July 29 2022

That bad Italian habit of infringing trademarks to position your site.

Did you know that Trademark like WordPress or Magento cannot be used as part of a domain name?

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There is a rather widespread phenomenon which consists in the use of a trademark registered by third party owners, within its own domain in order to obtain immediate advantages thanks to the dry keyword.

If this aspect may seem insignificant, it must be borne in mind that each brand has its own guidelines with the permissions and prohibitions that the owner of the rights on the brand intends to grant or not to possible users.

Using it in a different way, or even explicitly prohibited, actually means violating the regulation of the trademark which can lead to a warning or even a request for compensation for non-compliant use.

Let's take the Magento brand and the WordPress brand for example.

Both are famous CMS but also trademarks registered by their respective companies.

Magento is now part of Adobe and WordPress is a registered trademark of Automattic Inc. Both brands have very specific guidelines that prohibit the use of their trademark within a domain name.

Specifically Magento as we can see from their guidelines at this address https://developer.adobe.com/commerce/marketplace/guides/sellers/branding/ explicitly prohibits the use of the word "Magento" within a domain name.

Trademark-Magento

In the exact same way also Automattic. the company that develops WordPress and owns the ownership of the brand prohibits the use of the word WordPress within a domain name, as specified by their guidelines https://wordpressfoundation.org/trademark-policy/ :

Trademark WordPress

However, even though the directives and prohibitions imposed are clear and eloquent, there are several sites that are very careful to respect them, obtaining an advantage in terms of visibility and positioning that are not indifferent.

It is one thing to place a generic domain and content within the site, one thing is place a dry key which still brings its results today.

Violation of the WordPress Trademark

How is it possible that a very common search such as WordPress Support can appear on the first page of Google, at the top of Google, with a “Supportwordpress.com” project launched less than 4 months ago (in March 2022)?

It seems hard to believe and think, yet, the Whois data and the Google screenshot in incognito browsing say just that:

Domain Name: SUPPORTOWORDPRESS.COM Registry Domain ID: 2685138150_DOMAIN_COM-VRSN Registrar WHOIS Server: whois.register.it Registrar URL: http://www.register.it Updated Date: 2022-03-29T04: 39: 50Z Creation Date: 2022 -03-29T04: 39: 50Z Registry Expiry Date: 2023-03-29T04: 39: 50Z Registrar: Register SPA

WordPress support

Not only to appear in the first places, but even in the first place on Google with a lot of Snippet and telephone number in first sight. An absolutely profitable way to bypass all the competition that may have invested huge budgets and years of positioning, content Marketing and SEO to find themselves at the bottom of the first page or in the second or even beyond.

We phoned, pointing out that the domain registered in this way violates privacy, but to this day it still seems in its place, although we have already taken countermeasures through the legal support of Automattic in order to see the respect of the rules that must apply to everyone restored.

Obviously this is an obvious case, but nevertheless it is not a unique case. By conducting investigations online, it turns out that there are at least 212 violations only for .it domains.

Trademark WordPress breach

Violation of the Magento Trademark

As we did for WordPress we can do the same for the Magento keyword.

Is it normal, for example, that if we search for Magento on Google, Magento-ecommerce.it comes out first and then AFTER the official Magento site?

Magento Google Search

The question is rhetorical, the answer is obvious and obvious. However, it is not tolerable that benefits can be obtained by violating regulations in which Adobe itself prohibits this behavior.

Also in this case we wanted to bring to the attention of a very explicit case that leaves little room for the imagination, but as in the previous case of WordPress, it is not the only site to adopt this incorrectness.

Searching the net results in 88 .it domains that illegally use the Magento trademark within their domain.

Magento Trademark Violation

 

The game is rigged and everyone has it to lose.

It is objective that in extreme situations such as those mentioned above we are witnessing a game in which one cheats explicitly, in which the only ones to obtain advantages are those who violate the regulations on trademarks to more easily position their site on search engines with theirs. products and their services.

Not only do you get an advantage in terms of SEO and positioning, but you make yourself even more attractive to the non-expert user who, by searching on Google for the keyword, is most likely to click on the first result convinced to speak to the official assistance.

Of course, this is a hypothetical conclusion, but nevertheless likely with the requests that come to us for some keywords (such as Roundcube for example) that we have inadvertently placed on our site and the phone often rings from customers of other suppliers mistakenly convinced to speak with Roundcube assistance.

However, many lose, such as:

  • The holder of the trademark: from a point of view of authority and authority, it is overtaken by companies or individuals who do not have the right to use their brand and are in fact exchanged for the official company. Therefore, there is a risk of decreasing profits, credibility and being associated with companies that probably do not have the competence and authority of the parent company.
  • The client: The non-expert customer turns to sites that have the brand in their domain believing they are talking to a partner or official assistance. This can create damage to the customer (let's just imagine poorly executed work or offline costs), but also indirect damage to the brand owner where the customer has an unsatisfactory experience with the third party supplier who is using and abusing the brand.
  • Competitors who respect the regulation: Development companies, developers, Hosting, which try to position themselves for the same keywords on search engines, without however using the use of the keyword within the domain, find themselves penalized (or at least not advantageous) compared to their competitors that in just three months reach the front page with dry keywords.

Everything is lawful that is not expressly forbidden.

We are strong supporters of the mindset that argues that everything is lawful if not expressly prohibited and not that everything is prohibited unless expressly lawful. In these cases we were able to see at the beginning of this post, how the prohibitions are very clear and self-evident and how these domains violate these regulations for any reasonable doubt.

As long as a site with a non-compliant domain name is positioned on the tenth page, it certainly does a disservice to all those who are after it, perhaps on the twelfth page on Google, but when such a site is in the first page does harm to everyone else.

Stop this malpractice with the cooperation of Adobe and Automattic.

By now tired of looking impassive and impotent at such practices which are expressly prohibited and which directly and indirectly harm us and our collaborators, we began in June to enter into a communicative relationship with Adobe through Adobe Italia, and Automattic in order to provide them a list of sites currently infringing the trademark and give input for cease and desist actions.

Cease and desist (from the English language: cessation and desistance), in common law it is a document sent to an individual or company to stop ("cease") an activity deemed illegal and not resume it ("desist").

We have no interest in harming competitors, but instead we have a very keen interest in not being harmed and not seeing more customers who complain about the official support of WordPress and Magento, then realizing that it was not them.

For now, we will wait for the evolution of the story in a context of compliance with legality and regulations, certain that Adobe and Automattic have the interest of the entire ecosystem and their community at heart.

Do you have doubts? Not sure where to start? Contact us


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