If you have an idea (a great idea) to create a website that allows visitors to watch and share YouTube videos together with their friends, you should consult an attorney to figure out how to embark on the venture without stepping on anyone’s toes. The last thing you want to worry about in a start-up phase are potential lawsuits, especially based on trademark infringement. It could end up costing you a lot of money to correct, multiple headaches, and complete loss of any brand awareness/image/loyalty.
As you may have guessed, Google, on behalf of YouTube, has sent multiple requests that the aforementioned website be turned over. The URL is YouTubeSocial.com. The founders of the service should have been presented with a huge caution prior to ordering the domain name and subsequently developing and marketing the website.
There is absolutely no argument that YouTube has valid protectable trademarks. I also do not think it will be tough for Google to prove that the use of YouTubeSocial.com creates a likelihood of consumer confusion in commerce. TechCrunch reports that Google has made the following demands:
- Halt using YouTubeSocial.com. Change it to something else.
- Change the branding and logo.
- Must not use any monetization features.
- Transfer the domain over to Google/YouTube.
Courts have held that a domain name is more than an address. A significant purpose of a domain name is to identify the entity that owns the website. YouTubeSocial.com’s use of the domain potentially puts YouTube’s name and reputation at its mercy. Some courts have held that all internet activity is “commerce”, thus it would not matter whether or not YouTubeSocial.com is currently using any monetization features. The site was not created out of the kindness of anyone’s heart, but most likely to earn a profit off of it somehow in the future.
The glaring problem is that YouTube is in both domain addresses and that YouTubeSocial.com uses YouTube’s logo at the top left of its website. This could show substantial likelihood of confusion, not a mere possibility.
In YouTubeSocial.com’s defense, the use of YouTube’s mark is not currently in connection with a sale of goods or services. But that likely will not be enough to allow the company to withstand any sort of trademark infringement claim made by Google.