Help....someone's stolen our name!

[Judith]

(The following situation is real, but all names are fictitious to protect the privacy of my client) I’m the webmaster for a site that I’ll call rusticwindows.com. RusticWindows is a division of Doe Construction, owned by John Doe, and incorporated in 1979. The name Doe Construction appears on all of RusticWindows’ literature and their logo.

If I am looking for Doe Construction and type in "doeconstruction.com" in a browser's address line, I am taken to the site of RusticWindows' main competitor, Meisterwindow. Although Meisterwindow doesn’t have anyone at that company by the name of Doe, they have purchased my client's legal name as a domain name, and they are diverting business intentionally from my client’s site. What they have done amounts to identity theft, false representation of the competitor as my client and piracy of their name and their business.

I advised my client to file a complaint with ICANN. The client would have had to pay a one or three-person panel what was called a "relatively minimal" fee to review the case. However, the least expensive option was to request a one-person review by the National Arbitration Forum, which would charge $1,150 for a single member panel to review their claim. As a small family-owned business, the Does did not feel they could afford to do this.

I then advised my client to backorder the doeconstruction.com domain name, which expired November 22. That attempt was unsuccessful and the name is registered to Meisterwindow for another year.

Are there any other options I might have overlooked? Have any of you had similar experiences? If so, what did you do about them?

[cyanide]

Other than actions you've taken already, I don't think there's anything else you can do.
It's truly unfortunate.

If doe construction is trademarked you may have a stronger case. Why didn't your client register the domain? (I know that's not a comforting question)

The domain business can be down and dirty, that's for sure!
It does happen to the best of us. Did you know that a staffer forgot to renew microsoft.com ? Luckily they got it back without too much trouble.

[Judith]

Thanks for writing. You're right about the "down and dirty" domain name business!

From my research of prior cases in the ICANN database: "ICANN Policy ¶ 4(a)(i) does not require a company to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place. The ICANN dispute resolution policy is 'broad in scope' in that ''the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice' to support a domain name Complaint under the Policy."

Nevertheless....the whole ICANN dispute resolution process seems to favor those who can afford it. There must be another way to fight this!

[Judith]

I've posted a disclaimer on my client's site. It reads like this:

"Doe Construction is not affiliated in any way with Meisterwindow. Our competitor, Meisterwindow, has purchased the domain name "doeconstruction.com" in order to divert traffic away from our website to theirs. If you type the URL "doeconstruction.com" into a web browser, it will take you to their website. Do not be confused into thinking you are doing business with us."

Although it feels like a good way to notify potential customers of the competitor's dirty tricks, I am still a bit nervous about putting this up on the site. Is this a good or bad idea?

[leus]

Question:
If you type the URL "doeconstruction.com" into a web browser, of another PC ,not in your PC, does it take
you to your competitor web site or to your doeconstruction site?
This is important because maybe your competitor
installed spy software on your PC, which can be removed.
Regards and good luck
C. Levy

[Judith]

Thanks for the suggestion. I never thought I'd wish for spyware, but that would sure be easier to deal with.

No, it's not spyware. If someone else on another PC types "doeconstruction.com" into their browser, no matter what PC is used, it will take them to the competitor's site.

That's because the competitor is using our name. A Whois search shows that they are the owners of the domain name, even though that name is not related in any way to their business. They have purchased our name for the only purpose of diverting traffic away from our site, a practice known as cyberpiracy or cybersquatting.

Ethical business, eh!

[kingdonk]

We have a company name and when we first registerd our domain name we couldent have our company name as a domain name, but last month a company in recruitment same as us, but not the same field asked us could they register the domain name that is the same as our company name, we said no and registerd them.
With out trademarks and or copyright they can be liable becuse they are using your company name to gain customers and profit from misleading customers looking for you.
Speak to you national or local advice bureu if you have one or an internet lawyer who will give advice for free.

[7thDsites]

here's a resourceful site we found whilst getting a crash course in copyright law...

http://www.ivanhoffman.com/tradearts.html

If you email this guy; do not expect any free hints, tips, or advice from the site owner/attorney however without establishing a client/attorney relationship as he will not give any.

[bebarrett]

Your disclaimer, as it is currently worded, sounds like a bad idea. You are giving surfers a call to action, which is to check out your competitor's site.

