my domain violated trademarks; i have to cancel it

[chizcwish]

recently, my domain violated trademarks. there is a brand name in the title of the domain, in which the owner of the trademark contacted me to change the domain name.

example would be if im selling ipod mp3 players, and my domain name is www.ipod.com, that is in violation.
(this is just an example)

this is my case, that i already set a reputation and have more than 5,000 visitors a day for 3 months already. i want to stand my ranking in google and yahoo, being in either the 2nd or 3rd page, however, i need to change my domain name.

the domain names in overture and adwords will be easy to edit, however the natural searches are what im thinking of. how do i go about creating another domain and still having a rank in the search engines similar to my rank right now.

chris

[mgfint]

The first thing you could do is to verify when their trademark was issued. If it is younger than your domain name, this at least will put you into a better situation to negotiate all further steps with them. This doesn't mean that you will be able to keep the name - as a matter of fact chances are pretty high that you won't. But in the case that you actually owned the domain name before they were granted the trademark, you might very well talk about a buyout with them. Marketing departments and lawyers of more than a few companies seem to have discovered that this form of "reversed domain hijacking" can actually be quite profitable, since they are likely to get at least a part of your traffic, especially when you are running a community-driven website.


In any event, I'd immediately prepare to change the domain name and everything that could potentially represent an infringement. You can probably profit from the fact that legal ways are usually pretty slow. In other words, you can set up the new domain, announce the change of name, "smoothly" redirect your visitors there (not via a heavy handed automatic redirect but by inviting them to visit the new site). Until you receive your next letter from them (provided that you haven't already dealt with them for several months), you keep it that way, once you feel comfortable that your visitors and the SE have found the new site, or when the lawyers start to get really nasty and threatening (last warning!), then you switch over.

After a few weeks you should move everything, simply for your own peace of mind. What I've seen pretty often is that people keep a placeholder page up, with the links to your new page and a short text stating "Our site has moved to xxx.xxxxx.com. If you are looking for (the trademarked site/product) go to yyy.yyyyy.com". At least this demonstrates your good intent (for whatever it's worth).

Obviously, this also all depends on what kind of website (and or -business) you are running. If it's a small vanity/hobby site with little to no commercial value, they'll hardly go for a big fight. At worst ICANN might revoke your domain name (still that can cost about $1,500). If you sell a competing product then you better drop the name ASAP.

Good luck,

Markus

[chizcwish]

thanks mgfint for your informative response!

anyhow, what were u saying about the icann revoking my domain, did u say that the $1,500 will be the fine for me, or the cost of the company that wants to remove my domain?

also, i actually dont have any intend in further taking action of keeping the domain, the company i am dealing with is a big company, like apple for example.

my situation right now is that i dont want to lose my position on the search engines. right now, my domain is on the 2nd or 3rd page, but if i get a new domain, (however still points to the same exact site), i want to still hold that position. i have no problems with updating customers with my new email address,editing documents, etc.

also, youre idea of having a link that states that the domain has been transferred is a great idea. i would consider that, but still i will ask permission from the company that owns the trademark.

[No Clue]

maybe you are the guy who had walmart signs .com !
just kidding. have a look at nissan.com they seem to have the same problem as you are describing

[mgfint]

chizcwish (hell, that's hard to spell....),

First, I think you're doing the right thing when you are not trying to keep the name. A simple domain name doesn't stand a chance against a trademark.

ICANN is kind of the highest and last level to decide over the rightfulness of the ownership of a domain name - after all, you "license or rent" the name from them, you actually never really own it (if you'd own it, your domain name couldn't expire and lots and lots of registrars go out of business...).

Anyway, if for instance you refuse to release the name but instead continue to use it, a company can make a request at ICANN, they then check the issue and if they decide that you do indeed infringe on someone's trademark (or otherwise do things that are otherwise considered abusive, illegal, etc.) they can revoke the name. They have a standart procedure for this, and they charge a certain amount of money (AFAIK it's $1,500). Note that this amount is for the procedure and there not necessary dependend on the outcome. Obviously, if someone tries to get your domain name, starts such a procedure and looses (meaning ICANN confirms that you are indeed entitled to use it), the other party probably has to pay that amount.

A different and quite important aspect of ICANN is also that it is an international body, and is not directly bound to one nation's jurisdiction. In other words, unlike a court order from say a German or American court to release a domain, which might be relatively hard to enforce if you sit in Togo or Nigeria, ICANN can still shut your domain name down.


I might be wrong about this or that detail here, so please don't quote me on it. Nevertheless, I think you get the idea.

