I Lost a Site Due to DMCA Violation – Trademark Infringement!
When the time comes to buy a domain name for your new website – you need to take a quick read of the Digital Millennium Copyright Act, aka DMCA, and learn how it may just affect you in the future! In this post, I am going to share my own experiences with Domain Copyright and Trademark Issues, explain WHY I just lost a website, and provide a Set of Guidelines you can take into account, so it does not happen to you!
Many of you in the eBay Affiliate Program know that eBay recently cracked down on domain trademark issues – and will expire an affiliate account if you infringe on someone Else’s intellectual property, and do not comply with the new policy.
What is DMCA – the Digital Millennium Copyright Act
In a nutshell – the DMCA is a US Copyrights Law that provides protections against, and criminalizes the use of other people or businesses intellectual rights. It was signed into law in 1998 by Bill Clinton, and extended standard copyright laws to reach the Internet age.
Title II, the Online Copyright Infringement Liability Limitation Act, protects companies like Search Engines and Hosting Companies against liabilities, as long as they immediately comply with safe harbor guidelines and promptly remove or block access to the offending materials, websites, or any content that the copyright holder, or their agent, have notified them about. Within the guidelines, they must also provide a way for the website owners, or content owners, to dispute the claim that they have infringed on a right, which is covered in the counter notification.
Why I Lost My Website
In my case, the site was FakeAffliction.com, and the company that demanded removal was Affliction Holdings LLC, who are federally registered as the owners of “Affliction” as it relates to clothing, as well as several other trademarks surrounding the apparel and accessories line.
The website itself featured videos and articles surrounding Gothic styles, MMA Fighting and of course fashion & style trends in the Affliction world. A Typical article about Gothic Halloween costumes may have said… “In order to round off the costume, grab a pair of Affliction Jeans to wear under your cape” or videos of MMA Wrestlers, who were fighting in what was aptly named “The Affliction Trilogy“, from Affliction Entertainment company.
Their case was stated as:
- The word “Affliction” was in the domain name
- The site portrayed to sell Affliction Clothing
- The links on the site led to both real and fake Affliction products
- The word “Fake” in the domain name leads to confusion and misleads visitors into believing the site is affiliated with their brand.
ALL of the above reasons hold merit, however the most important is #2, which relates to #3 & #4. Having the word “affliction” within the domain itself is not a violation and secondary to the claim, since it can be defined several different ways. The problem arose when the sites intent was taken into consideration.
Intent and Purpose Truly Define the Law
There has been a movie (and book) named Affliction, Wikipedia defines it as pain or suffering, and there is a band in Sweden named Affliction. None of these violates the brand, since the generic word itself was not used in a way that led the public to think it was related to the brand.
When the word “Affliction” was used in a way that also related to clothing however, it’s a bit different!! My original goal with the domain was to hold onto it for future use of a hard rock band, or some other generic name for just about anything associated with the Gothic, mixed martial arts, or affliction lifestyle. At some point, I chose to put up advertisements from eBay, and simply put the word “Affliction” into the ad delivery box. All ads on the site were related in one form or another to affliction clothing. Affliction jeans, Affliction shirts, etc.
As soon as I received notice from my hosting company this morning, I pulled the site down. I immediately realized the issue they brought up and corrected it by removing both ads and the site until further notice. I will not rebuild a site on the domain for now – and will simply hold on to it to see if someone else may be interested in it! I actually emailed Gene Simmons a few months ago and suggested it as a PERFECT Band name for his sons band!
Guidelines to Avoid the Same Misfortune
As I browse through sites that I see people developing all the time, I often wonder how long it will be before they get the same type of notice.
- If you have a site about foreign cars and it has the word Honda in the domain… you are are in violation! If its foreigncars .com, and you have Honda’s on it, you will not likely have an issue!
- If you have a domain named “CheapMacs.com” and it has Apple computers… problem! CheapComputers.com with Apple computers, no problem! If you are a company that sells “Miniature Apple Cart Stands” that are commonly called “MACS”… and you sell them at CheapMacs.com, again, you will likely have no problems, since you are not representing or infringing on the mark.
Here are a few tips to avoid falling into the same situation:
- Never Use a Brand, Common Business name, or Trademark in Your Domain Name!
It is ALWAYS within the right of the holder to force your site down if it can be ANY WAY related to a product they represent. (Remember that word Intent?) - Use Generic Words Very Carefully!
This is the case here – I had the generic word affliction in the domain, but it became a violation when affliction style clothing was associated with the word! - Check the US Trademarks Database!
