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Affiliate Marketers, Your Domains And Lawyer Letters

For content-based domain affiliates, taking note of your domain portfolio and potential copyright conflicts are an ongoing concern, especially if you’re planning to be in the game for the longterm.

I own a domain which contains the term “ebay” in it. Although I feel anyone looking at the domain probably wouldn’t mistake it for an eBay property that a name like eBayMarketing or eBaySupplies might convey.

Nonetheless, I received an email from enforcement@ebay.com from “Edith, eBay Legal Department” which however nicely written, amounts to a cease and desist notification, and I am supposed to “Please confirm in writing that you will agree to resolve this matter as requested. If we do not receive confirmation from you that you will comply with our request, we will have no choice but to pursue all available remedies against you.

“Edith” further mentions that “We have filed several successful federal court actions in the United States against companies and individuals employing the famous eBay trademark in their domain names, as well as more than six proceedings before the United Nation’s World Intellectual Property Organization’s arbitration panel. eBay prevailed in each case and the domain names at issue were all ordered to be transferred to eBay.

And “the United States Patent and Trademark Office (“USPTO”) has recently denied registration of the mark “ebaysecurities” by a third party. Like your domain name, “ebaysecurities” incorporated the entire eBay trademark, adding only a generic term to eBay’s famous mark. The USPTO recognized that eBay is a famous trademark and denied registration of ebaysecurities. eBay is concerned that any use of the domain name in question, will cause confusion as to whether you or your company’s activities are authorized, endorsed or sponsored by eBay when, in fact, they are not.

The domain is one in my portfolio and I haven’t developed it yet, so letting it expire isn’t a major issue.

I would think that eBay would be more forward in replying to the email seeking clarificatons I’d sent about 2 weeks ago, to date I haven’t received a reply.

Having dealt with lawyers previously, I would guess that sending this notification gives them “just cause” should they proceed with legal action later, having taken the pre-requisite step of issuing a legal warning.

So whether you’re a product owner or even an eBay affiliate, registering a domain containing “eBayProfits” or “eBayInsider” could bring a flurry of legal letters.

Some copyright holders are more lax than others in enforcing their trademarks, especially if you’re an affiliate.

From the affiliate perspective however, how do you think an “eBayTips” domain would compare against an “AuctionTips” domain?

It really wouldn’t be any fight at all.

On another note, I’ve been watching a number of domain auctions, and have seen a domain containing “eBay” recently exchanged hands for a four figure sum.

Imagine buying such a domain and receiving a lawyer’s letter shortly after…

Not very fun at all.

Whatever you do, do be careful.

14 comments on Affiliate Marketers, Your Domains And Lawyer Letters

  1. Stephan Miller
    November 28, 2007 at 1:40 am (4685 days ago)

    I had an issue with my domain http://www.clickbankebook.com. Not really much from Clickbank themselves. They just told me to stop using it. It had been an active site for over 2 years.
    A Clickbank vendor actually pushed the issue until Clickbank notified me. I ranked higher than his site for his product name.
    A 301 redirect to a new domain fixed the issue. But until then Clickbank shut off my account and I was still paying for PPC sending hits there.
    It’s all good now, but I was wondering how it would turn out for a while, having over half of my income shut off like a light switch.

  2. Carsten Cumbrowski
    November 29, 2007 at 9:19 am (4684 days ago)

    Hi Andrew, You are touching on multiple hot issues with your post.

    1. There is the issue of having a domain name that allegedly infringes on somebodies trademark. This determination alone is already difficult and several factors need to be considered for it. A trademark is only protected within a more or less narrow segment of the market. Things like how the domain is used and what are the chances that people confuse it etc.

    2. Add to that the issue of reverse-hijacking of domains by trademark owners, especially in cases where the domain owner of the domain in question is a small business entity with limited financial resources.

    Domain disputes used to be handled outside of courts, but the federal law for domain name disputes 15 USC 1125(d), which was recently introduced under the ACPA (Anticybersquatting Consumer Protection Act) changed that probably (I have not checked this in full detail yet). One thing changed for sure. While it was in the past common that the domain owner has to give up the domain if he loses the dispute, so is it now also connected to a minimum fine of $1,000 that could be up to $100,000 per case with that new law.

    3. If you are an affiliate of the trademark owner and use the site to promote the trademark, while adding value and without just redirecting or using other similar and questionable tactics.

    Affiliates are to an extend representing an advertiser, just like resellers do. That is where the term affiliate actually comes from. An affiliate should talk to the trademark owner if they have an affiliate relationship and talk about it. To provide legal security, an agreement should be devised that states that the affiliate is allowed to use the trademark term for the site. It should also state what the affiliate is allowed to do with it and what it is not, in return. This is similar to the agreements between search affiliates and advertisers when it comes to the use of trademarks in pay-per-click advertising.

    What do you think?

    Cheers!
    Carsten

    p.s. I suggest you change the phrase “copyright conflicts” to “trademark disputes”. Copyright law is a completely separate and different animal :)

  3. James Tippins
    December 1, 2007 at 1:09 am (4682 days ago)

    Interesting enough on eBay’s trademark values. They are very harsh on the use of ‘any’ trademarked’ term within your business listings on the site. I have had listings canceled numerous times by listing an example in a product that was very relevant because it contained a trademark.

    So what if you have a company that is called Easy Baking and You! and you have a url ebay4u.com??? So I guess they can take the combination of those letters and kick you to the curb. Hmmm.. something is strange when you can’t use abbreviations that are completely relevant.

