Someone using our domain name - we need it back!

[pagetta]

Our company owns the .com domain for our company website.

We recently went to purchase a .com for our abbreviated name and found that somebody else already has this registered. It currently holds affiliate advertising for mobile /wireless related services & products.

Although this is not a registered trademark, it is clearly part of our company name, and a shortened term by which people in the wireless industry recognise us.

Do we have a legal leg to stand on here with regards to forcing them to give it back? or is it best to start with a 'cease and desist' letter (if so what do you write in one of those!!!)

thank you for any advice you can offer

[wige]

First off, I am not a lawyer, and you would want to talk to a lawyer who could tell you about how the laws in your location affect this issue. However, I would say that it is unlikely you could force another company to give up their domain name, especially if their company name is WDS. Your first step would be to prove that they are infringing on your trademark - engaged in the same industry, in the same nation or region, causing confusion to the consumer.

First, though, since you both don't have the same name, unless you have registered a DBA for the name "WDS", I think your claim would be moot. In the case of similar names, domains are given on a first come, first served basis.

[kgun]

Originally Posted by pagetta

Our company owns the .com domain for our company website.

1. How long has that company existed?
2. How long has the internet page existed?

Originally Posted by pagetta

We recently went to purchase .com for our abbreviated name and found that somebody else already has this registered. It currently holds affiliate advertising for mobile /wireless related services & products.

1. Was that aquired after WDSGlobal was acquired?
2. If yes, why did you not buy wds dot com at the same time you bought WDSGlobal dot com?
3. How many internet sites are there with wds in the domain name?

[wentzco]

First of all someone is not using your domain name... they are using "their" domain name that was registered in way back in 1990. They didn't register the domain name in "bad faith". Generic acronyms can be used for a wide variety of companies & every company that I know of that really wanted that acronym domain name had to purchase it from the domain owner. Trying to legally wrestle away not only resulted in a loss of case/money but also angered the domain holder which not a wise thing to do if you want the generic domain name.

With that said - the advertisements that are being served up on their parking page (this is not their decision but their parking provider that is doing it) possibly could be a very slight problem for them. I say this as "very slight" because all that you could maybe do is ask for a cease and desist on serving up those ads.... which you may not be able to do at all likely.

My opinion for you is to offer the owner of the domain name $10,000-$20,000 for this valuable generic acronym domain name that can be used by "many" companies including yours. You may likely have to pay more for it. I also recommend using an email addy not coming from your company address so they don't know it is WDSGlobal trying to buy it (could cause asking price increase). Start off with a $6000 offer & see what they say.

I am not a lawyer obviously so you could waste your money by actually contacting one regarding this matter IMO. I have been involved in domain investing for the last 10 years however.

[kevinper]

Disclaimer: Not a lawyer either and this is not legal advise but just a lowly opinion.

3 letter domain names have beed sold out for years. You could offer to buy it but be prepared to pay dearly. Doesn't look like any infringement here.

If your name was Bisquick and they had Bisquick. com then you might have a case. If I had WDS.com and I was selling my Witches and Demons Singing telegrams for halloween and my company name was Witches Demons Services you would be out of luck as well.

[cg0404]

I know of a case using initials in the same way, that company lost trying to force another business owner, whose owner had the same initials to refrain from using them. You could probably find an attorney though that would say they could win it. If there were a logo or something tied into, you might have a case.

I am also not a lawyer, but the company above had a lawyer who said they could win, and they did not prevail.

[Uncle Dog]

WDS Standard Parts, Machine Accessories
WDS - Wireless Distribution System
WDS - Windows Deployment Services
WDS - Women's Design Service,
The WDS Group - Your Total Fastener Specialist

Who?

Oh! and "Wilfred's Discount Swords" est. 1376

[DaveSawers]

I recall a case from a couple of years ago when Armani was trying to get the domain name armani.com that had been registered by a Mr A. R. Mani (yes really). They failed of course. See the story here: Judge lambasts Armani in domain name ruling ? The Register

I doubt you will have any better luck however much you spend on legal fees.

