Domain/Trademark infringement

[spiceboy]

While doing a "link:" search on a competitors site - "www.e-qualityfoods.co.uk" I discovered that they have registered a domain name which is a version of my own which is a duplicate site of their own ie a mirror site of "www.equalityfoods.com".

To clarify, my site is http://www.natco-online.com and they have registered www.natcoonline.com ie minus the hyphen.

Natco is an international trademark and is heavily protected so they are blatanty infringing the trademark by using the trademarked name within their url without permission.

Natco Online has been trading for 3 years and has a prior claim to this trading identity.

Can anyone tell me what the Google view is on this type of cheap trick ie passing off your own site as a competitors?

[vwebworld]

Search on "anti-cybersquatting". There is a US law
against this practice.

Some actions people take are:

Send a cease and desist letter http://www.keytlaw.com/urls/c&d.htm

Notify the web host & domain provider

Get an attorney.

etc...

~Roland

[spiceboy]

Thanks for your reply Roland, I am aware of all the usual legal issues surrounding this - they have been sent a desist letter and their domain name/host has been informed - I am particularly interested to find out if there is also a Google angle to this - can I get them banned for deliberately infringing my trademark/using a dupe content site etc? The original site "www.e-qualitryfoods.co.uk" advertises on Google Adwords heavily for instance. Surely Google does not want to list companies that carry out this kind of practice in their SERPS?

Any views anyone?

[vwebworld]

You should inform Google and Yahoo.

In a similar case one of my web clients was successful in getting yahoo to drop the site.

~Roland

[bhartzer]

I am particularly interested to find out if there is also a Google angle to this

There isn't any--the search engines don't really care about it unless it qualifies for the DMCA. It's not a copyright issue but a domain name issue. The search engines themselves don't care and nor should you bother them.

Contact your lawyer and send a cease and desist letter to the competitor telling them to turn the domain name over to you. If they don't, then file with ICANN, following the UDRP.

[clasione]

There isn't any--the search engines don't really care about it unless it qualifies for the DMCA. It's not a copyright issue but a domain name issue. The search engines themselves don't care and nor should you bother them.

Contact your lawyer and send a cease and desist letter to the competitor telling them to turn the domain name over to you. If they don't, then file with ICANN, following the UDRP.[/quote]

I agree - follow those above suggestions and you should be able to resolve the issue... Sometimes you actually do have to send the letter and follow through to get it to work, but it is necessary...

[dburdon]

Spiceboy,

I think the previous posters are confusing copyright and trademark law. Copyright concerns theft and misuse of an idea, whereas trademark infringement concerns misleading potential customers with "passing off" regarding the provenance of a product or service.

Under UK jurisdiction, if they are benificiaries in full knowledge of the infringement of your statutory rights under trademark law, Google and Yahoo would be guilty in aiding a "passing off" offence.

If what you saying about domain registration is correct, then your competitors are acting in a deliberate and systematic manner. They have very little defence.

[DrTandem1]

Actually, you don't need an attorney. Go to ICANN. You should not attempt to get them banned from Google, as when you are successful via ICANN, I assume you will be awarded their domain name. You will then want traffic to hit it because it will be yours.

Interesting how they obtained the better URL. Did you use the hyphenated name first and not go after the unhyphenated one?

A word to all to save yourselves from the hassle of this: Register domain names that are also close to yours to prevent copycats. Especially, for those of you that have used your trademarked name in a URL.

[IIxxVADERxxII]

"Can anyone tell me what the Google view is on this type of cheap trick"

What the heck does that mean? Is Google like some type of definitive God or something? Who gives a rats arse what Google thinks? It's a collective of others efforts, and nothing else.

Use your brain. Thats all I have to say. Sheesh, that was annoying.

[DrTandem1]

Originally Posted by IIxxVADERxxII

"Can anyone tell me what the Google view is on this type of cheap trick"

What the heck does that mean? Is Google like some type of definitive God or something? Who gives a rats arse what Google thinks? It's a collective of others efforts, and nothing else.

Use your brain. Thats all I have to say. Sheesh, that was annoying.

Agreed.

[JKomp]

For me http://www.natcoonline.com/ is down, does this mean you had some success?

[TrafficProducer]

For more Domain law links view :-

Web Master Tools and Utilities

[spiceboy]

Hi Jkomp, yes , I had some success, they have dropped the domain name and removed the redirect. Thanks all for your input and dburdon, I agree with you regarding the passing off aspect, that was my key argument.

Oh, and IIxxVADERExxII, I care about what Google thinks, thats why I am No 1 for all my competitive keywords and why my turnover has doubled in the last 12 months - maybe you shouldn't drink and contribute to forums at the same time?

[DrTandem1]

Originally Posted by spiceboy

Hi Jkomp, yes , I had some success, they have dropped the domain name and removed the redirect. Thanks all for your input and dburdon, I agree with you regarding the passing off aspect, that was my key argument.

