Domain Trademark Question
 

Let's say, hypothetically of course, that I bought a domain that contains a trademark. For example, let's say I wanted to promote Netflix so I register something like ilovenetflix.com. Now, knowing that's a trademarked name, I contact Netflix and they give me their permission to use that domain to promote them. Since I have been given permission I build a site and do some SEO and start getting some organic traffic.

Fast forward a few years, Netflix sends me an email letting me know that I am using their trademark in my domain and they want me to transfer the domain to them immediately. I show them that they gave me their permission and they inform me their TOS has changed and they are now cracking down and I must hand over the domain immediately to remain in good standing with them (and presumably not have the domain seized).

Should Netflix be responsible for paying for the time spent building a site that I was given permission to build?






BTW, this has nothing to do with Netflix but since I have a Netflix envelope on my desk I chose them as my example.

what type of documentation did you get from them when they "gave you permission" to use their trademark to promote them?

Just an email but fortunately I still have that email.

the exact wording in that email may be part of the answer to your question, but even then their lawyers might have a different idea

I would think they would kick you out of their affil program first for some bullshit unrelated reason and then it won't matter if they allowed you to use it or not...

Without a strongly worded contract, my guess is they can withdraw permission as easily as they can grant it.

This is not legal advice and I am not a lawyer.

As an addendum, my general advice would be.. don't build houses on other people's land.

Keep in mind it will cost them to send this complaint to ICAAN arbitration, so offer to sell them back the domain to make up for your costs.

However this is the same advice I have had from our legal team in the past :2 cents:

I think that if permission is granted , unless you have a solid contract, that permission is what is known as 'fortunate use' meaning you're fortunate while you can use it but when the game changes the trademark owner will win.

We have successfully claimed and won these costs back in court in Australia after a UDRP claim. Simple default judgement through VCAT.

offering to sell a trademarked domain to the trademark holder is almost always positive proof of bad faith and a slam dunk when it comes to UDRP. Doing what you suggest is not advised.

Correct. Trademark = property. The owner gets to determine the use of its property.

The affiliate program may react like Dirty D did here: https://gfy.com/showthread.php?t=941614

My attorney just suggested that we try to work it out like gentlemen but if anything is said in either direction that might be construed as a threat or hostile in any way to call her and she will get involved.

Her advice was to not offer to sell them their trademarked domain but request reasonable compensation for what was put into the website that was placed on the domain.

What baffles me is that these people are acting like I care if my affiliate account with them is in good standing or not. They've said something to the effect of "give us the domain and your account will be in good standing." Like I am going to continue sending traffic to them after this.

The ONLY way this can work in your favor is if we are talking about a substantial amount of money. That is the only way it would make it worth your while to fight it.

Case in point: www.webergrills.com

Back in 2000 Weber requested the domain name be transferred to them. The hardware/home improvement company using the domain successfully fought to keep the name citing their substantial investment in the branding, advertising and marketing efforts to make the domain a successful Weber grill online store. They sold Weber grills on the site. They have sold decades worth of the grills before going online.

At first Weber gave their enthusiastic support for the site. But when it did better in the search results then their own site they decided to cut out the middleman.

On May 15, 2000, the WIPO Administrative Panel unanimously rejected the Weber-Stephen Products Co. Complaint.

Source: http://www.allbusiness.com/legal/int...#ixzz1YRFiN6tW

Weber has since bought the domain for an undisclosed amount and redirected it to their own domain.

I'm not a lawyer, but the problem as I see it, is you registered the domain first and then subsequently asked for permission to use it, instead of getting permission first.

Couldn't have said it better.

Even employee changes can screw you. As an affiliate you have zero leverage. You have no value.

By the way, most emails will never stand up in court. We all know how easy they are to fake out.

just talked to my lawyer he said you should ignore it.

I always wondered,

seems Naked.com has a trademark on it..

Is that a useless trademark? Not sure if they would have the rights to sue say.. NakedSluts.com, NakedBitches.com, imnaked.com, etc.

True, but I did get permission before I spent any time developing the site. Had I not been given permission, I likely would have either given them the domain or just let it expire.

I am outranking them for a few terms and I think that's probably what this is about. It's either for the SERPs or they like the domain.

Fortunately the person who gave me permission is also the person I am dealing with on this issue. He's not disputing the legitimacy of the email granting permission at all.

