I have a Corporation and falling under the umbrella of the corporation I have a few domains.

Lets say the one of the domains under the umbrella is xyz.com Now I trademarked the corporation name but like most I did not trademark the domain names that fall under it. I just found that some one is using our domain name xyz.com with the .com in the title for their ad-words campaign. I found this due to a customer emailing me complaining that they did not receive a item only to find out they did not order it from us but the other company that is using our name.

I have looked on Google and they do have a complaint form for ad-words but it is a complaint form if the domain name is trademarked. does anyone know if there is anything I can do?

They are confusing our visitors as our visitors think they are part of us while they are not.

Using the name is one thing. but adding the .com to the end in my eyes is another.

Anyone have any advice on how to handle this?

Hi Sparky,

Start here:

AdWords Trademark Complaint Procedure

You'll need to follow through with filing Google's Trademark Complaint Form. In the form you will specify you are the trademark owner and detail what account # (client ID) and the domain(s) you authorize to use your trademark. Once your submission has been approved by Google, you should receive a reference # and all unauthorized advertising done on your trademark in ads will cease.

Good luck,

Danielle

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I think this article here will help you. The fact that he is using .com on the end may not be entirely relevant. It is causing a 'likelihood of confusion' and as such might be held to be trademark infringement. Check out the link, think you will enjoy it....

Likelihood of Confusion—The Basis for Trademark Infringement

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@carpediem As I pointed out I only have my corporation name trademarked. The domain in question xyz.com that name is not trademarked. I'm not sure if I can still use this form as I see they ask for trademark number which I do not have because that domain name is not trademarked.

@cw1865 Thank you for the link. I'm going to read it now.

Its going to boil down to the 'xyz' - if it is a nice non-generic name, then the fact that they are tacking a .com on the end of it is of little consequence. Good example would be Ford. Ford sells cars, the name 'Ford' has nothing to do with cars whatsoever. If somebody took ford.com and started selling cars, well, its likely going to be ruled trademark infringement. If the 'xyz' is generic, ie. widgets and they took widgets.com, well then you're going to have a more difficult time enforcing the trademark.

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Understood.

Just as an example:
If I ran a car site of the same nature and used "thecarconnection.com" as a title to my adwords, is there anything they could do if the name thecarconnection is not trademarked? This is what the other site is doing to us.

I did fill out the trademark complaint form for Google and selected for trademark "No claim use rights" and explained to them our concern.

I just checked and the ad no longer appears. Either they have met their daily cap or Google came through. I will know tomorrow when they get a new daily spend amount. I will post back tomorrow and let you know if the ad reappears.

+rep for both of you. Your help is very appreciated.

I have seen something similar. An acquaintance many years ago, wanted to trademark, Toner, Ink & Ribbon, but those are precisely the products he sold. His trademark request was denied. He told me that something like "Staples" is generic enough that the stores were able to ge their trademark.

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The .com doesn't matter. You don't have to trademark the .com portion of the name. It is like was said, if you grab Ford.com, Ford can take it away from you because Ford is trademarked. If your company name is trademarked, it can not be used in any way shape or form without your permission. Tacking on a .com doesn't work.

Anyway, you need a lawyer, and I always advocate PrePaid Legal because as a small business owner myself, they have saved me thousands of dollars and lots of headaches for very little money.

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Might I suggest you get a very good trademark attorney. They are VERY expensive but worth every dime.

Good luck.

Michael

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I have encountered this. I took the simple steps of looking up the registrant of the offending domain. I called her at home and asked for her by name. I stated the purpose of my call and that I would need to refer this to "my people" for further investigation if necessary.

The ads were gone about 15 minutes later when I checked.

Good luck!

What if ford.com was a Harrison Ford website? I heard Madonna.com was snatched from a group of Italian nuns. Is there any established system to any of this or does it come down to who can pay for the most expesive lawyers.





