How can we protect a domain name and trademark internationally?

copyright/trademark infringement - domain name

• I am about to open an e-commerce web site that sells Jeep parts. If you do a search in google for "jeep parts" you will find hundreds of web sites that have the word "jeep" within their domain name (www.jeep....com). Is it legal to do this? I mean, if Jeep is a registered trademark of Daimler Chrysler, how can somebody legally reserve a domain name with the word jeep in it? Then again, how can somebody selling jeep parts not have the name "jeep" within their domain name? It is a key selling point to drive people to the web site. Since there are literally hundreds of web sites with the name "jeep" in their domain name, has Chrysler simply looked the other way? One issue to note is that 99% of the web sites have a disclaimer on the bottom of each page stating that "Jeep is a registered trademark of Daimler Chrysler,...etc...." Basically, I want to know if using the word "jeep" within a domain name is legal. Just because hundreds of other people do it, I am not convinced it is legal and need confirmation or persuasion for either argument. I will require references to back up opinions.

• Answer:

  Hello hal12b-ga Generally speaking the act of registration is not an infringement if the name is generic, there may also be cases where there are companies with the same name (but are different entities in different countries). Companies usually take to legal action when people register their trademarks to use the name to generate traffic to their own sites, or use the name against the best interests the trademark holder, or in bad faith. As you are clearly selling Jeep parts you are part of the service industry to their vehicles, and in my personal opinion are working with them forming a symbiotic relationship. However if you are selling third party Jeep parts, that ‘may’ put you in a different light. They could view you as a competitor to their original equipment part sales for example. There are companies out there who use a trademark in their name and the manufacturer takes no legal action and even something like epsonprinter.com ( http://www.epsonprinter.com/ ) is allowed or perhaps not known about. For your reference please read: Domain Names and Trademarks Chilling Effects.org http://www.chillingeffects.org/domain/ Frequently Asked Questions (and Answers) about Domain Names and Trademarks http://www.chillingeffects.org/domain/faq.cgi where the following questions are covered: Question: Isn't the domain name registration process "first come first served"? Question: How was I supposed to know that my domain violates somebody else’s rights? Question: What is a trademark and why does it get special protection? Question: What is trademark infringement? Question: Can a trademark give someone rights in common words? Question: How do I identify the owner of a domain name? Domain names May 98 D. Michael Rose The Stage.co.uk http://www.thestage.co.uk/connect/eagle/0510.shtml A useful resource for Domain Name Law & Domain Name Disputes ktlaw.com http://www.keytlaw.com/urls/urllaw.htm Here are some case studies: This AOL case is similar to what you are describing, a company was using the acronym ‘AIM’ as part of their domain names (AIM is the name of AOL’s instant messaging service) Aimster to Appeal Panel Decision on Domain Name May 22 2001 theStandard.com http://www.thestandard.com/article/0,1902,24691,00.html Another AOL case America Online, Inc., et al. v. Chih-Hsien Huang, et al., 2000 phillipsnizer.com http://www.phillipsnizer.com/int-art203.htm “The court also noted that: a claim of trademark infringement or dilution arises from the commercial use of a domain name that is similar or identical to a person's trademark, and not from the mere registration of the domain name. Thus, for domain name disputes based on federal or common law trademark infringement or dilution, the relevant tortious act is the use of the domain name, and not the act of registration. The ACPA, however, provides a cause of action against a domain name registration based on the bad faith registration of a domain name that is identical or confusingly similar to, or in the vase of a famous mark, dilutive of, the trademark owner's mark or marks.” Foreign Domain Name Disputes 2000 Oct 2000 The Computer & Internet Lawyer Aspen Law & Business mama-tech.com http://mama-tech.com/foreign.html This case the ‘cybersquatter won’ Political cybersquatting scores a win April 29, 2002 Lisa M. Bowman News.com http://news.com.com/2100-1023-894311.html?tag=cd_mh Lottery Operator loses Domain Challenge July 17, 2002 Demys News Service http://www.demys.net/news/02_jul_17_lottery.htm New Rules, New Tools, New Threats, New Opportunities April 1, 2001 By  Desirée de Myer .Smartbusinessmag.com http://www.smartbusinessmag.com/article2/0,3959,128750,00.asp In summary I feel that using the Jeep trademark in a domain name ‘could’ result in legal action if the trademark holder decided they wanted to take action depending on their attitude towards the matter. However the challenger does not always win, but it would be foolish to assume that you would not lose and especially against a bigger company. If you wanted to be clear about the issue you ‘could’ contact Daimler Chrysler and make a passing comment that you would like to register a jeepxxxxxx.com name and ask them for ‘approval’ as a parts supplier to their vehicles. You may obtain Suggestion Agreement forms and procedural information by writing to the following address: DaimlerChrysler Outside Suggestions Office CIMS: 483-01-07 800 Chrysler Drive East Auburn Hills, MI 48326-2757 From a business point of view you are working ‘with them’ rather than against them. As you are selling ‘jeep parts’ having a domain name of ‘jeepparts.com’ would seem on the surface OK, but then again I am not Daimler Chrysler, and to argue it in court would be a pain :-0 Technically speaking Jeep is a trademark and subject to trademark rights, so there is no point in bending trademark rights, but it depends ultimately on each company’s tolerance level and how zealously they enforce the rules, if you do want to go down the avenue of registering a name containing the trademark. Search Strategy: infringement copyright "domain names" ://www.google.com/search?hl=en&lr=&ie=ISO-8859-1&q=infringement+copyright+%22domain+names%22&btnG=Google+Search legal "domain name infringements" ://www.google.com/search?q=legal+%22domain+name+infringements%22&hl=en&lr=&ie=UTF-8&start=0&sa=N I hope that helps, regards lot-ga