When is it ok to use someone else’s trademark in your domain name, when you are selling or promoting that product or service? The short answer is – when the brand/trademark owner tells you it is okay. 

I recently had an enquiry from someone who uses a well-known brand in his website domain name (and has done for a number of years) and has effectively been asked to stop by the trademark owner, which has inspired this article. 

In this case, the business offers training services in relation to particular software and uses the (well-known) software brand within the domain along with the word “courses”. Further, the business clearly disclaims on its website that it is not affiliated with the software company as such, and appropriately notes that the software name is a registered trademark of the software company. So, why is this not okay? Why does the trademark owner have a problem with it? 

Exclusive use

Under the Trade Marks Act 1995, the owner of a registered trademark is given the right to exclusively use that trademark for the goods/services they nominate and authorise others to use it for those goods/services (e.g. license the use to others). They also have the right to take action against people who use it without authorisation. So, whether it seems fair or not, logical or not, right or wrong – the software company has the right to determine who can and can’t use their trademark in such a manner. 

False affiliations

In addition to registered trademark rights there are also common law rights to protect reputation and goodwill. If the use of a brand by someone else would be seen as representing to the public that they are actually affiliated or approved by the owner in some way then the owner may have grounds to pursue action for ‘passing off’. Whilst disclaimers can at times reduce liability relating to passing off they do not guarantee you are free and safe to use someone else’s brand. The brand owner may still argue you have ‘passed off’ your website or business as being affiliated with them in the first instance, before visitors have the opportunity to see any disclaimer. 

Misleading conduct

The Competition and Consumer Act 2010 (formally Trade Practices Act) in Australia prohibits conduct that is misleading and deceptive, or is likely to mislead or deceive. A brand owner may argue that using their brand in a domain name is likely to mislead or deceive consumers into believing there is an affiliation between the two parties that does not actually exist. 

From the brand owner’s perspective, it would be a loss of exclusive right or control to allow unauthorised persons to use and promote the brand for the purpose of generating business, income and/or website traffic. The brand owner would likely view this as an attempt to ‘cash in’ on their established reputation and goodwill in the brand, which is not something they will likely be pleased with especially if they are not receiving any royalty or licensing fee in return. 

Some well-known trademark owners may appear more flexible than others when it comes to people using their brands in domain names; however, even in these cases they will often have extensive terms to be followed if you wish to use their brands. Apple Inc. is a good example, as they provide extensive terms for authorised users but also for others that may have a need to use their brands and trademarks. (The Apple terms specifically say that their brands and closely similar names may not be used in domain names by unauthorised persons). 

Ultimately, if you are wishing to use someone else’s trademark in a way to promote your own business or activities, chances are you will need their permission to do so. Often the larger the company, the more likely they will have set terms of use available at their website – always check and read through these before you begin use and promotion. 

While the above gives a good overview of your rights, if you find yourself in a situation where you are being told to stop use of a name, or it is claimed you have infringed or breached the rights of others you should always seek professional advice for your specific circumstances.  

Do you use a product or brand in your domain name? 

“ If you are wishing to use someone else’s trademark to promote your own business or activities, chances are you will need their permission to do so.  ”
 
Jacqui Pryor

Jacqui Pryor is the director of Mark My Words Trademark Services Pty Ltd and brings with her 13 years experience in dealing with Australian & International trademark matters - affordably and professionally.

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