The lawsuit targets the use of “WordPress” in the domain, which is forbidden unless permission is granted by the WordPress Foundation—the organization responsible for protecting the WordPress trademarks.
The rules couldn’t be more clear, as outlined in the WordPress Foundation Trademark Policy:
“Permission from the WordPress Foundation is required to use the WordPress or WordCamp name or logo as part of any project, product, service, domain or company name.”
As any experienced WordPress user already knows, you cannot use “WordPress” in your top-level domain:
“Under no circumstances is it permitted to use WordPress or WordCamp as part of a top-level domain name.”
If you want to run a WordPress-based business, you’re free to use “WP” instead.
What makes this case particularly interesting is that TheWordPressHelpers’ site-owner, Jeff Yablon, has filed an objection to fight the case.
The legal wrangle has polarized opinions within the WordPress community, with some speaking out against the trademark infringement, and some openly supporting it.
The WordPress Foundation Lawsuit
If you’re interested in reading more about the case, the full lawsuit submitted by the WordPress Foundation (WPF) is available here.
Allow me to paraphrase some of the main allegations:
- The defendant is allegedly infringing on the WordPress trademark by using it in a top-level domain, without express permission from the WPF.
- In addition to TheWordPressHelpers.com, site owner Jeff Yablon also registered at least six other domains in breach of the rules, including TheWordPressHelpDesk.com, TheWordPressTrainers.com, TheWordPressTeachers.com, and TheWordPressTutors.com.
- After discovering the infringement in January 2015, WPF has reportedly asked TheWordPressHelpers to stop using the infringing domain and transfer it over to WPF.
- The defendant reportedly declined all requests and launched opposition proceedings in May 2015.
- The WPF is seeking statutory damages of between $1,000 and $100,000 for infringing domain.
- The WPF is also seeking to recover all damages, attorney fees, and all profits gained by the defendant during the infringement.
That means there’s a potentially hefty bill awaiting Jeff, should he lose.
The Defendant, Jeff Yablon
Launched in January 2015, The WordPress Helpers had grand aspirations of becoming the go-to WordPress resource.
The WordPress Helpers blog regularly publishes all kinds of WordPress information, including WordPress news, tutorials, and tips.
It is a commercial entity, earning affiliate commissions by recommending WordPress products like ElegantThemes and also selling its own four-hour WordPress Crash Course for $75.
This clearly contradicts one of the requirements of using the WordPress name (subject to permission being granted):
“Your project is non-commercial in nature (it can make money to cover its costs or contribute to non-profit entities, but it cannot be run as a for-profit project or business).”
Even so, Jeff Yablon is fully prepared to fight the lawsuit. And, as with the WPF lawsuit, the full opposition documentation is publicly available by clicking here.
Again, allow me to paraphrase the main arguments of the defense.
- The WPF only registered the trademark legally on November 7, 2014, after the domain was registered on November 1, 2014. The application was allegedly filed with the sole intention of restricting trade that already existed.
- The WPF has previously allowed the use of “WordPress,” for example in sub-domains.
- The WPF trademark application was reportedly to protect the WordPress brand, so that no entity could unfairly profit by tricking people into believing it’s an official resource. TheWordPressHelpers.com clearly states on every page that it is not affiliated with WordPress.com, WordPress.org, Automattic, or the WPF.
- The WPF has allowed some profit-making entities to use the nine-letter WordPress-string, for example, the WordPress SEO by Yoast plugin.
- Trademarks cannot be enforced selectively. As the WPF allows some websites to use the trademark, the failure to enforce it consistently can be construed as an abandonment of trademark.
Jeff makes some reasonable points, and this seems to have polarized the WordPress community. The story has picked up a lot of column inches, and there’s been plenty of talk in comment sections, Twitter feeds, and on Facebook.
Now, I’m not a trademark attorney, so I cannot say which way this one will go.
It does seem like the WordPress community is mostly on the side of the WPF, however, with the general sentiment being that Jeff was a bit insensible for registering such a controversial domain. He could’ve saved himself a lot of hassle by registering a ‘WP’ domain like everyone else—he was warned to do this by several well-respected community members, right at the start, including Chris Lema and BobWP.
One of the main arguments in favor of Jeff is that the trademark application was submitted after he registered the domain. In other words, the WPF are trying to retrospectively enforce the trademark on an existing entity.
WordPress had registered trademarks as far back as 2006, but this didn’t relate to the nine-letter WordPress trademark. WordPress has, however, been asking site owners not to use “WordPress” in top-level domains since 2006—whether this request is legally enforceable is another matter entirely.
Perhaps that makes this a moral issue rather than a legal one. Fighting a non-profit over what seems to amount to little more than a legal loophole is hardly going to endear The WordPress Helpers to the WordPress community, though.
As Dave Bell commented on a post over on WP Tavern:
“WordPress gives us so much. And does not ask for much in return, save for not using WordPress in a domain name. I, for one, think that is a great deal. And I am more than willing to go along with it.”
I agree with his point completely.
What’s your opinion on the WordPress Foundation’s lawsuit against The WordPress Helpers? Share your thoughts in the comments below!