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DBA or web domain creates trademark infringement?

Discussion in 'Copyright, Trademark, Patent Law' started by mikhurst, Oct 27, 2008.

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  1. mikhurst

    mikhurst Law Topic Starter New Member

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    My jurisdiction is: Oregon, USA

    I am a distributor for a network marketing company. Each distributor is given an "associate website" through which we market product of the "parent company". Each "associate website" url consists of a "subdomain" [usually the distributor's last name] followed by a ["dot"], followed by ["the parent company's domain name"].
    Example: ["my last name"] ["dot"] ["the parent company's domain name"] ["dot"] ["com"].
    We were given the option by the parent company to market our "associate websites" via url-forwarding. This is done by purchasing an available domain from a domain registrar or web hosting company like GoDaddy.com, and having that domain "point to" your associate site.
    In a sense, I have somewhat created a new business name and thus, a new business which is competing on the World Wide Web. Yet, could one not argue that the forwarded url is merely superficial and only "points to" the parent company's domain?
    My Question: if the domain name I purchased to use for my "url forwarding" poses a threat to an existing, established company, could that be used as grounds for trademark infringement?
    Thank you...
     
  2. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    Yes, the domain name you purchased could constitute trademark infringement of the parent company's name. Your affiliate agreement probably reflects this issue.
     
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  3. mikhurst

    mikhurst Law Topic Starter New Member

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    ..."parent company" not the party in question.

    Thank you, Professor. I'm confident I am in good standing with the "parent company", and that the example I cited (as I attempted to portray it) would not cause an infringement issue with their name. I apologize (as I read your reply), I believe I must have poorly worded my previous question.

    (By the way, I am the forum participant who recently used the "Popeye's Chicken" analogy as an example of possible infringement.) You see, the possible problem lies with my real last name being the same as an existing, well established, highly successful company out there in the marketplace. It really doesn't concern the parent company's name. The parent company is protected and released from responsibility (by terms in the affiliate agreement) against any legal implications brought about by any member's "utilization of a website to further their business." I believe that would leave me to fend for myself should I step outside legal boundries in advertising or promoting my affiliate business.

    I'm going to present an example (strictly hypothetical), again using "Popeye" as my last name, and "FriedChickenAndBiscuits" as the parent company. It's actually very similar to my real situation, but I have changed the company name and the product to avoid this forum page from coming up in a Google search and someone accidentally mis-interpreting the story. Here goes...

    I recently became an independent distributor for an online multilevel marketing company who's product is fried chicken. The company's name is "FriedChickenAndBiscuits". The company's domain name is ["FriedChickenAndBiscuits"] ["dot"] ["com"]. My "affiliate site" is ["Popeye"] ["dot"] ["FriedChickenAndBiscuits"] ["dot"] ["com"].
    We were given the ok by "FriedChickenAndBiscuits" corporate to market our web stores via url forwarding. Two domains I was able to purchase were ["PopeyesFriedChicken"] ["dot"] ["com"] and ["PopeyesWingsAndBiscuits"] ["dot"] ["com"]. I was surprised to actually find them available, but also cautious to begin using them without finding out a little more about how the Popeye's chain would feel about my doing so.

    I spoke with someone in charge of marketing at Popeye's and he cautioned me NOT to use the name "POPEYE" and the terms "CHICKEN" or "BISCUIT" together, to represent my business. I did my best to explain that:
    • I was "an independent distributor" and that the url forwarding would merely "point to" a FriedChickenAndBiscuits (my parent company's) website.
    • that as long as I am a distributor for FriedChickenAndBiscuits, my web store would ALWAYS be an "affiliate site".
    • I would NOT be able to claim (or trademark) any such site as a business of my own origin.
    Furthermore, I mentioned that:
    • we are an internet company and I have no intent of directly competing with Popeye's dine-in or take-out business.
    • I'm well aware of the Popeye's Logo and have no intent on mimicking it in any way.
    • we even have a "disclaimer page" that a person is directed to, before they can even enter our website, that states that I am an independent distributor for "FriedChickenAndBiscuits".

    Still, this marketing manager never seemed to deem it acceptable for me to want to use MY OWN LAST NAME alongside TERMS THAT ACCURATELY DESCRIBE MY LINE OF MERCHANDISE. Please keep in mind that if my last name was Smith, there would have been no such issue raised. It is coincidental that my last name is Popeye, and my product is chicken.

    Here's my dilemma:
    • I'm willing to fight for the right to use my own last name to represent my business, and I think it is just.
    • at the same time I don't want to come on as sneaky or capitalizing on the success of another man's efforts. I believe that won't help my business image.
    • I don't have a ton of money to fight a corporate lawyer. Historically... (here's the gist of the entire post) ...I'm just wondering how diligently an established company might fight for that name identity issue?

    Any further thoughts would be much appreciated. Hope this second posting somewhat clarified my question.
     
  4. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    I read part of it but here is the issue - if you don't have the money to fight and you are pretty sure there will be a fight, then who is right and who is wrong isn't the issue. It's the old Jack Sparrow rule - "there are things a man can do and things a man cannot do." That is the practicality. You can surely keep protesting you're right and see if they follow through with a lawsuit.

    Regarding the law, the bottom line with trademark is that if there is a likelihood of confusion in the marketplace, there is an issue with infringement. I find it highly unlikely the chain will just allow you to do what you contemplate without challenging you. Perhaps this explains why the domains were left unregistered.
     

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