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  1. #1
    Join Date
    May 2011
    Posts
    12

    Default Using Another Company's Trademark in a Domain Name

    Hi everyone!
    Last month I registered a domain, OhTumblr.com, it's a website that hosts images of posts from tumblr. We aren't affiliated with tumblr and we made that very clear on the footer of our site saying a message of "We aren't affiliated with Tumblr, inc in anyway". Everything was fine, then today I recieved a "kind" from the lovely folks at tumblr demanding I cease using the domain, let it expire, and to never use it again or i'd face a $100,000 fine. All because i'm using their "famous name" of tumblr. I'm not sure if I can post the full DMCA here or not so i'll just stick to snippets:

    Your selection and use of the aforementioned domain name(s) creates the impression that your website is an authentic Tumblr website, when in fact it is not. The Tumblr name and mark is fanciful and strong and entitled to a broad scope of protection. There is no other reason for registering a domain name incorporating the Trademarks other than to trade off the established goodwill in the famous name and mark TUMBLR. Consumers are likely to be confused that the domain(s) is somehow associated with or sponsored by Tumblr when it is not.
    Your use and registration of the famous TUMBLR name and mark constitutes counterfeiting as well as infringement of Tumblr’s trademark and service mark rights in violation of the Federal Trademark Act, 15 U.S.C. § 1051 et seq. and constitutes common law trademark infringement and unfair competition under state law. Your actions are also in violation of the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d). Accordingly, you may be liable for up to $100,000 per domain name registered.

    We therefore demand that you immediately cease and desist from infringing Tumblr’s intellectual property. To that end, you must:

    1. Immediately deactivate the website located at:

    ohtumblr.com

    2. Do not sell, offer to sell, or transfer the domain name to a third party;
    3. Let the domain registration expire; and
    4. Immediately cease using the famous name and mark TUMBLR and any other intellectual property owned by Tumblr or any other intellectual property confusingly similar thereto on any other Internet web sites that you run, or otherwise in connection with your activities.

    Let me be clear here also, I make no money whatsoever from ohtumblr.com. It's purely for fun.

    Am I really in the wrong here? Is it illegal for me to use the domain even though I acknowledge i'm not affiliated with Tumblr themselves? Is there anything I can really do here besides give up to Yahoo/Tumblr? I know tumblr owns the trademark to tumblr, but is this really necessary?

    P.S. I've taken down ohtumblr for the time being, unless of course i'm for some reason in the right.

    Thanks in advance!

  2. #2
    Join Date
    Jan 2006
    Posts
    38,867

    Default Re: Tumblr Dmca

    Unless you have ton of money, regardless of whether it is legal or not is usually the reason you should just let it go.

    Even if they didn't have a valid right to demand you cease using the name, if they are willing to throw a bunch of money at it, they can force you to spend a ton of money to defend yourself and even if you could somehow win,'you would lose.


    btw: that is their trademark and is registered for a purpose similar to your use so it would be a really good idea to abandon it now before costs you a ton of money as they are in the right here.



    btw: the disclaimers are worthless

    Additionally, the fact you make nooney from it is also irrelevant

  3. #3
    Join Date
    May 2011
    Posts
    12

    Default Re: Tumblr Dmca

    Well that's a bummer, hopefully the Tumblr legal gennies will be kind and allow some kind of special permission. Optimism. Also, I heard somewhere there's a less chance of being shut down/sued if you don't make any revenue.

  4. #4
    Join Date
    Jan 2006
    Posts
    38,867

    Default Re: Tumblr Dmca

    They won't.
    You making money can change some things but ultimately if they want to enforce their rights, that is their right.

  5. #5
    Join Date
    Jan 2008
    Location
    Toledo, OH
    Posts
    16,307

    Default Re: Tumblr Dmca

    I know tumblr owns the trademark to tumblr, but is this really necessary?
    From a trademark defense perspective, yes, it unfortunately is.

    Trademark holders are required to aggressively defend the use of their trademark, on pain of losing it. If they become aware of potential infringement, they must address it.