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There are several systems attached to domain names and trademarks. If the company name is registered, even without a trademark, your national domain registrars will usually award the domain to you. This is somewhat more complex in the USA, where each State runs its own registry of company names. Trademarking helps there, as that is a national assertion of the right to use a name.

If your business is trademarked, then you should be able to claim the .com, .net. etc forms from the domain registrar. It sometimes takes a while. Part of the process is to contact the previous/current owner and ask them why the domain shouldn't be released to the trademark owner.

When you have the trademark for the business, Google will generally allow the assertion of the right to use the trademark in advertising. They'll even help with reasonable variations, especially if you are a large business. So if "Windows" is trademarked, then Google might allow protecting "VVindovvs" or even "Wimdows".

However, Google *doesn't* trademark protect the Display URL. They have another policy for that. The final site reached using the Destination URL must match the Display URL. That is, if you advertise the Display URL of XYZ.com, then the Destination URL can start by taking you to "redirection.com", but that site must *immediately* redirect you (301 or 302) to another site, for example, another-redirect.com, which must similarly immediately redirect (301 or 302), and so on - until you end up at a site where the highest part matches. So you could take people to "sales.XYZ.com" or "www.XYZ.com" or "store.XYZ.com".

Don't pay for an expensive TM lawyer if you already have the TM. The Google TM protection process is free, but grinds fairly slowly. Months rather than days, to get the protection. Once granted, protection is swift. hours rather than months.

Cheers, JeremyC.
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Merjis : Google Trademarking - been there, done that : Effective Internet Marketing Strategy and Technique Through Experiments, Measurement and Audit | Merjis Internet Marketing Blog

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Its a good question which is why the standard is 'likelihood of confusion'

If you went to Harrison Ford's website and saw Star Wars, The Fugitive, etc. and didn't see the website selling autos, well, then you, the consumer, are not confused. The 'marks' in this case 'Ford' and the name 'Harrison Ford' are selling two different products into two different markets.

The cases are VERY fact sensitive. To the extent that this website is simply tacking on a .com and hoping to ride the coattails of an established trademark, well, the worse it looks for them.

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What about the reverse happening - nowadays I think people are better off coming up with a domain name before registering their company. Assuming they do that and its not already in use, do they need to trade mark it?

By registering the domain they are proving the time when they started using it.

Anyone getting a trademark after that should fail to win as it can be proved the name was already in use, therefore the trademark should never have been allowed.

I am in a very similar situation but a bit more complex i think, i tried to trademark our then new company name back in the early 1990's through uk official channels but was told at the time that it was too generic. I still have the paperwork from this application and response i believe.

I registered the .co.uk domains with and without the '-' hyphen in 1996 and several variation since then and it is now an established marketing service and online directory covering the whole of the uk. genericsubjectpages.co.uk.

I have recently been informed by some of my clients that they have been approached by this relatively new set up which has added uk to the beginning of the name and added two '- hyphens. ie www. uk-genericsubject-pages.co.uk
To make matters worse they are spamming companies to go on their directory, i have even received one myself ! Which proves it is spam or they have a lot of cheek !

They have ben offering cheap deals to attract business and have now built up quite a few links which will obviously affect me and cause confusion when someone searches 'genericsubject pages' we are near top above them but if they include uk to beginning they are top and we are now second.
I don't mind competition but i feel this has been a blatant step to ride on the success of our established name.

I wonder what google or nominet the uk domains registry would think of this and what do you think the best way forward would be. The domain appears to have been registered by an individual for approximately 2 years.

Do we have potential to claim the domain name under the 'likelihood of confusion' rule or does that just apply to trademarked names. Also if we now attemptedto trademark the name would we have more chance of success now it has been a registered domain for over 12 years? And if we did manage to register it would we then be able to take appropriate action even though the offending domain was registered before the trademark if it was given?

If so is this an expensive process and how long would it be likely to take.

Thanks in advance to anyone who can help wiith some advice on this matter.

