czar said about the Playmate suit see http://news.com.com/2100-1023-210493.html and http://news.com.com/2100-1023-203251.html?tag=rn

Quote:
Just yesterday, Playboy announced that a Virginia court awarded it $3 million from two Hong Kong-based pornographic Net sites that wrongfully used Playboy's trademarks in metatags. But those sites have no affiliation with Playboy and were judged to be confusing consumers who were looking for Playboy.

On the other hand, Welles contended that because she used to work for the media company, her site's content was logically related to Playboy and she was justified in her use of the terms in metatags.

Playboy still argued that Welles was free to leverage her title--but not in a effort to compete with the company.

However, the judge found in favor of Welles, stating she is entitled to "fair use" of the trademarks, and that her site was not "diluting" Playboy's trademarks.

"The problem in this case is that the trademarks [Welles] uses, and the manner in which she uses them, describe her identity," Judge Judith Keep stated in her ruling.

"Ms. Welles has not created a Playboy-related Web site," the judge continued. "She does not use 'Playboy' or 'Playmate' in her domain name; she does not use the classic Playboy bunny logo; she inserted disclaimers which clearly state that the Web site is not endorsed by Playboy Enterprises and the font of the 'Playmate of the Year 1981' title is not recognizable as a Playboy magazine font."

Furthermore, Welles was given the green light to use the term "Playmate" in metatags. Judge Keep stated that "the defendant has used the plaintiff's trademarks in a good faith to index the content of her Web site," and that "much like the subject index of a card catalog, the metatags give the Web surfer using a search engine a clearer indication of the content of the Web site."

Last edited by Ted S; 05-02-2003 at 12:04 PM.
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Old 05-02-2003, 12:17 PM   #11
maddeningcrowds
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I don't believe this is as clear cut a trademark infringement as this thread is making out. The site is using a trademark to promote those products that the trademark is used for.... its is not selling competing products.

When you use a trademark name to refer to the product that the trademark is for, its difficult to see how that is a trademark infringement - it is an entirely correct use of the trademark. That's what trademarks are for?!!?!

Quote:
They also want to ensure that I don't use the terms "Harry Potter" in any META tags in any future websites.
Again this doesn't apply unless you are competing with the products as listed under the trademark. If you site is reviewing harry potter, discussing the quality of harry potter products, presenting opinions about JK Rowling's links with witchcraft etc etc - these are "fair use" of trademarks.

The playmate suit was about competing sites putting those terms in the meta tags.

<i am not a lawyer>
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Old 05-02-2003, 12:49 PM   #12
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FYI: the WIPO Harry Potter case:

http://arbiter.wipo.int/cgi-bin/doma...g&case_id=1256

The case:

http://arbiter.wipo.int/domains/deci...2000-1254.html

Fair use exstraction:

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

Decision

For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondent's domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names set out in Para. 2 of this Decision be transferred to the Complainant.
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Old 05-02-2003, 01:00 PM   #13
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Do you suppose that people think that if a trademark owner is big, he should/could allow their trademarked name to be used by someone unrelated to their registered trademark?

WHether for profit or not, it should be allowed?

I'm not suggesting that we run through the internet removing domain names and website names using someone else's trademark....and yet...there are laws to protect the trademark owner and the trademark itself.

I'm one of them. I registered and own the trademark of my products of my website.

You can believe that when I find someone else using my registered trademark, I notify them with a polite email to remove the name from their use.

Why? If I don't do it right away I think it would be harder to request it later...

Trademark law is clear on certain points.

I'd suggest you find a trademark attorney and see what rights and responsibilities you do have as the domain owner of a trademarked name owned by someone else.
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