Markus

[chizcwish]

thanks marcus for your response. now i understand how domains work on the internet. didnt know it costs that much to revoke a domain name...

sorry, but still the same question lies about the natural searching in search engines...

[jdyndale]

I'm not 100% sure about this but this is what I think will happen:

If you set up a new site and move eveything over to the new site the search engine algorithms will rank your site the same except for those who use PageRank or similar systems. However, this will get back to normal when the external sites linking to your old site update their links and thereafter are crawled again by the search engines.

And for your new site to be indexed in the search engines as soon as possible all you have to do is put an active link up on the old site that points to your new site.

Domain names have an effect on search engine ranking, but there are so many other, more important, things that are considered - so I think your PageRank score is the only thing that will suffer.
And like I said, that will sort itself out after a while.

Of course, a lower PageRank will cause your site to drop down significantly on the search results, maybe even disappear completely. So your site will probably have a little search engine vacation :P

I hope this helps.

---------------------

- Joachim Dyndale

[savvymedias]

I have been through this several times. does this mean that the guy who owns [anycompany]sucks.com is liable??

Ask what they are offering to purchase the domain name for, and if they aren't and your intent is not malicious and you are not misrepresenting anything, they can stuff it.

IMHO

[savvymedias]

I have been through this several times. does this mean that the guy who owns [anycompany]sucks.com is liable??

Ask what they are offering to purchase the domain name for, and if they aren't and your intent is not malicious and you are not misrepresenting anything, they can stuff it.

IMHO

[wednesday]

Originally Posted by chizcwish

sorry, but still the same question lies about the natural searching in search engines...

Common practice to redirect domain is to use 301. I gues you could keep the domain for some months. The PR of the domain will be transfered to the new one. Concerning the search engines, you have to take care about the ibls. Send a letter to the sites linking to you, to change the link to your new domain. Get new links, links, links... I'm not sure how to deal with the sandbox. If you already own some good indexed an year old domain use it to prevent some months of nowhere. Of cource you can buy one on the free market (1 year old, indexed domain, if you find one ask here for help again). You can't go out of the water dry, but at least won't lose your hair-style. And... register a trademark ;)

[aperio]

chizcwish,
I was actually in your shoes a couple of years back. In a nutshell, I was contacted by a major company regarding a domain I had that partially contained their name. It was an enthusiast site and boasted a very nice amount of daily traffic and had a very active forum base (around 8,000 registered members at the time)... and to top it off I had first page, first spot google ranking for a handful of targetted keywords and phrases...

Now, by no means am I saying that I handled it the best way - or even the appropriate way. I'm just simply telling you what I did...nothing more ;)

I registered a new name and did actually just do a total site page for page redirect to it. I continued to get the traffic from the search engine results (from the old results to the new name), plus began to get the new site indexed as well... and never heard another word from the automotive company.

Again, I'm not saying this is the best way to do it. There may still be some legal issues pending due to the fact that you are still "benefiting" from the domain in question...you may want to consult legal counsel on that to be sure. I guess I was just feeling lucky - and probably was.

Best of luck to you!

[mktplace]

1. Get a new domain up and running ASAP

2. Create an .htaccess file on the old domain that has 301 redirects, one for each old page to new page

3. Wait for the search engines to catch up

4. Contact all your inbound link partners and have them make the change ASAP (this will help in the search engines as well)

5. Pray the search engines convert to the new domain name before you have to turn off the old one

6. Review the Landham Act (it is the trademark law). I seem to remember you having 30 days to comply from receipt of the request - so get going

Been there - it sucks; even though you cannot use the infringing domain any longer, keep it if you can so the whiner doesn't try to steal your traffic!

[DrTandem1]

Interesting dilemma, not knowing all the facts. Domain names can get murky. A pornographer had madonna.com. Madaonna sued and won. I don't know, if there was a trademark issue. Simply having a domain name such as Nissan.com is not a trademark infringement. However, ICANN, which is not a court, may still decide against you. This may be why the Nissan issue ended up in court.

It is doubtful the US Supreme Court will bother hearing this case. If they do, the car maker will lose. Many trademarks have the same name. It depends whether or not it will cause confusion between the brands.

Anyway, your basic concern is that you want to change domain names and not lose traffic. As a previous post suggests, you may want to alert your current visitors. Hopefully, you will be allowed enough time to accomplish this.

If not, your only choice is to change the domain name and have all links pointing to the old name changed. There will be a dip in the search engines, but since you're using PPC, maybe it won't matter. I'm not a great believer in PPC for the advertiser, maybe you aren't really, either. That's why the concern about the natural SERPs.

Just curious, why aren't you letting us know your domain name?


Good luck.

[TimH]

I would like to know the domain name as well that this post is about. Good post about nissan.com.

