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.

[DrTandem1]

Originally Posted by williamc

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.

Sort of true, but he classified it as "direct rip-offs." If someone has gone to the trouble of infringing on the trademark, it may not simply be enough for the seller to have "knock-off" or "clone" in the ad.

In other words, you can't copy a trademark and follow it with "clone" and still be legal. For instance, you can't (legally) sell a watch and call it a Rolex clone because you are using the trademarked name of another to sell your knock-off item.

Also, if the item is nearly indistinguishable from the original trademarked/patented item, it is then classified as a counterfeit. The sellers (retail and wholesale) of such merchandise will be looking at hefty fines and possible prison time.

Try this, draw a cartoon mouse with big round ears, a pointed nose that walks upright and smiles. Name him Mikey Mouse the Clone (not to be confused with Mickey). Advertise it and see how far you get before Disney responds.

[williamc]

Originally Posted by DrTandem1

Sort of true, but he classified it as "direct rip-offs." If someone has gone to the trouble of infringing on the trademark, it may not simply be enough for the seller to have "knock-off" or "clone" in the ad.

In other words, you can't copy a trademark and follow it with "clone" and still be legal. For instance, you can't (legally) sell a watch and call it a Rolex clone because you are using the trademarked name of another to sell your knock-off item.

Also, if the item is nearly indistinguishable from the original trademarked/patented item, it is then classified as a counterfeit. The sellers (retail and wholesale) of such merchandise will be looking at hefty fines and possible prison time.

Try this, draw a cartoon mouse with big round ears, a pointed nose that walks upright and smiles. Name him Mikey Mouse the Clone (not to be confused with Mickey). Advertise it and see how far you get before Disney responds.

I did not say the trademark holder could not sue them for it. I said the doj was unlikely to do anything about it as they are just importing look-alikes, which is legal.

[TrafficProducer]

Rolex clone because you are using the trademarked name of another to sell your knock-off item.

Legal... Some people don't care about the law.

[Bidera]

The widgets copy-cat sells are visually almost indistinguishable from originals, just that they are using a similar name but similar in a theme but not by the exact name. Insides of the widget and copy-cat widget are using same design too.

Will give you an example. My friend sells Eagle brand widget (made up the name). Copy-cat briefly sold Baldeagle brand widget, but now they have switched to Owl brand widget, once again copying my friends design.

Or to use Rolex example, the copy-cat would be using Kingex as their name, but the watches would be using same mechanisms and same visual look of a Rolex.

Problem is that the copy-cat manufacturing is not based in US, and their website is in a completely different country now (after US court forced the US based copy site to shut down).

As far as I understand this copy-cat is violating my friends patents, trademarks etc.

Seems this is a very hard fight to win against someone who has no qualms of just making up new names.

The website fight is just a part of a bigger now international fight. I feel extremely sorry for my friend who spent over 10 years building up his brand and products.

[williamc]

I understand where you (and your friend) are coming from, however, Rolex is not just a brand. It is a quality piece, where the copycats are not. The copycats dont really hurt Rolex much because the people who buy them can not afford a rolex, and just want to look like they can. People who want the quality of a rolex will still buy one, and not a clone.

If this is the same positioning of your friens product, then he shouldn't worry so much over this issue. Build his brand on a quality basis and he will never lose to clones.

[DrTandem1]

Originally Posted by williamc

I understand where you (and your friend) are coming from, however, Rolex is not just a brand. It is a quality piece, where the copycats are not. The copycats dont really hurt Rolex much because the people who buy them can not afford a rolex, and just want to look like they can. People who want the quality of a rolex will still buy one, and not a clone.

You're kidding, right?

[williamc]

Originally Posted by DrTandem1

You're kidding, right?

Not at all. That was actually basically what a rolex exec said a few years back :)

[DrTandem1]

Originally Posted by williamc

Not at all. That was actually basically what a rolex exec said a few years back :)

Well, I suggest you so a search for:

rolex sues counterfeit

[williamc]

I did not say they would not protect their brand. That would be stupid not to do. I just said that the counterfeits would not actually hurt their sales.

[Bidera]

Well, in the case of Rolex it might actually be true, that the cheap knock-offs don't hurt them immediately.

Also, I wonder about Ray-Bans, there are all those cheap knock-offs around, I would imagine those do hurt them, but they really can't do much, unless they try to pass off fake Ray-Bans us real.

However, for my friend his market is not the end-consumer so much as it is more business to business.
The copy-cat does hurt him, because if copy-cat widget does the same job, but costs half as much(because no sweat equity, no R&D costs), average cost conscious business will buy the cheaper widget if it performs roughly on the same level.

The copy-cat widget is not an obviously cheap rip-off it is designed to do the same job as my friend's but it uses my friends designs (not reverse-engineeered, which would be ok, I think).

There is more to this story (there always is), but I'll stop for now in this thread, as I was getting off topic already. :)

[DrTandem1]

The problem is that many of these knock-offs look identical to the original. Some actually have the original's brand name on them and use identical packaging. They are counterfeits.

It is incumbent upon the owner of a trademark/patent to protect it. If they don't go after all the knock-offs, they are endangering their ownership of the trademark. Trademarks are not only names, but can be styles as well.

Therefore, not only immediate sales can be affected, but also their actual survival as a brand. So, while a cheap knock-off may easily be spotted and not fool the savvy buyer, if the style is trademarked (or patented), their ultimate sales in the long term could actually cease to exist as their brand (and style) could become public domain.

[williamc]

Originally Posted by DrTandem1

The problem is that many of these knock-offs look identical to the original. Some actually have the original's brand name on them and use identical packaging. They are counterfeits.

Yeh, that I could understand diluting the brand and causeing loss of sales. I was only talking about look-alikes in what I was saying. Not actual conterfeits.

[DrTandem1]

Originally Posted by williamc

Yeh, that I could understand diluting the brand and causeing loss of sales. I was only talking about look-alikes in what I was saying. Not actual conterfeits.

If they look too much alike, they are considered counterfeits. It has to be more than just a slight difference. Anything that could cause reasonable confusion is all that is needed to push it over the line.

[williamc]

Originally Posted by DrTandem1

If they look too much alike, they are considered counterfeits. It has to be more than just a slight difference. Anything that could cause reasonable confusion is all that is needed to push it over the line.

In some peoples eyes, sure. Some people also think people who dress in jeans are low class. But we were talking about actual lost profits because of it. Now I will agree that almost exact replicas that hurt the brand by using it can hurt that and should be decimated. However, simple cheap (inexpensive) look-alikes that are not sold as if they were the real thing will never do that on their own.

[DrTandem1]

Originally Posted by williamc

In some peoples eyes, sure. Some people also think people who dress in jeans are low class. But we were talking about actual lost profits because of it. Now I will agree that almost exact replicas that hurt the brand by using it can hurt that and should be decimated. However, simple cheap (inexpensive) look-alikes that are not sold as if they were the real thing will never do that on their own.

If it looks close enough to be mistaken at first glance, you should worry. If it takes a closer look, you should be more worried. If it takes an expert to tell them apart, prepare to lose everything you have and possibly move to Club Fed.