    What do you think would happen if you had a URL for your name and it was Jeb Ayers so the jeBayers.com would be an infringement. Wow. Hope that isn’t your name or you could find yourself in court.

    I digress…

    jt

  4. Atomm
    December 2, 2007 at 3:36 pm (4680 days ago)

    Andrew, you bring up a good point and I’ve been reading a lot about this type of thing lately. What if you had AuctionTips.com/ebay/ and the page was discussing ebay?

    Wouldn’t that have a similiar effect, while preventing ebay from coming after you for trademark domain issues?

  5. Carsten Cumbrowski
    December 2, 2007 at 7:02 pm (4680 days ago)

    Ha, I found the PowerPoint from the guy (lawyer) at BlogWorld Expo who talked about Internet law, trademarks, copyright, domain names and cybersquatting.
    Here is the Link to the file. It provides a good rundown on the general subject. If you need to go into more details, use the provided terms for searches on your favorite search engine or contact a lawyer :) .

    There are also five other PowerPoints for download on the same page where I got this PP from, which are about topics like intellectual property and e-Commerce. The URL is http://www.bretttrout.com/resources/presentations/ in case you are interested in those subjects as well.

    Cheers!

  6. Hock
    December 5, 2007 at 9:57 pm (4677 days ago)

    Carsten,

    Thanks for providing the link to that resource. You’ve brought up valid points. The hassle of litigation is why I deliberately stay away from registering domains that contain any sort of trademark.

    This advice is especially pertinent to newbies who are just getting into internet marketing.

    Hock

  7. Gustafson
    December 10, 2007 at 2:56 am (4673 days ago)

    A few points for consideration. (note that I am not a lawyer and this shouldn’t be considered legal advice)

    Trademarks aren’t meant to protect the company who owns them as much as they are meant to protect consumers from brand confusion.

    I had a professor once with the last name of Macy. He would remind us that he could legally open a clothing store and call it Macy’s (assuming he doesn’t use a big red star) and have full legal protection because it is his name. I however could not change my name to Macy and then do the same and I imagine he would have issues selling it to someone else.

    Additionally holding trademarks is not a passive activity. To maintain your trademark rights, you must go after any and all that are infringing on the mark. Ever hear about Disney going after kindergarten class rooms who painted Mickey and Donald on the wall… It has happened in the past even though it would obviously create some bad PR for the pursuing company. (I am not sure but I believe Disney would then give them a “free license” or something of that nature) It may not have been Disney who was doing this, but that is was I recall.

    The other issue is to not be so powerful in your trademark that it becomes the generic name for the product. I think Band-aides had some issue awhile back and may have come back from the edge as people think of all sterile wrapping as band-aides.

  8. Andrew Wee
    December 11, 2007 at 6:49 am (4672 days ago)

    Hi Gustafson,
    Actually I think Trademarks and Copyright are intended to protect the intellectual property of companies and their products and services.

    Clear brand identification is one of the by-products of this process.

    Else I agree with everything you’re saying and good elaboration of the principles you listed.

  9. Gustafson
    December 11, 2007 at 8:02 am (4672 days ago)

    I am back with with a bit of research to help shed some light on this subject. The following is what I found:

    The Iowa State Trademark Licensing Office states that

    and that

    (The above link is a great resource for trademark inforamtion)

    So although the purpose of trademark law is meant to protect and to prevent confusion among consumers, It is a tool that is used by the trademark owner to protect their assets.

    One of my reasons for stating that trademark is meant to protect the consumer (more so than the owner, is due to that fact that it is possible for a trademark owner to lose their rights if a trademark is deemed too generic or if someone else has a greater/stronger case for the mark. Some examples of Genericized Trademarks can be found at the following destinations:

    http://en.wikipedia.org/wiki/Genericized_trademark
    http://en.wikipedia.org/wiki/List_of_generic_and_genericized_trademarks

    Copyright is a completely different beast and follows a completely different set of rules which are most definitely meant to protect the published intellectual property of the owner. Patents work in a similar fashion. To my knowledge the only way to lose a copyright or patent is by someone else claiming the first publication, creation, or use in business…. I don’t want to get into that too much as the law can get real specific and varies by country.

    Anyway, hope all this helps. It is a big subject and knowing more about it can help keep you out of trouble.

  10. Carsten Cumbrowski
    December 13, 2007 at 5:23 am (4670 days ago)

    Gustafson: regarding the generized trademarks, thats why did Google not like the idea that the “google it” becomes a verb. You would have thought that they like this and are proud of it, but it puts their trademark at risk.

    “googlen” became an official German verb last year when it was added to the German “Duden” (the book of the German language, if a word is added there, then it is an official word). Google was pushing hard and were at least able to get the definition of the word changed from a generic search on any search engine to a search on Google only. Here is a link to a German article at a German news website via Google Translate.

  11. Romail
    December 18, 2010 at 12:32 pm (3569 days ago)

    yeah, i am a newbie to this industry and i went through the very thing yiu guy’s are talking about .. i cancealed my domains names as soon as i received the letter. Is this enough to prevent court proceeds … thanks in advance for your answer.

  12. Minecraft-Bukkit
    May 29, 2012 at 2:55 pm (3040 days ago)

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    he must be visit this website and be up to date everyday.

  13. ??????
    January 14, 2014 at 3:37 pm (2445 days ago)

    Hi there! This blog post could not be written any better!

    Looking through this article reminds me of my previous roommate!

    He constantly kept preaching about this. I will send this article to him.

    Fairly certain he’s going to have a great read.
    Thanks for sharing!

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