Does using a company’s trademark within a URL violate trademark law? The answer to this question depends in part on where in the URL the trademark is located—namely, whether the trademark is before or after the slash—and whether consumers are likely to be confused as to the source of goods or services.
A URL containing another company’s trademark before the slash is more likely to violate trademark laws than a domain containing another company’s trademark in the post-domain path of a URL (the text that comes after the slash). For example, if another company registers a domain for a commercial purpose that used the company Elle Chocolates’ trademarked name in its domain, this would likely violate trademark law (for example, www.ellechocolates.com). In contrast, if the trademark is located in the post-domain path of a URL, for example <www.chocolates.com/ellechocolates>, this may not violate trademark law.
Using a company’s trademark in a URL as a domain name and before the slash, will typically constitute a violation of the company’s trademark rights. See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). In Brookfield, the Ninth Circuit found that defendant’s use of the domain name <www.moviebuff.com> violated plaintiff’s trademark rights in the mark MovieBuff. The Ninth Circuit reasoned that domain names typically signify information as to the source or sponsorship of the website, and thus convey information to consumers regarding the source of the goods or services.
The distinction between trademark use in a domain name as opposed to usage in the post-domain path is crucial because it determines whether courts apply a likelihood of confusion analysis. If the trademark is used in the domain, and in a way that identifies the source of the goods, courts will examine the factors traditionally used to determine the likelihood of confusion between two trademarks. In contrast, the appearance of another company’s trademark in the post-domain path would most likely be considered to be using the trademark in a “non-trademark” and fair use way. As a result, the court would likely not apply the traditional likelihood of confusion analysis.
Several court cases recognize the distinction between domain names and the post-domain path of URLs. InPatmont Motor Werks, Inc. v. Gateway Marine, Inc., 1997 WL 811770 (N.D. Cal. 1997), the Northern District of California found that the URL, <www.idiosync.com/goped>, did not suggest that Idiosync (the domain owner) had endorsement or sponsorship from Go-Ped, a company that sold small, motorized scooters, which it sold under the trademark “Go-ped.” The court relied on the distinction between the domain name and the post-domain path—stating that nothing in the post-domain path of a URL indicates a website’s source of origin. Patmont, 1997 WL 811770, at *6 n. 6. Similarly, a more recent Sixth Circuit case (relying on Patmont), found that “because post-domain paths do not typically signify source, it is unlikely that the presence of another’s trademark in a post-domain path of a URL would ever violate trademark law.” Interactive Products Corp. v. a2z Mobile Office Solutions, 326 F.3d 687, 696 (6th Cir. 2003).