>Pretend that I want to sell Miami Dolphins merchandise. >Can "Dolphins" be part of the site's name, as long as it's not the >entire name? In other words, could I use DolphinsJerseys.com ?>or DolphinsLunchboxes.com? Or it that a no-no? How about >Major Leage Baseball? How about the NBA?
Michael-
I researched this issue a couple of years ago in the context of numerous domain name registrations containing sports team names. I obviously cannot provide the details of the specific names involved, but I can provide some general points.
Although the professional sports organizations are likely to complain in any event, the law appears to be that the use of the domain names in the way you suggest is permissible under trademark law, provided there is nothing that implies endorsement or association with the professional team or organization. It would be best to have a prominent disclaimer of any such association.
While UDRP decisions have gone both ways, there is good federal case law precedent holding that there is a 1st amendment fair use right to use a trademark name in connection with the sale of goods and services, where:
i) use of the mark is necessary; ii) only so much of the mark as necessary is used; and iii) there is nothing suggesting an affiliation with the mark-holder.
In New Kids on the Block v. New America Pub., 971 F.2d 302 (9th Cir. 1992), the 9th Circuit Court of Appeals ruled that USA Today was permitted to use the "New Kids on the Block" trademark for the purposes of operating a fan poll (as to who was the Best Kid on the Block) which charged callers 50 cents each time they called in to a 900 number. The court specifically held that the New Kids on the Block did not have the right to "control their fans' use of their own money." In the sports context, the Court specifically noted that, at times, it is difficult not to use a trademark when referring to a particular entity. The court stated "one might refer to 'the two-time world champions' or 'the professional basketball team from Chicago,' but it is far simpler (and more likely understood) to refer to the Chicago Bulls."
Another case is also helpful: National Football League v. Governor of State of Delaware, 435 F.Supp. 1372 (D. Del. 1977). There, the State of Delaware operated a lottery in which it listed Sunday's scheduled football games. Although the State only used the team's city names (e.g. Philadelphia v. Baltimore), they were clearly referring to the NFL teams and the NFL's allegation was that the State was profiting off of the NFL. Ruling in favor of the State, the Court noted:
"It is true that Delaware is thus making profits it would not make but for the existence of the NFL, but I find this difficult to distinguish from the multitude of charter bus companies who generate profit from servicing those of plaintiffs' fans who want to go to the stadium or, indeed, the sidewalk popcorn salesman who services the crowd as it surges towards the gate."
The Court only ordered the State to include a disclaimer stating that the lottery was not associated or authorized by NFL.
BOTTOM LINE:
Although I am comfortable stating that the law supports your right to use the hypothetical domain names in the manner you suggest, I completely agree with Howard that if you sold this merchandise, the professional organizations would likely come after you. You would likely need a huge war chest to fight them. These guys have tons of money and their trademarks are among their most valuable assets. Unfortunately, being right is only a small part of this game.