[aperio]

If you want some interesting reading and have some down time, give this one a read: http://arbiter.wipo.int/domains/deci...2000-1532.html

It's about the battle over the domain name brucespringsteen.com ... the decision was made by a 3 person WIPO panel (which must be requested by the respondent and is more costly than the standard single panelist, mind you)... but the resulting decision was quite surprising.

[billc]

Is your site listed on Dmoz.org or in the Yahoo directory?

I've read post that making a duplicate site can be disastrous!

Have Great Weekend
Bill C

[jawn_tech]

If you want some interesting reading and have some down time, give this one a read: http://arbiter.wipo.int/domains/deci...2000-1532.html

Very nice example! Too often domain name owners get bullied, but it's all bark and no bite. I for one own a domain name which does contain a TM word, but I maintain it does not breach TM laws. Too many people back down when they hear from a company, thinking just because they have big lawyers, they must be right. This example shown above shows exactly that it isn't the case.

Just remember, when in doubt, follow the www.paypalsucks.com example.

[cspelts]

Originally Posted by billc

Is your site listed on Dmoz.org or in the Yahoo directory?

I've read post that making a duplicate site can be disastrous!

Not a problem - just go to DMOZ and/or Yahoo and fill out an update URL form. These things happen and there are procedures in place to handle it!

I've encountered the trademark issue as well and our lawyer suggested we place a disclaimer in the footer of each page that said we were not associated with the big company. It worked to a certain degree - but that's only because it was truly a coincidence that the names were similar - and we were in a totally different field.

Since you're willing to give up your domain - and I agree that's a smart choice - I would strongly suggest redirecting your entire site page by page. If there's no real content on the original domain, just the redirects, then the big company will probably feel that you’re complying and be willing to give you a couple of months to transfer all your traffic. Definitely ask for this!

I’m sure others can give you a more definitive answer – but my best guess is that if you replace a page of content on your original site with a redirect to the same page on the new site, the impact on your search rankings will be minimized. You most likely will take a hit, especially if you’re in a competitive market, but that should minimize it.

Good luck!

[jawn_tech]

just go to DMOZ and/or Yahoo and fill out an update URL form.

Good advice, just don't hold your breath for Yahoo to do anything, despite their change request form.

[metavisia]

Hi,

As far as I know, if your domain name is registered before the trademark, it's your right to keep it and use it. If the trademark is registered earlier, you must give it away.
There's also another issue - a trademark can be registered in a specific country only while a domain name is valid wordwide. What is the exact jurisdiction here, I would suggest consulting a lawyer.
Actually, consulting a lawyer is something you must do, I see that's an important issue for you. But make sure you get some younger one. The 50-year old grandpas won't be too helpful for domain names I think :)

[cspelts]

Originally Posted by metavisia

The 50-year old grandpas won't be too helpful for domain names I think :)

What?

[jawn_tech]

Actually, consulting a lawyer is something you must do, I see that's an important issue for you. But make sure you get some younger one. The 50-year old grandpas won't be too helpful for domain names I think :)

That is a stereotype that is highly unfounded, and highly innaccurate. You obviously don't know what you're talking about in that statement.

[chizcwish]

taking back this topic again, i have another follow question. what happens if the owners of the trademark do legal action and report it to ICANN, but however, i will be taking down my site by the end of the week, will there be anything against me since ill be transferred the ownership of the domain this week. however, they MIGHT report me on monday, will this be okay in the long run? i am just thinking that there might be any charges etc, even tho i transfer the ownership, maybe i can do it on tuesday.

also, i cant talk to the owners of the site, because this has been a while and i need to take it down asap.

[chizcwish]

guys im in the process that i have to transfer the domain to the owner asap. i just registered a new domain (not violating trademarks) 5 minutes ago, and i need to transfer the domain by tomorrow.

i was thinking that if ever i cannot have the transfer tomorrow, i will then accept legal action (they will report me to ICANN to get their domain ownership), however, i will be able to transfer the ownership of the domain by the end of the week, in which ICANN will have no effect anymore, since i already did it. i was thinking however if there will be any fines etc if they report me.

i cannot ask for any extensions, that this has been an issue for a while already. keeping the site for a couple days more will help me alot, that i am still making sales, and i cant afford to lose any sales by bringing the site down even just a day.

[handry]

However did you ever noticed that Money is Power.

If the trademarks name owners have the bigger power, they can do all they want to sue you for violating trademarks. Except you have all of this power to bring down their legal action.

Anyway, don't just give up and closed all your sales just because of this things. If you do have Customer Centric Base and a good marketing system on your site. I believe it's only a matter of time that your new site will be up again.