Peter

It's a tough one if you don't have the Trademark registered. Especially if the domain is generic.

HOWEVER you can try this angle which I see you did when filing in the Google form. If you can prove the xyz brand of your company is decently old and you have been trading using that brand for a good period of time and you can prove extensive use and consumers have come to know that brand xyz as your brand and associate it with your company then you may be able to win a case and in this particular one get their Ad removed. Seems it has already worked.

Well done.

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I'm an attorney in the US, but UK/US stem from common law. It looks like you tried to get a registered trademark and failed. It doesn't mean that your competitor's use of a similar name isn't deceptive. If he's 'passing himself off' as you (and this will be defined by UK caselaw), its a tort whether your trademark is registered or not. But in the UK you have to be soooo,sooo careful. The one rule that is definitely different is in America, losers don't pay costs unless claim is frivolous, in the UK I believe losers pay costs, so the stakes are higher....

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Interesting...
We also tried to trademark our (registered company name) through Legalzoom.......the original trademark application was confusing, to say the least, and as a result, was deemed abandoned.

Now, we have an online website, and have been incorporated in NY since '91.
A company with the same name as us is re directing people to OUR website, via a "hyphenated" version of one of our registered domain names.

Any advice..?? obviously, we realize we should get trademarked asap, but are reluctant to go the "Legalzoom" route again

50% your fault.
So contact the offending domain owner , and offer them a FAIR price for the domain.
If they won't co-operate then considering legal options, but always remembering you really should have registered the name yourself.

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Hi

Thanks for your reply.

If the legal costs are payable by the loser how likely are they to risk it and try and hang on to the domain name without it going too far through the legal process, we don't have massive resources but it looks like this is an individual and the chances are he hasn't. Is there a certain point we could get to where they would either hand over the domain if they hadn't given a satisfactory response or would they then have to get their own legal representation, or could they just ignore it and wait til it got to court at my expense.
My business is currently in sole ownership do you think if we registered the company name as a limited company 'genericsubjectpages' ltd we would have more power, if it was registered after they registered the domain? Do you think registering the full domain as the company name ie 'genericsubjectpages.co.uk ' Ltd would be better?
I wonder if because they have added the hyphens and the prefixed 'uk' in particular whether they would say t is a different business name?
Is there anything the domain authorities ie nominet in the uk or even google would consider, such as banning the domain.In particular because they have been email spamming and i have evidence (i doubt the latter would but thought i'd ask n case anyone had experience of this)

Thanks

peter

@Barefoottech
Huh???
They are using my domain name that I registered back in 2003 in their ad. I'm not using theirs. How in any way is this my fault unless it is my fault for not trademarking the domain name....

@cw1865
I read that article and it only seems to pertain to items or sites that ARE trademarked. My site in question is not.
note
I did not know you where a lawyer. Do you specialize in Trademarks, Copyrights or Intellectual Properity by any chance?

@kerriskandiesinc
If your in the USA and I think you are. then goto http://www.uspto.gov/main/trademarks.htm and fill out the form then pay the $372 per class and your done. I have done it this way with no issues and if I can anyone can. Now getting a lawyer maybe best but you can do it yourself.


I have just checked and the ad is back so I guess they just reached there daily cap.
The reason I keep saying they are using my domain with the .com is because of:

Some one brought Staples so I will go with that one.
If I ran an office supply site and I took out a Google ad that read

Staples
office supply with world wide shipping
www.xyz.com

I do not think their would be anything "Staples the corp" could do because staples is a product I sell and in no way did I mislead or even hint that I was "Staples the corp". But if I used

Staples.com
office supply with world wide shipping
www.xyz.com

Now I crossed the line. This is what the other site is doing to me.


I have a phone consultation Monday. I will try and keep you all posted as to what can be done.
I'm sure I will not be the only one.