[ron angel]

Originally Posted by pagetta

Our company .com domain for our company website.

We recently went to purchase a .com for our abbreviated name and found that somebody else already has this registered. It currently holds affiliate advertising for mobile /wireless related services & products.

Although this is not a registered trademark, it is clearly part of our company name, and a shortened term by which people in the wireless industry recognise us.

Do we have a legal leg to stand on here with regards to forcing them to give it back? or is it best to start with a 'cease and desist' letter (if so what do you write in one of those!!!)

thank you for any advice you can offer

This guy has had the site as mentioned since 1990 before you registered yours see:

he is also in Romania so I think you have no chance and none! His lawyers would give you the run around for years. I note from the above link page that it is for sale at $9450 make him an offer before somebody else does.maybe I should buy it and sell it to you for $15000 for quick profit (only joking..)
If I had a site in a similar situation & some body came hard at me with lawyers instead of making a reasonable offer I would turn it into a hard core legal adult site,and hold on to it as long as possible,which would help people looking for your site no end. better approach is the pleasant way.good luck!

[BluePlanet]

You "recently" went to purchase the domain and wow, found it registered. Are you people seriously deluded or what? Three letter domains have been gone for years. I had several for an ISP that I sold. I have a hundred domains and various corporations. I have been involved in a number of intellectual property actions.

Even if you had a trademark on "wds" which you apparently don't you would not be able to do anything legally to obtain that domain. Well actually, you could never have a trademark on "wds". Besides trademarks are in classes of goods and services. so it would probably not even be a conflict.

As the domain is registered in Romania..... well I can't comment as I can't stop rolling on the floor in laughter.

The ONLY way you will get that domain is to purchase it. 10k is actually a deal, especially if you are really a gobal business.

10k isn't even enough for a down payment for a trademark action in the US.

[nickoran]

Originally Posted by BluePlanet

You "recently" went to purchase the domain and wow, found it registered. Are you people seriously deluded or what? Three letter domains have been gone for years. I had several for an ISP that I sold. I have a hundred domains and various corporations. I have been involved in a number of intellectual property actions.

Even if you had a trademark on "wds" which you apparently don't you would not be able to do anything legally to obtain that domain. Well actually, you could never have a trademark on "wds". Besides trademarks are in classes of goods and services. so it would probably not even be a conflict.

As the domain is registered in Romania..... well I can't comment as I can't stop rolling on the floor in laughter.

The ONLY way you will get that domain is to purchase it. 10k is actually a deal, especially if you are really a gobal business.

10k isn't even enough for a down payment for a trademark action in the US.

Well said, its a 3 letter domain name!!! there are a million companies out there that would pay for those 3 letters, imo you aint gona have it without some serious cash! simple as! and there are undoubtably a lot more companies who have wds as thier abbreviated company name...

[Clint1]

Unfortunately for you Pagetta, I have to agree with the posts here. Member/mod "cw1865" is either a lawyer or studying to become one. You might PM him and ask him to take a look at this thread. I would think his assessment overall would be about the same, but he may have some other ideas.

You could try and backorder the domain name, or just simply ask them if they would be willing to sell it. Or check other domain extensions, but I see .net and .co.uk are already registered.

[pagetta]

Originally Posted by kgun

1. How long has that company existed?
2. How long has the internet page existed?

- The company has existed since 1995 and has owned wdsgolbal.com since 2000
- the whois lookup says that wds,com was created in 1990, last updated in 2008

Originally Posted by kgun

1. Was that aquired after WDS Gobal was acquired?
2. If yes, why did you not buy wds dot com at the same time you bought WDS Gobal dot com?
3. How many internet sites are there with wds in the domain name?

- not sure why it wasn't acquired at the time

I'm guessing from this information it doesn't look like we have much of a case??

