Trademark Infringement and Domain Names
I absolutely knew better, but I still made a really dumb mistake. Let me tell you what I did…
I wanted to develop a new website for my Nu Skin products (an MLM company that I recently got involved with). I wanted to create a blog where I could review products and provide content.
So, my first stop was to decide on a domain name.
I knew that I couldn’t use any domain with the term “Nu Skin” in it because it was a trademark infringement. That’s one of those things that I’m always careful about. So after looking at all the domain names available I settled on Elite-Skin-Care.com.
The domain fit the image that I was looking for, it was fairly short, and it was available.
Whoohoo!
I bought the domain and immediately set out on creating a blog complete with a logo that incorporated the domain name, several keyword rich blog posts, free ecourse, reviews, etc.
It was a pretty nice looking blog… if I do say so myself!
And things were going pretty well with it. Some of the content had started getting indexed, I started getting subscribers, and traffic was on the rise — everything you want to happen with a new blog. I was quite pleased with myself.
Then I got this notice in my inbox:
Re: ELITE SKIN CARE – TRADEMARK INFRINGEMENT
Dear Ms. Yates:
Elite Skin Care, LLC is the owner of the registered trademark ELITE SKIN CARE® (the “ELITE Trademark”) for use in connection with skin care products and services. We have used the ELITE Trademark since 1993, and the mark has been registered with the U.S. Patent and Trademark Office since 2004 (U.S. Trademark Registration No. 2821236). By virtue of our long use of, and investment in, the ELITE Trademark in promotion and operation of our business, the ELITE Trademark has come to be a well-recognized and valuable asset of Elite Skin Care, LLC.
It has come to our attention that you are using the trade name/trademark “Elite Skin Care” in association with the marketing, sale, distribution or identification of skin care products. Elite Skin Care values its ELITE SKIN CARE trademark very highly and takes this unauthorized use of it very seriously.
We assume that your unauthorized use of a mark identical to the ELITE Trademark is without intent or desire to confuse the public, nor is it your intention to trade upon Elite Skin Care’s goodwill associated with its ELITE Trademark. However, your use of the identical mark in connection with your business of marketing or selling skin care services/products is confusing and may mislead customers and potential customers into believing that your skin care products/and or services originate from, or are associated with those of Elite Skin Care, LLC. This confusion may cause material and irreparable harm to the ELITE Trademark by eroding the distinct association among our Trademark, our products and services, and our company.
As such, your use of Elite Skin Care constitutes an unfair business practice as well as trademark infringement under the federal Lanham Act, 15 U.S.C. Sec. 1051 et. seq.. These actions may subject you to payment of actual and treble damages, recovery of profits, reimbursement of attorney’s fees and may also include injunctions against your further use of your infringing mark.
Accordingly, we request that you immediately cease any and all further use of the Elite Skin Care trademark, as well as any other marks confusingly similar to Elite Skin Care, including, but not limited to changing your business or trade name; terminating your use of the website address www.elite-skin-care.com and any other web address containing the term Elite Skin Care ; and removal of the term Elite Skin Care from any and all advertising, marketing and promotional materials and website informational materials used in connection with your sin care services or products. .
Please confirm within 10 days of the date of this letter that you will comply with the terms of this request. This letter is without prejudice to the assertion of any and all legal remedies that we may pursue as necessary to protect our rights.
Sincerely,
Simon Wong
It would be fair to say that I was a bit ticked off… but then I thought about it.
This was totally my own fault. I was so wrapped up in the idea that I couldn’t infringe upon the Nu Skin trademark that I didn’t even check to see if there were any other trademarks against the domains that I was looking at.
REALLY stupid mistake… a mistake that I’ve never made before.
So… I completely removed the site — what else could I do?
It means a couple of weeks worth of work wasted and a little bit of money down the drain. I hate that, but I still have a lot of content that I can use elsewhere.
It could have been A LOT worse.
Plus it was a really valuable lesson to make sure that I don’t get ahead of myself next time and do my homework before I buy the next domain. I’ve been in business a long time — I knew better.
Hopefully sharing this story will keep you out of hot water. Research your domain name before you buy it to make sure someone else doesn’t already own the trademark.
Very valuable information Arvada. How do you research a domain name within the trademark issues? I would assume that if you are able to purchase the domain name that it would be okay and within the legal ramifications. However, it appears it is not. I’m so glad to know this information before I make the same mistake…LOL. Thanks for being so candid and sharing what happened in your situation. Thank goodness you were able to do something about it before it got a lot worse. Make it a great day!
Deb
Freelance Writer and Ghostwriter
Hey Deb… unfortunately this can get a bit sticky because there are tons of domain names that you can technically purchase that present trademark infringements and will get you into hot water.
The best way to research it is to type in the words of the domain into a search engine and see what pops up. In this case, if I had searched for “Elite Skin Care” I would have found their main website and seen that their logo has an “R” with a circle around it (indicating a registered trademark).
Registered trademarks are protected.
If there is a “TM” on the logo, then it has less protection and you can get away with using the domain.
Hopefully that explains it!
Thanks for asking the question… I should have included that information in the article.
OK I’ll finalkly respond too U. If I Du start an online bussiness it’ll probably be with a friend’a mine who is telling me about his.Something about list building.Donovan Starks’ 4X4 List Builder? er’Something. HELP?
I don’t know anything about that particular program, so I can’t advise you on that one specifically. What I can tell you is that a lot of those “list builders” are pure junk… but again, I don’t know about that particular one.
If it sounds too good to be true… it probably is.
Very informative. I always thought that any domain name that could result in a copyright infringement would have already been purchased by the holder of the copyright. Guess we have to dig a little deeper on the front end to avoid something like you experienced. Thanks for sharing.
Good for you for admitting that you made a mistake!! Thanks for sharing!!!
“Failing forward!!!”
Great post Arvada,
I have run into the the same problem. Did you offer to sell them the domain? That’s what I did. Thanks for all your great content.
That’s probably what I should have done — sell the domain — but I was ticked off and just wanted to be done with it.
Thanks for the comment!
hey,I find out that your blog is extremely informative and helpful and we were curious if there can be a possibility of obtaining More article content like this on your web log. If you willing to help us out, we will be willing to compensate you… Yours, Jone Zachmann
This is a excellent post for all web site owners too look over. I appreciate it!
Thanks for the informativer post. Is first time when i reading about this.
I agree that researching one’s intended domain name first is absolutely crucial. I have nothing but good to say about the domain registrar that I use and can recommend them if you want. As for multilevel marketing, well, that’s a much unhappier story. I got pulled into the network marketing game in Denver years ago and ended up regretting how much money I threw away on their false promises. Just my opinion. Others may disagree, but I think getting into MLM is to be avoided!
Sorry to hear that you’ve had a bad experience. Unfortunately, network marketing just isn’t for everybody… but there’s no denying that it presents a HUGE money making opportunity if you join a good company and a sponsor that actually cares about your success.