Trademarks and Merchandising Rights

[draqon]

A brief question for the lawyers, if they are so inclined.

Hypothetically speaking, a friend of mine is thinking of purchasing a generic domain name that is identical to the name of a famous sports team. Lets say that he purchased Yankees.com or Brewers.com. ( obviously, both of these terms are generic because they aren't only used in sports, but thats not relevant to my question.)

My question is, what is the legality of using that domain name to sell team merchandise such as jerseys and t-shirts to the public, if the domain owner is an officially licensed merchandiser? Im pretty sure that as an officially licensed merchandiser, his sales financially benefit the team, so I was wondering if that fact would skirt any trademark infringement issues.

 

[actnow]

I hope the JD's answer your question.

However, you don't challenge a company that has deep pockets.
Or, large egos!

 

[HOWARD]

If you are capitalizing on their trademark by using the "generic" name for promoting a team's licenced merchasndise rather than using it in the generic sense, you're asking for trouble and litigation. On the other hand, we have been successful in defending licensed dealers who accurately describe their wares in the domain name ( ie. YANKEESSPORTSWEAR.COM) So you take your chances of being involved lin lititgation, but you might be successful in defending the domain.

 

[DaddyHalbucks]

It could be a legitimate use. Usually it comes down to the legitimacy of your use. If you are an authorized dealer, the risk goes down.

If you are a dealer (licensee), it may depend on your licensing agreement with the trademark owner (licensor). Most such agreements put the trademark owner in the driver's seat.

Have a look at the WeberGrills.com UDRP.

I AM NOT AN ATTORNEY AND THIS IS NOT LEGAL ADVICE.

 

[actnow]

Have a look at the WeberGrills.com UDRP.

Hal is referring to this case.

http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0187.html

Which, basically says, that the store is using the trademarked name to promote
the "Weber products".

"This Panel is satisfied that Respondent has presented sufficient evidence to prove that it has used the domain name in connection with the bona fide offering of Complainant’s goods or services. It is apparent from the Respondent’s web page that Respondent is selling Complainant’s goods under Complainant’s registered trademark. Although it appears that Respondent has also used its web page to sell (directly or indirectly) products other than Complainant’s, these instances appear to be minor and Complainant has not controverted Respondent’s alleged removal of these items. Complainant has failed to disprove that Respondent’s use of the domain name in connection with Respondent’s sales of Complainant’s goods was made primarily in connection with the bona fide offering of goods or services."

But, I can assure you that if the store was not a legitimate dealer of Weber.
They would have lost the domain (s).

 

[draqon]

Thanks for the information, guys.

 

[DaddyHalbucks]

actnow wrote:

But, I can assure you that if the store was not a legitimate dealer of Weber.
They would have lost the domain (s).
+++++++++++++++++++

Correct. A legitimate use is valid defense under the UDRP policy.