What is the position with using a trademarked name in a domaine name for a business?

[BumptiousandBustly]

I have a small business selling a product which has a trademarked name - i.e a company called Warble that sells shoes ( I am making up the names, to keep my identity secret and so I don't get accused of trying to sell through Mumsnet)

Now warble is a trademarked name, and clearly they are entitled to the domaine names www.warble.co.uk and www.warble.com

What would our position be if we set up an internet store called www.warbleshoes.co.uk?

(NB something that warble have already indicated they are not happy with)

Please can you advise as I think we might be on dodgy ground with this but if we could do it, it would move us up the search engines and we would sell a lot more.

NB Warble are american and don't sell direct in the UK.

i wouold think warble wouldnt sell you their product wholesale and you would have wasted your pennies on a domain name perhaps?

Yes that could happen.

I suppose what I want to understand is, is that the worst that could happen, or could we get sued, loose lots of money etc.

If they have already indicated that they ar enot happy then yes they propbale could and maybe would sue.

Five - but do you know what their legal position would be? Can they claim any domain name with Warble in the title whatever else the domain name contains?

You've got three problems here. You would probably be guilty of trademark infringement and Warble could sue you for that if their trademark is registered in the UK or EU. Secondly, they could sue you for passing off, i.e. misleading potential customers into thinking that you were Warble. Finally, Warble could invoke the ICANN UDRP and potentially have the domain taken off you.

If, on the other hand, you went for warblecomputers.co.uk and didn't sell shoes through that website, you would be ok legally. However, that may not stop them from trying to sue you and, as they have more money than you, they can simply spin the case out until you have no choice but to give way.

You say you are selling their products. Setting up a website using a domain name that they are unhappy with could cause them to cut off your supply, which would not be good for business.

Your motivation for doing this is also somewhat suspect. Simply using a well known brand name as part of your domain name will NOT get a higher search engine ranking for your website. Your ranking is determined by the content of your site, the number of incoming links and similar factors, not the domain name.

You are, as you say, on dodgy ground with this. I would strongly recommend that you don't do it.