- Check with a Domain Trademark Attorney
Finally – if you do get a DMCA notice but feel you are in the right, you also have options! New Media Rights has a step by step guide into evaluating the notice and recommendations on how to proceed!
Have you lost any sites due to a DMCA notice to either your hosting company, or sent directly to you? If so, share your experience below.
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I have been doing my part to "Build the Internet" since 1994, when I built my first website! Since then, I have built hundreds of niche websites for myself and many others, focused on design, applications, ecommerce, search optimization and internet marketing.
Great post and important for people to take note of. I’ve been toying with setting up a series of niche websites targeting a specific brand and have been trying to work out what I should use for the domain names. I had been toying with the idea of using the brand name itself along with the specific product, thinking I wouldn’t be in violation of any affiliate issues and quite forgetting that I may be in breach of trademark issues. I guess I figured I’m promoting their brand which is all good, but at the end of the day they have their brand to preserve and don’t want people getting confused between affiliate style websites and their own branded websites. Thanks again.
@Chris – Sounds like a good move Chris. (Kinda sickly – but read on) I used to own the domain ColonFit + .com – and had it loaded with articles and products surrounding the “Cleansing” niche. It was a VERY good site for us over a 2 year period of time.
Around August of 2008 – an actual product entered the market and it was named… you guessed it, ColonFit, as part of a overall diet plan that was a registered mark.
The letter from an Atty came in in within a few months… and the fact that we had a similar product on the site, well before their name was out there, made no difference. Visitors were coming to the site and buying products, under the impression that they were buying from the brand holder. I tried setting up an affiliation with them to no avail and was forced to make a choice between paying attorney fees to fight them, or just drop the domain name.
In the end – I had no real interest in the site and just let it go to the domain aftermarket, hoping someone else would pick it up and not them, which is exactly what happened.
It stunk for sure…
Mark
I think that sort of stuff happens a lot. The small guy gets squashed because he has no money to fight a legal challenge, even though he’s in the right and did use the name first.
“They must also provide a way for the website owners, or content owners, to dispute the claim that they have infringed on a right”
LOL, guess this does not apply to Ebay and VERO then.
It’s obvious to me you have never dealt with EPN cancellations of a 40K a month account, ebay boilerplate responses and VERO cancellation of all 8 of your ebay selling accounts that you have had since 1997. Read it and weep.
I’d rather clean prison toilets with my tongue than push EPN.
The Harvard suits ruined Ebay starting around 2000. It’s now just a shell of what it once was. The small mom and pop sellers built ebay with their blood and sweat and ebay tossed them all away like used kleenex.
I have lost a total of 5 domain names over the past 3 years due to trademark violations. None of them were intentional. How is that possible? Well the latest one was BubbleWrapSuppliers.com. I know not to use an company names (one of my sites that was in violation was also an “affliction” site) but gave no thought to using ‘bubble wrap’. To me it was kind of like all tissues being Kleenex or all paper towels being Scot towels. Well the legal team from Sealed Air Corporation didn’t see it that way.
So it’s not just the company names you have to worry about.
I had a site for about a year called FoodNetworkCookware.com. It sold cookware promoted by Food Network stars such as Rachael Ray, Paula Deen, etc. I got a similar letter from Food Network’s attorneys telling me that I violated their trademark because I had pictures of their on-air talent and that visitors to the site might be led to believe the site was affiliated with the Food Network.
Just as Mark did, I immediately took down the site. It wasn’t making a lot of money, and I didn’t want to risk having any of my other sites taken down by my hosting company canceling my account. It wasn’t worth the risk and I will be more careful about trademarks in the future.
One thing I am unsure about, however, is the use of a celebrity’s name in a domain. I registered a popular tv star’s name with a .tv TLD with the intention of building a fan site. After my experience with the Food Network, however, I’m a little hesitant to develop that site. Any thoughts?
Mark, great examples, because I actually own a domain that does contain the word “Honda” in it. It was targeting car parts, but 6 months ago or so, I got an uneasy feeling about having that word in the domain name. I can’t remember why (maybe something I heard on a podcast or other reason) but I pulled down a profitable site, just because of the paranoid feeling I had that day.
I set the domain name to not auto-renew, so that it would be dropped at the next renewal. That is less than 2 months away.
I haven’t thought about that domain since taking it down, but you have
me thinking about it again now.
Once you have owned a domain name for a period of time, is it possible to just dump it from your account, even though time for your registration still remains?
