Using trademark/brand name in domain

Russinating · 19 Jun 2012 at 09:15

Just after a bit of advice about something that sits within a wider issue. What's the law with regards to using a trademark or brand name in a domain name?

For example, if I decide to open up an online Oakleys shop, am I allowed to use Oakleys in the domain name (assuming they're legit and not fakes etc)? For example, buyoakleysunglassescheap.co.uk and cheapoakleysunglassuk.com are two results in the first 10 when searching for "oakleys sunglasses".

Are they 'allowed' or do Oakleys have any rights to have those domains shut down?

GravyMonster · 19 Jun 2012 at 09:33

I'm pretty sure Oakleys would be within their rights to send you a cease and desist for using their brand in your domain and site, but IANAL.

A better and more legal way would be to use a domain like cheapsunglasses.co.uk and then optimise the content to have a high keyword ranking for Oakleys or Ray-ban or whoever you're selling. Besides, the domain itself holds very little SEO weight and it's not like someone will type in 'cheapoakleysunglasses.co.uk' in to their browser just on the offchance it exists anyway

Russinating · 19 Jun 2012 at 09:50

If, going by your understanding, that cheapoakleys.co.uk isn't allowed, then is oakleys.cheapsunglassess.co.uk allowed? If not then what's the difference between that and cheapsunglasses.co.uk/oakleys?

Not arguing, just find it interesting, especially when you're dealing with the actual item (ie not t-shirt prints with Oakleys on or other reproduced items).

p_r_i_m_e · 19 Jun 2012 at 09:56

if you use a .co.uk (or any of the other nominet .uk tld's) containing the companies trademark nominet can force the cancellation/transfer (like they have > http://www.nominet.org.uk/disputes/drs/decisions/decisionssearch/?searchText=&x=38&y=2)
but using a subdomain etc on your site is perfectly acceptable as long as they are legit etc, its not seen as "passing off" then

Russinating · 19 Jun 2012 at 10:14

Interesting, thanks Prime.

I've also been in touch with a contact at Trading Standards and just quickly emailed a local TM solicitor firm for advice too but also wanted to get OcUK's thoughts in the meantime

uniQ · 19 Jun 2012 at 12:04

If it's a registered trademark then they are well within their rights to take legal action. Some companies ie Apple include trade mark guidelines:

8. Slogans and Taglines: You may not use or imitate an Apple slogan or tagline.

For example: “Think different.”

9. Domain Names: You may not use an identical or virtually identical Apple trademark as a second level domain name.

Not acceptable: “imac.com” “imacapple.com” “imac-apple.com” “podmart.com”

So your first port of call is to check the sites terms for the trademark you wish to use and if you can't find it then you either have the option of contacting their legal department or chancing it (not advised).

As for subdomains it's more of a grey area, but trademarks are still trademarks regardless of where the trademark is used. And there are several examples of people filing disputes with WIPO for people using them.

Take a look on these sites for more information:

http://www.wipo.int/portal/index.html.en
http://www.ipo.gov.uk/