[kgun]

Look at the answers here: Someone using our domain name - we need it back!

WDS dot com was acquired in 1990 and it is for sale.

Buy it.

[pagetta]

thanks for the advice guys - much as i thought but worth looking into hey?!

[kgun]

Originally Posted by ron angel

This guy has had the site as mentioned since 1990 before you registered yours see:

he is also in Romania so I think you have no chance and none! His lawyers would give you the run around for years. I note from the above link page that it is for sale at $9450 make him an offer before somebody else does.

Originally Posted by wentzco

Start off with a $6000 offer & see what they say.

Originally Posted by BluePlanet

The ONLY way you will get that domain is to purchase it. 10k is actually a deal, especially if you are really a gobal business.

10k isn't even enough for a down payment for a trademark action in the US.

Yes, good advice, so why are you still online at WPW ...

[nickoran]

Originally Posted by kgun

Yes, good advice, so why are you still online at WPW ...

What? there's an option to leave!?!?

(youll walk right out the door and into a forum full of spam and be back in 3 minutes! lol)

[colin4255]

Just seen this. Am amazed. We live in a democracy and as far as I am aware, people can buy whatever they want within reason. If they bought it and they own it, then it cannot be yours? or am I missing something here?

If it matters that much to you, then offer to buy it - I am sure they'll have a price in mind, but like others have said 3 letter domain names just aren't available any more - all got bought up years ago so they will rightly expect in the the tens of thousands for it - still less than the cost of contesting their ownership.

[Clint1]

Originally Posted by colin4255

Just seen this. Am amazed. We live in a democracy and as far as I am aware, people can buy whatever they want within reason. If they bought it and they own it, then it cannot be yours? or am I missing something here?

If it matters that much to you, then offer to buy it - I am sure they'll have a price in mind, but like others have said 3 letter domain names just aren't available any more - all got bought up years ago so they will rightly expect in the the tens of thousands for it - still less than the cost of contesting their ownership.

I'm sure cw1865 would know more, but here's the general scope of it. If you found out someone was using (one of) your "company names" that would be unsettling to anyone, as it is in the OP's case.

It's a fine gray line between what a "famous person or place" actually "owns" or at least "has rights to" when the entire name is not part of the domain. Some years ago for example someone registered Madonna.com and that is of course much more obvious and in that precedent setting case the domain was awarded to her by the courts--as it also happened in similar cases that followed--in favor of the celeb. So going by that precedent, it would be hard for someone other than the celeb themselves to register names like Cher.com, shaq.com, or any other famous well-known name. However, in that example it would be much harder, even probably impossible to award MxC.com to Madonna (I don't know x here middle initial) because that domain name is so obscure.....as it is in the OP's case.

Obvious cases, for example (a most interesting one) like IBM.com with InternationalBusinessMachines.com, IBM would seem to have a case if they wanted the latter, but it's up and it's some useless search portal NOT registered to IBM. I thought they may have sold the rights to "International Business Machines" but they are indeed still known by that name, IBM About IBM - United States . So it would seem they would have a very strong case there if they wanted that domain name, since they for decades have been globally known by both "IBM" and "International Business Machines".

Another one is HewlettPackard.com and HP.com, both go to HP.com. If either did not go to their site or was owned by someone else, they'd have rights to it. They could have a case with HewlettePackard.com, if they cared enough to pursue it.

I would guess the OP is thinking along those lines.

Even if these big name companies would have registered only one of those examples, they'd "have rights" to the others because they "are a big worldwide known multi-billion dollar" company. That interpretation as to who or what is exactly entitled to their "other known names" in gray areas would be left up to courts to decide when a company (celeb, person, whatever) is of "lesser known status" (or probably aka "less money"), is when it becomes a gray area that would be argued.

When dealing with matters in different countries (like between someone in the USA and another in Romania), that's probably even more difficult. Coupled with the OP's company not even having their name a registered trademark, I would guess it would be next to impossible.