Oh, and IIxxVADERExxII, I care about what Google thinks, thats why I am No 1 for all my competitive keywords and why my turnover has doubled in the last 12 months - maybe you shouldn't drink and contribute to forums at the same time?

While I don't mean to agree with IIxxVADERExxII's tone, I do agree with the idea behind it. Which is Google really isn't in a position to determine which URLs infringe upon trademarks. As a matter of fact, Google is being sued for massive copyright infringement by the Authors Guild. Google has also been sued numerous times for trademark issues.

Since you claim that you are #1 for all of your competitive keywords, then it should not have mattered that the fraudulent site even existed; because, following your implication that being #1 for your competitive keywords is so important, the other sham site could not have possibly received traffic from your links on the SERPs that you claimed to command. In other words, someone discovered the unhyphenated site by manually entering the URL.

This points out some important issues:

1)SERPs are not all-important
2)Humans actually (manually) enter URLs
3)Domain names are more important to the human than the SE.

I think a key-learning point here is make your domain name human-friendly and avoid hyphens, when possible and practical.

[Bidera]

It seems spiceboy's case was relatively cut-n-dry so to say. ICANN should have sided with spiceboy in any case.

I present a more difficult scenario;

I have a friend (seriously, it's not me) who is involved in a bitter dispute with a copy-cat manufacturer.

US courts sided with my friend, and US ISP shut down the competitor's site after a C&D letter was sent.

Competitor moved the site to an overseas ISP.

So the question is, does my friend go after overseas ISP with US court order (which seems would hold not too much weight), or go directly to ICANN.

Problem is that the names of my friend's and their competitor's site are similar yet not obviously so.

The problem lies more with the fact that products sold through this competitor are direct rip-offs of my friend's.

[DrTandem1]

Originally Posted by Bidera

It seems spiceboy's case was relatively cut-n-dry so to say. ICANN should have sided with spiceboy in any case.

I present a more difficult scenario;

I have a friend (seriously, it's not me) who is involved in a bitter dispute with a copy-cat manufacturer.

US courts sided with my friend, and US ISP shut down the competitor's site after a C&D letter was sent.

Competitor moved the site to an overseas ISP.

So the question is, does my friend go after overseas ISP with US court order (which seems would hold not too much weight), or go directly to ICANN.

Problem is that the names of my friend's and their competitor's site are similar yet not obviously so.

The problem lies more with the fact that products sold through this competitor are direct rip-offs of my friend's.

You have multiple issues here. Much of your friend's success in fighting this depends where the thief resides. If they reside in the US, chances are good.

Your first issue sounds like a possible trademark infringement. If the thief is using a name in the URL or their site to sell similar products/services that could be confused with your friend's brand, then he can sue for trademark infringement.

With regards to the URL, I believe ICANN can revoke the domain name and award it to your friend.

Now, on the matter of "direct rip-offs" your friend has a counterfeiting issue. He should contact the US Department of Justice immediately.

[Bidera]

Thanks DrTandem for that lightning response!

My friend's case is certainly complicated and I am sure there are issues I am not aware of. In fact, I told him that a lawyer with experience in international copy-right /trademark law is needed, but also one with some internet related experience(i'd sure hope lawyers have that these days).

The problem is that copy-cat is not residing in US. The new ISP they are using is in yet another country. The sales of widgets and copy-cat widgets mostly happen in US though.

Assuming ICANN awards my friend the competitor's site name, I fear the competitor will once again make a new site this time with a different name and just continue on with business as usual.

Where does this end I wonder?

[DrTandem1]

Originally Posted by Bidera

Thanks DrTandem for that lightning response!

My friend's case is certainly complicated and I am sure there are issues I am not aware of. In fact, I told him that a lawyer with experience in international copy-right /trademark law is needed, but also one with some internet related experience(i'd sure hope lawyers have that these days).

The problem is that copy-cat is not residing in US. The new ISP they are using is in yet another country. The sales of widgets and copy-cat widgets mostly happen in US though.

Assuming ICANN awards my friend the competitor's site name, I fear the competitor will once again make a new site this time with a different name and just continue on with business as usual.

Where does this end I wonder?

That's why your friend needs to contact the USDOJ immediately. They can stop the importation of the thief's goods. Also, if the thief has retailers in the US, the counterfeit items can be confiscated.

[williamc]

Originally Posted by DrTandem1

That's why your friend needs to contact the USDOJ immediately. They can stop the importation of the thief's goods. Also, if the thief has retailers in the US, the counterfeit items can be confiscated.

He said they were copycat items, much like a rolex clone. As long as the items are not being sold as if they were originals, but as clones, i doubt the doj will do anything at all.

Now if he is selling clones as originals, thats a different story.