Today I ran across an interesting discussion happening over at one of my favorite WordPress blogs, WPCandy, that I figured I would mention over here.   

The discussion is regarding trademarking, and the use of “WordPress” in your domain URL.   Obviously this domain uses WordPress in the URL, so I have both a fan interest and a financial interest in the discussion. 

First, here is some information from Michael’s post:

According to WordPress.org, to protect their trademark they ask that if you are going to create a WordPress related site not to use “WordPress” in the domain you choose.

What’s the meaning behind this? Are sites that use WordPress in their name at risk? Is WPCandy at risk?

Although they are not lawyers, WordPress still insists that they must make it clear, “so that we protect our trademark.”

In addition to running this website and Slick Affiliate, I also spend a lot of my spare time as an active “domainer”, meaning that I buy/sell/develop/park domains both to generate extra income and invest in my online future.   One of the things you learn very early when you buy and sell domains is trademarking and what domains are off limits.  When you purchase a domain that includes the name of a trademarked product, the company that owns the trademark can take it from you if they invest the time and resources to. 

Unfortunately, when I originally purchased the domain Hack WordPress, I knew about the risk of trademarked domains, but I didn’t realize the word “WordPress” had been trademarked.  Looking back now, I probably should have done a trademark search, but it is to late now.  When I eventually learned that it was indeed trademarked, I went out and purchased a “wp” domain that I am very happy with, should I ever have to move this website to a new domain. 

Fortunately for those of that have a “WordPress” domain, I find it very unlikely that WordPress would ever invest the time or money involved in “shutting down” domains that use WordPress in the URL unless the sites were somehow trying to harm WordPress in some way, or were making really good money off the WordPress name.   After all, this product is built upon open source and the WordPress community!  I believe that WordPress fan sites do a lot to help the software and the community that supports the software, so it probably would not be in their best interests to remove them.  We promote the WordPress product for free and help generate both interest and support for their product.   

Overall, I believe this statement is more a legal precaution to protect them in situations where they would need to enforce this.  The only thing I worry about is a major corporation such as Google/Yahoo/Microsoft acquiring WordPress, because they have been known to pursue fan sites violating trademarks.

What is your take on this issue?

Kyle Eslick is WordPress enthusiast who took his passion for WordPress to the next level in 2007 by launching WPHacks.com as a place to share hacks, tutorials, etc. Connect with Kyle on Twitter or Google+!

  • http://www.webmaster-source.com redwall_hp

    I don’t think it matters if you use the trademark in the domain. I’ve read in a couple places that it’s generally okay. There are plenty of websites that use trademarked names in their domains. I also believe that there was a precedent… Warner Brothers got all upset that people were starting Harry Potter websites on domains with trademarked names in them (author J.K. Rowling was okay with it, I believe, but technically WB somehow gained control over the trademarks). Today, there are plenty of Potter sites using trademarked names. I think it’s okay.

    Disclaimer: I’m not a lawyer either.

  • Moses Francis

    Yes, that’s an interesting discussion and one i pondered upon before buying my domain, but like you said i don’t think they would want to excercise their rights on blogs that are actually helping futher boost the usage of WordPress.

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  • Truden

    A little late I came across this old article but only now it came to be my personal problem :)
    http://WordPress.mu/ uses the trademark name “WordPress” as a fan site and Automattic Inc. lodge a complain against it.
    Here is my opinion about it.

  • Mary Marsh

    Can anyone tell me if trademarking is necessary for a business or a logo? Much appreciated.

  • http://eventurebiz.com John Hoff

    This might be a dumb question since you have “wp” in your url, but what if you use WpMyService.com? Even though you mention on your site that you are in no way affiliated with WordPress, in your research, could this be a problem?

    Has WordPress taken any steps to prevent the use of Wp in url and business names?

  • http://kyleeslick.com Kyle Eslick

    @ John Huff – The term wp is NOT trademarked and can almost be considered generic (making it impossible to trademark, such as terms like football or shopping).

    Also, sites like this help promote WordPress and make more people use it, so they would have now reason to have a problem with it.

    If you launched a site using “wp” that was NOT about the WordPress subject, I still don’t think there is anything that could be done about it because they don’t own the term “wp” and it could have quite a few meanings.

  • http://www.virtualedge.org Aditya

    I don’t think it makes such a big difference

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  • WpHey

    It’s good for both WordPress community and Automattic, I think.

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  • http://www.omarel.com Omar

    Technically, They can shut you down if they can prove that your website confuses people with respect to their trademark, but it’s stickier than that.

    Say DisneyToys.com was registered and used by someone other than Disney.

    If Disney can prove that DisneyToys.com is confusing enough that visitors can confuse the brand by it and that it’s seemingly part of the Disney brand, then it’s a violation and they can win. That’s all up to the judge.

    But I think this can happen with or without the explicit use of Disney in the domain name anyway. It’s probably much more messy when the trademarked name is used in the domain name explicitly.

    The other issue is whether or not a company will invest time in going after you. I think if most domain names help promote the brand they probably will let it go say like a blogger, but that’s just a guess.

    A good way is to think empathetically, imagine you trademarked a name like Dokyoki. That’s your trademark. You sell baby doll toys. Someone decides to register DokyokiToys.com, would you feel threatened? Would you get a lawyer to prove that it’s confusion on your trademark. The questions now get bigger: what is the person using the site for? Are they taking away market share? Etc.

    You can see it’s sticky.

    My recommendation is to create your OWN brand and just avoid it. Why spend effort to even possibly promote someone else’s brand (unless that’s your particular interest) Why build something so big with the fear someone can try heckling you over.

    I don’t think users care anymore what your site is called; They care about the content.

    Disclaimer: This is anecdotal. I’m not a lawyer. These are just my opinions. I don’t claim my opinion is right. I just read a lot.