[nickoran]

The rules do change between countries from what i am aware, and you can put a stop to people registering a company name that is very similar to yours if they intend to mislead people with it or are competing in a similar market. Im sure this goes along with domain names too. the problem is those 3 letters you want really are generic, they can be adapted to so many different things and stand for so much.

[kgun]

Originally Posted by nickoran

What? there's an option to leave!?!?

(youll walk right out the door and into a forum full of spam and be back in 3 minutes! lol)

It was an advice to run and buy the domain

[kgun]

Originally Posted by Clint1

It's a fine gray line between what a "famous person or place" actually "owns" or at least "has rights to" when the entire name is not part of the domain. Some years ago for example someone registered Madonna.com and that is of course much more obvious and in that precedent setting case the domain was awarded to her by the courts--as it also happened in similar cases that followed--in favor of the celeb.

Not an obvious case to me. What if the person that registered it came from Italy / Spain and had never heard about Madonna?

So

1. I have to change my nick here at WPW
2. or I can get the right kgun dot com that redirects to kgun9 dot com
3. or I give them some free traffic?

I vote for 3.

[Clint1]

Originally Posted by kgun

Not an obvious case to me. What if the person that registered it came from Italy / Spain and had never heard about Madonna?

She is huge in Spain and Italy. She's done Spanish songs and albums before, and she's currently #1 in Italy (and Germany and the UK). But I do understand what you're saying. However that's no reason that they should be able to acquire some Madonna-related domain just because they've never heard of her.

It should go without saying that was just an example that I gave, you can use it (like I pointed out), with other global celeb's and companies.

What I meant by "obvious" is that, in that example, she's globally huge and that domain such as "madonna.com" would "obviously" be awarded to her, as it eventually was.

[DaveSawers]

There's no good reason why a christian organization shouldn't lay prior claim to madonna.com. They would have a recognized and documented history of usage stretching back more than 2000 years.

[deepsand]

Acronym Definition

• WDS Windows Deployment Services (Microsoft)
• WDS Wide-area Data Services
• WDS Wireless Distribution System (Joint Common Database)
• WDS Wavelength Dispersive Spectroscopy
• WDS Wireless Domain Services (Cisco Systems technology)
• WDS Washington Double Star (Catalog; US Naval Observatory)
• WDS Women's Dermatologic Society
• WDS Washington Dental Service (insurance)
• WDS Walt Disney Studios
• WDS Worldwide Diagnostic System (automotive diagnostics)
• WDS Workforce Development System
• WDS Wavelength Dispersive X-Ray Spectroscopy
• WDS Wireless Data Service
• WDS Well-Defined Services (SML, IBM)
• WDS Wireless Data Server
• WDS Woodward Dream Cruise (Detroit, MI)
• WDS Waste Disposal System
• WDS Western Data Systems, Inc.
• WDS Wogen des Schicksals (German)
• WDS Water Deluge System
• WDS Weapon Delivery System
• WDS Wi-Fi Distribution System
• WDS Winter Death Syndrome (starvation in deer)
• WDS Word Disparity Sum
• WDS Weapons Directive/Direction System
• WDS Waveform Design Specification
• WDS Westhampton Day School (Richmond, Virginia)

wds - Google Search


Seems to me that it's going to awfully hard to convince ICANN, or, anyone else, that you're entitled to exclusive use of "WDS."

[Clint1]

Originally Posted by DaveSawers

There's no good reason why a christian organization shouldn't lay prior claim to madonna.com. They would have a recognized and documented history of usage stretching back more than 2000 years.