    Don't expect to be allowed to use the trademark freely. In this case, don't be expected to use it if you pay a monthly licensing fee, either. Yahoo is pretty ferocious about protecting its brands, and even moreso since Marissa Meyer took over the role of CEO.
    I'm not a lawyer, but I play a researcher on the internet!
    Caution: I bite. WARNING: Do not send questions or complaints by PM. I'm likely to post them publicly and embarrass you half to death.
    I'm training for the MS Society's Bike to the Bay - and blogging about it!

  6. #6
    Join Date
    Sep 2012
    Posts
    1,988

    Default Re: Tumblr Dmca

    if your site was in some way a criticism of tumbler you would probably be ok, however it sounds like you just repost things you find from tumbler on the site that is trademark infringement, they can and will shut you down and sue you if you don't do so willingly

  7. #7
    Join Date
    May 2011
    Posts
    12

    Default Re: Tumblr Dmca

    It's a way like a giant image galley with user submitted images, like Imgur but only for tumblr. This is an example of what the images would be like: http://img.ohtumblr.com/tumblr/img/o...BhPquKCuT.jpeg

    - - - Updated - - -

    I'm just going to be really optimistic and hope they do allow me to continue.


    Also, a question to anyone really:
    1. Is it "illegal" for me to post the DMCA online?
    2. In the DMCA it said I can't host an active site. By active site, could I host a "text" file there saying we closed down?
    3. Would it be in my best interest to keep the website online until I hear from Tumblr again? I replied to their email asking for "special permission".

  8. #8
    Join Date
    Jan 2006
    Posts
    38,867

    Default Re: Tumblr Dmca

    I see you are continuing to use the name.


    good luck. I suspect there will be many days wondering how to pay your bills and your lawyer in your future.


    I'm just going to be really optimistic and hope they do allow me to continue.
    well, you'll know their feeling on the matter if they send you a cease and desist demand...


    Oh, that's right. They already sent you one.

  9. #9
    Join Date
    Jan 2008
    Location
    Toledo, OH
    Posts
    16,307

    Default Re: Tumblr Dmca

    I'm just going to be really optimistic and hope they do allow me to continue.
    That's...well, not to put too fine a point on it, but that's really bloody stupid.

    1. Is it "illegal" for me to post the DMCA online?
    Nope. There's an entire site devoted to such things, in fact: Chilling Effects. Do note, however, that Chilling Effects deals with efforts that are meant to impede dissemination of information. That's not what's going on with you.

    2. In the DMCA it said I can't host an active site. By active site, could I host a "text" file there saying we closed down?
    Nope. "Active site" means something is hosted there.

    3. Would it be in my best interest to keep the website online until I hear from Tumblr again? I replied to their email asking for "special permission".
    Absolutely not.

    You do not seem to understand what you're risking here, and all over a $10 domain name. Take. It. Down.
    I'm not a lawyer, but I play a researcher on the internet!
    Caution: I bite. WARNING: Do not send questions or complaints by PM. I'm likely to post them publicly and embarrass you half to death.
    I'm training for the MS Society's Bike to the Bay - and blogging about it!

  10. #10
    Join Date
    May 2011
    Posts
    12

    Default Re: Tumblr Dmca

    I already took the domain they wanted down? The DNS hadn't updated yet thus allowing me to post that picture. Everything should now be offline.

    - - - Updated - - -

    Quote Quoting LawResearcherMissy
    View Post
    That's...well, not to put too fine a point on it, but that's really bloody stupid.
    Hey, don't they tell you to see the glass as half full? Or in this case, as tumblr wanting to let me use their name? I'm not holding my breathe or anything though.


    Nope. There's an entire site devoted to such things, in fact: Chilling Effects. Do note, however, that Chilling Effects deals with efforts that are meant to impede dissemination of information. That's not what's going on with you.
    So, if I post the DMCA online on a seperate domain to kind of explain things I won't be sued out of my mind?



    Nope. "Active site" means something is hosted there.
    Okay, by "nothing hosted there" can I have it land at my domain providers parking page? Or have it redirect to another domain I own?


    Absolutely not.

    You do not seem to understand what you're risking here, and all over a $10 domain name. Take. It. Down.
    I understand what i'm in, it's just i've never gotten a "real" DMCA from a big company before and i'm just not sure what I can. I want to make sure I understand everything before I do anything.

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