Thanks for the info Mark! I had this happen to me a while ago with a cosmetics site. The company’s attorneys contacted me directly with a cease-and-desist letter, including a request to transfer the domain name to them. This turned out to be a major hassle, since it was with a registrar I no longer dealt with and it took forever for it all to happen. I was bummed because it had a 5 year registration!
At the time there wasn’t a lot of info out on this subject, so I’d done it innocently. But I learned my lesson, and your guidelines are a good resource for anyone who wants to play in the niche game. It’s not always obvious what is considered a trademarked name, so it’s good to check before you spend the time and money on a site that you just have to dump.
Fortunately in my case eBay never got involved. It would be terrible to get dumped for something like this.
@Mark – This wasn’t from eBay, it was from a Law Firm that represented the company, based out of California.
eBay had never said anything about it… and I really doubt they would have, since the word the dispute was about, is a generic word. It just happened to be in violation due to the way it was presented on the site.
I HAVE for sure heard many horror stories from ePN account holders though and I feel for anyone who has had their ePN account frozen over a dispute like this.
I also lost one that did not have the name in the domain, just a close to it name and the company then sent me the same reg letter from their attorney and said It was copyright infringment. I then took down and it was kicking the crap out of their own keywords in Google, and I did very little work with. It was a bans site..
Really surprised me…
@Ottidid – I hear ya Otis – sorry to hear you lost one. Was it the “Purse” site? If so, I had actually wondered before how long it would be.
I saw on another site this week where a site was launched around a VERY popular product. The site owner chose the domain: “[brandedname]deals.com” and it was apparent he put a LOT of work into the site. I just didn’t have the heart to tell hm about the wasted effort.
M
Yes it was the purse site… it was only make 100 to 300 a month and the came the letter… The only thing that bothered me was that it did not have the brand name in the domain just a variation(coapurse). I guess they have the money and the power to make us run for the hills if we see lawsuit claims. Thanks for the post. I hate you lost one as well as others here, but with all that we do it is bound to pee someone off….haha
Did you receive a reply from Gene Simmons?
Sounds a good name for a band to me!
@Mark James – Not yet… BUT… I do continue to drop the name in different areas where it would be relevant. :-) (Band message boards, Guitar forums, etc)
When I first started using BANS, I registered the URL usedrolexshop.com. It had started getting some decent traffic and made a couple sales. I then got a letter from their attorney about the copyright infringement. I actually got them to send me a check for the cost of the 2 year Domain Registration (like $15 or so) before I transferred ownership of the domain to them. LOL
Lesson learned.
A couple of comments. DMCA does NOT cover trademarks. It has been abused in use of trademark complaints and things like libel/defamation. Sites hosting third party comments are protected from libel actions by the CDA. There is no safe harbor for trademark violations. My one big complaint about alleged trademark violations is that trademarks are registered in particular classes of goods and services, and often times trademark holders try to enforce their marks in classes where they have no rights.
For the most part all of my domain names are generic or my trademarks. In one case I wanted to do a telecom site and there weren’t names available. I registered phonebell.com which is certainly a generic use of the word “bell” and not the use of the proper name “Bell”. Ameritech said it was an infringement, even though they didn’t really use that mark anymore. They spent $65,000 on attorney fees. There was never a hearing, it was all paperwork.
Funny thing is it was held by a dissolved corporation so they could do nothing to me but I fought them until they figured out I wasn’t an attorney. So they got the name, but it cost them 65k. I would have sold it to them cheap had they asked.
What I thought was funny is that all their trademarks, like Wisconsin Bell, had NEVER been used in interstate commerce. Wisconsin Bell had never been advertised outside of Wisconsin for example. All of these trademarks were invalid.
I just went through a similar circumstance. Recently I bought an aged domain harley-davidson-motorcycle.org thinking it would make a great Harley accessory site.
I actually looked it up on TESS and it is not branded but would be easy enough for them to shut it down.I was using WP Robot but Amazon would not let me pull up any data up for some reason.
I contacted them and was informed of the trade mark issue. They actually took some time to go over it with me. They were even kind enough to tell me, sure you can put our stuff on your site, we just wont pay you for it. Ha ha.
From what I hear about EPN, I’m sure they would be a lot less friendly. Since I just got accepted, I’m really not ready to get bounced. So now I have a useless domain.
The scary thing is right now there is a very popular program out there that teaches newbies to build E- Commerce sites and they are advising them to buy domains based on product names.
Well I have tried that and it does get targeted traffic but what’s the point putting all that work into building a site that can be shut down at any time? To me that’s not how to build a real online income. So I’m swearing off anything even close to a brand from now on.
By the way,love this site
Steve
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