True, that's a good point! FAIK it may have been a Christian organization that was shot down (we know how the courts "really love" Christianity). But I think, it may have been just some individual because I think that's what started the cyber-squatting law, or at least put it on the map. Yep:
Madonna wins cybersquatting case. | Media & Telecommunications > Internet & WWW from AllBusiness.com
CNN.com - Entertainment - Madonna wins cybersquatter suit - October 16, 2000
Madonna.com embroiled in domain ownership spat - CNET News
FMI Anti-Cybersquatting Legislation

Others that come to mind are p0rn stars that use famous celebs' names as homonyms/homophones. (No, that's not 'a standard common communication device' used by those that prefer the same gender ).

[ron angel]

Originally Posted by Clint1

True, that's a good point! FAIK it may have been a Christian organization that was shot down (we know how the courts "really love" Christianity). But I think, it may have been just some individual because I think that's what started the cyber-squatting law, or at least put it on the map. Yep:
Madonna wins cybersquatting case. | Media & Telecommunications > Internet & WWW from AllBusiness.com
CNN.com - Entertainment - Madonna wins cybersquatter suit - October 16, 2000
Madonna.com embroiled in domain ownership spat - CNET News
FMI Anti-Cybersquatting Legislation

Others that come to mind are p0rn stars that use famous celebs' names as homonyms/homophones. (No, that's not 'a standard common communication device' used by those that prefer the same gender ).

As Mary (Madonna) was Jesus's mother and Jesus was a Jew, to be Jewish your mother has to be Jewish.
Therefore I think that the Jews might have a good chance of winning a class action on the name...

[kgun]

Originally Posted by deepsand

Seems to me that it's going to awfully hard to convince ICANN, or, anyone else, that you're entitled to exclusive use of "WDS."

Excellent observation.

[rah]

At the request of pagetta, I've merged her two threads together and removed the use of the name. Please continue to discuss this topic, but try not to use the name.

Thanks,

[Tarzan2]

Originally Posted by Clint1

True, that's a good point! FAIK it may have been a Christian organization that was shot down (we know how the courts "really love" Christianity). But I think, it may have been just some individual because I think that's what started the cyber-squatting law, or at least put it on the map. Yep:
Madonna wins cybersquatting case. | Media & Telecommunications > Internet & WWW from AllBusiness.com
CNN.com - Entertainment - Madonna wins cybersquatter suit - October 16, 2000
Madonna.com embroiled in domain ownership spat - CNET News
FMI Anti-Cybersquatting Legislation

Others that come to mind are p0rn stars that use famous celebs' names as homonyms/homophones. (No, that's not 'a standard common communication device' used by those that prefer the same gender ).

I suppose it would be prudent to note that the cases won were against cybersquatters. If a business or individual who also has reason to claim such name had it, I would suspect the outcome would be different; such as was pointed out earlier with the armani name. In this case the O.P. (original poster) claims the domain is parked, but we don't know why it is parked. Is it a squatter or someone still getting their site built? Did they have a business that went under? Too many questions without answers.

[deepsand]

Originally Posted by Tarzan2

In this case the O.P. (original poster) claims the domain is parked, but we don't know why it is parked. Is it a squatter or someone still getting their site built? Did they have a business that went under? Too many questions without answers.

The intent of the present owner of the DN in question is irrelevant to the underlying issue of overriding import; i.e., to what extent can a claim to hold exclusive rights to use of the 3 letters in question be supported.

In this case, given the wide use of such letters, successfully supporting such a claim would be exceedingly difficult, if not impossible.

[Clint1]

Originally Posted by Tarzan2

......In this case the O.P. (original poster) claims the domain is parked, but we don't know why it is parked. Is it a squatter or someone still getting their site built? Did they have a business that went under? Too many questions without answers.

In trying to be "elusive" at the request of Rah and the OP (which I don't understand why the domain was removed ), I checked the "domain in question" and it is indeed sort of one of those questionable "search portal/link collecting" type pages.

[nickoran]

They have a twitter page with thier current domain name in it, along with anything else you have, i know sometimes people really want "that" desirable name, but think how hard it would be to get a 3 letter domain name, and then get the same names for all your social media accounts, etc etc.