You might want to try checking out who is hosting this copycat's website and drop them (Subject: Attn of Legal Department) an e-mail advising them of the situation in the shortest and most succinct manner you can muster (they probably won't read a long and rambling e-mail) and say that you thought they should be advised as there may be repercussions from any legal action you decide to take.

I did this when somebody literally stole one of my websites in it's entirety and put it on a different domain, palming it off as theirs. Someone had told me they had seen the site elsewhere and I tracked it down by searching for chunks of my content. The site was offline within 48 hours of my writing to their host server's legal department about it. People don't want trouble and if the legal department reflect upon what you have told them and decide that you would win, they may save you the trouble of having to initiate proceedings by advising their company to nip it in the bud.

In my email to that legal department I also asked them to let the owner of the website know that I would pursue any such attempts at infringement of my copyright wherever they might appear.

Incidentally, I once had a domain called theseamag.com on which I put a free nautical online magazine. Two years in, I received a 'cease and desist' letter from a US lawyer saying that his client owned a printed publication called 'Sea' and that I was infringing his rights. I had not known the magazine existed and, on reflection, I could see his point so I created a new domain name and re-named my publication. Your competitor may actually be innocent and ignorant - I would communicate directly if you can first, just in case...

Good luck!

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"@kerriskandiesinc
If your in the USA and I think you are. then goto Trademarks and fill out the form then pay the $372 per class and your done. I have done it this way with no issues and if I can anyone can. Now getting a lawyer maybe best but you can do it yourself."

Yes, I agree, this may be the best course...thanks......Now what do I do about the other candy store, who has a domain name, same as ours but ( hyphenated) which re directs to OUR website, but is also being "iframed" using our site, by advertisers????

I am not sure wether the increased traffic, to us, is a good thing or bad thing...OR is he attempting to get his domain ranking higher, then switch the re direct back to his webspace????
can't quite decide

@kerriskandiesinc

This info is just from me reading around on the net while trying to fix my own issue. Please some one chime in if I'm wrong. "or even right" as to be honest I'm not sure. I'm just repeating what little info I have gathered. Most of it from between the lines.

Once it is trademarked you will have a lot more leverage. If the other domain is similar as your and is drawing from the same market then you can pursue it as cw1865 stated in post #3 of this thread. But before you go out and get the domain trademarked I have to ask. Who's site was up first and also who registered the name first "with or without the hyphen"? From checking around this also plays a part. If you had your site up first and have been using that name first then I say go for trademarking it. But if they where using the name first even with a hyphen then I would not bother.

If you had your site up first and had the name registered first. After you trademark the name you can pursue in shutting their site down. But if they where using the name first then the trademark would not help you from what I have gathered. As then all someone would have to do is trademark their competitions name "if it is not done already" and shut them down due to infringement. This is not the case. Lets take the name "Coke" for example. If I trademarked that name "if it was not already" I would NOT be able to go after coke.com because I can not show I have USED that name before them and they can claim "use rights". All I did is spend the money for them in the trademark. But if I can show I have been using that name before they where then I could.

Again check this info out before you just run with it please as I'm NOT 100% on this at all.

Whislt we are on the topic, does anyone know the simplist way in the UK to trademark?

I think you go here but I have never done it.

http://www.ipo.gov.uk/tm.htm

In the UK the full nominet procedure can cost you around £7k before someone will make a final decision, you pay, win or loose. This cost is per domain.

Often the easiest way is to send a letter threatening legal action via recorded delivery to any address you can find for them, and copy it to their ISP, state how long they have to address the issue and give them a reasonable time frame. This costs you nothing, and sometimes will yield results.

I have used this method before on a site that used our brand name, and they removed it from their site, a follow up letter after they had only done half the work listing other results in Google fixed the problem. Oddly at the same time, a competitor of ours name was also dropped from their site.

If this other site is taking credit cards for goods and not supplying them, then isnt this a matter for the law enforcement agencies anyway?

hmmmmmmmm CYBERSQUATTING - can anyone point us to a thread to topic on Squatting and how to flush our squatters?