Nobody smart would let you use their trademarked name in you domain.:2 cents:

I don't know this area of domain law but would agree that they are likely able to revoke rights to the use of the trademark whenever they see fit. If you didn't have any sort of contract put in place, there's not really anything you can do about it. I highly doubt you'd be entitled to anything from them, and you should definitely not try to sell them the domain. In these matters it's best not to rock the boat, as they could attempt to sue you for damages and while it would seem farfetched for that kind of case to get anywhere in court given their granting of use of trademark to you prior, you having regged the name first certainly doesn't help your case.

Either way, keep in touch with your lawyer.

IIRC, similar UDRP complaints in the past have been dismissed in favor of the domain registrant, due to prior or existing business relationships. However, such decisions basically say that these types of disputes are beyond the scope of the arbitration panel and should be settled by a court.

You do not have to be wrong to be sued. People always seem to forget that.

If it's a large company (netfix) the can sue you and the cost to them is meaningless.
Meanwhile your legal costs are likely more than it's worth to fight them.
They know all of this and can use the threat of lawsuits to get their way from 99.9% of webmasters

Don't spend your time doing anything "around" somebody name, website, or product. :2 cents:
Companies going out of business or change name all the time.

Yea, that's the problem with ever dealing with anything risky in a trademark sense. You can get screwed without losing.

Haha anyone want to guess which sponsor prompted this thread?

lightflesh?

Contact me off the board at [email protected] for some general advice. If the trademark holder is on member of this community I would recomend you dont make any firther comments. Good luck.

I have some general advice for you; eat shit and die.

It's a legal question. To be sure you need to have a lawyer look at the specific case and circumstances because it is entirely possible that technicalities can change around the answer.

In practice though most affiliates are easily bullied and they seldom have any power. They are looking to get money owed to them by the sponsor/company or they are afraid of a legal battle or threat. Personally if a sponsor did this to me I would just assume that eventually they are going to find another way to screw me out of the money because they are showing that they see me as a liability and not an asset.

I pointed it out in FNCash thread but there are potential issues which may not make the sponsor's claim to the domain so clear cut:

http://indianaintellectualproperty.w...demark-rights/

http://www.lawdit.co.uk/reading_room...ter%20date.htm

http://en.wikipedia.org/wiki/Trademark

Companies tend to think they can get away with just about anything but often the reality is the main reason they are able to get away with it is because few choose to fight them hard on their actions. It's just like how technically shaving is usually fraud and breach of contract. In theory under certain circumstances and with a good enough case it could lead to criminal penalties.

If one ever does find themselves in this situation be very careful with what you say to the sponsor/company as your words could come back to haunt you. Remember that the company probably has a legal team and they may be trying to get you to say or do certain things in order to improve their own legal position. Ideally you need a lawyer to represent you and your interests. If not you need to be very savvy and read all you can on the laws.

Again, the fair thing for them to do would be to take ownership but leave it pointing to your server or something similar.

They can honor their agreement with their business partners while still protecting their brand. The customer still has to order the product from their site.

They don't have to be greedy assholes when there is a solid middle ground that keeps everybody happy and them protected.

At this point there is no question they allowed and even encouraged this for years.

It depends on what a judge rules, but my opinion is that you would be at their mercy. Signed affidavits could sway a judge, (an email less likely, they tend to not hold up in court and they could always argue that the person you corresponded with wasn't in the position to give you permission); but trademark infringement is trademark infringement regardless of the premise you committed it. So even if a judge doesn't rule in favor of them getting compensatory damages you would likely still lose the domain name assuming you registered it after they trademarked the name.

Does the email from them specifically mention the affiliate program?

This is an estoppel case. You have several grounds for estoppel, including promissory. Because they allowed you to use trademark for some time and you made an investment in reliance on that permission, they can't now change their mind and take back that permission to use their trademark in the way described in the email.

HOWEVER, you also agreed to their affiliate agreement, which probably gives them the right to terminate your affiliate account without cause. So they've given up some rights under trademark law, but probably not given up their general right to stop doing business with any affiliate at any time.

So the question then becomes "does their email give permission to use their trademark ONLY for the affiliate program, or do you have the right to use it for some other purpose?" Obviously to answer that question one had to look at the exact wording of the email exchange.

Even employee changes can screw you. As an affiliate you have zero leverage. You have no value.
Even employee changes can screw you. As an affiliate you have zero leverage. You have no value.
Even employee changes can screw you. As an affiliate you have zero leverage. You have no value.
Even employee changes can screw you. As an affiliate you have zero leverage. You have no value.

Exactly.