Maybe you can get a cheap laywer to approach your competitor with a legalese letter with the air of, "You are going to have to put a disclaimer on every page of your site that states you are not affiliated with Rustic Windows and Doe Contstruction if you want to continue using the domain name." If they are spending money to hijack your name, they are not going to want to advertise you to the customers that came to the site to find them, and they might just give up. You won't get the domain, but at least they'll stop using it.

Or along those lines... sometimes a threat is as good as a judgement.

[EJRS.COM]

I believe that if a domain is available, then it is up to anyone to buy. For example, I own ejrs.com coz my company is called ejrs networking.
If I had not bought Ejrs.net someone else would be free to use it. Afterall I did not think fast enough to act when I should have and someone else could have bought it. If a name is available, it's up for grabs. If a company does not invest in getting their domain fast, quite frankly I believe they don't think their name is worth investing in.

Years ago Yahoo.com was being sued by an Australian named Yahoo Serious (I have no clue if he named himself there or his dad gave him that name). I remember thinking then "oh for crying out loud if u really wanted it u should have invested in it before!"

That's my view.

[Judith]

Thanks for the suggestions....

bebarrett: You think the disclaimer is a bad idea because it will send surfers to the competitor. That is a calculated risk we are taking. Our product is as nice and prices are much better than theirs. Comparison shopping would actually help us. In addition, I would think that people would hesitate to do business with a company that is unethical. Also, I agree that a threat is sometimes a good idea, but what do you do if they don't comply with your demands? Then you are stuck with having to find a way to carry out your threat or just living with it.

ejrsdotcom: You are correct that you have a right to purchase any domain name that is available, even if just for the purpose of keeping someone else from using it. It is an especially good idea for you to buy Ejrs.net since EJRS is your trademark. You do NOT have a right, however, to use a competitor's name or trademark to redirect traffic to your site. Let's say your competitor is wxyz networking. You can purchase wxyz.net to prevent them from using the name (Although it seems to me to be a bit shady since that's not your name, but it's not illegal). What would be illegal/unethical, would be for you to purchase wxyz.net and set it up so that when someone typed wxyz.net into the browser's address bar, it sent people to the ejrs website. You would be guilty of cyberpiracy because (a) you would be using their trademark to divert traffic to your site, and (b) you have no legitimate claim to use their name to do business.

Quote from 7thDsites: "Do not expect any free hints, tips, or advice...without establishing a client/attorney relationship as he will not give any."

Unfortunately, this is too typical. A company like my client's (operated on a shoestring budget) is not going to find a low cost or free internet lawyer and they cannot afford to pay for one. Evidently, there are few lawyers willing to take on pro bono internet law cases.

++++++++++++++++++++++++
Nobody expects the Spanish Inquisition. --Monty Python

[EJRS.COM]

What would be illegal/unethical, would be for you to purchase wxyz.net and set it up so that when someone typed wxyz.net into the browser's address bar, it sent people to the ejrs website. You would be guilty of cyberpiracy because (a) you would be using their trademark to divert traffic to your site, and (b) you have no legitimate claim to use their name to do business.

This I definitely agree with. There is a thin line here between what is legal and what isn't. What a world we live in.

[Nargule]

Have your client get with a small local attorney and send their competitor a cease and disist. Internet domain registration stuff asside, it might just be enough to get them to discontinue using the name.

In any event, it couldn't hurt.

[TheWebDoctor(tm)]

You're fine using their name in your pages. The reason a business would want to do this beyond the allegations of impropriety is to ensure people know the difference.

Simply state without that you are not associated with them. Stating boldly that they stole the name to steal your client's customers might be truthful, but is also asking for trouble based upon liabel laws.

If you do recommend people to use the domain name, definitely ensure you do not include a link to the competitor's site because of the link popularity issues involved.

Once your attorney has written up a legally appropriate letter and upon his/her advice you can add that letter to your site with a link to it. Don't make that decision without approval from your attorney. If the attorney approves, it is not liabelous to show the letter in full; it becomes a statement of fact and actions you are taking to resolve the situation.

If the companies are in the same city or metropolitan area, it is highly recommended that your client take upon them the expense. If the name is service marked then you have a strong case with ICANN. Your client should spend the money because the other company is in fact stealing clients. Once, ICANN rules in your client's favor the attorney can advise on further legal action such as seeking a judgement for loses due directly from the impropriety.

I hope this helps.

[Electronic Perceptions]

Yes it is unethical and underhanded to register a domain name of a direct competitor - particularly if both companies are in the same town/city - for the sole purpose of trying to divert customers or potential customers from them to you.

A domain is NOT however, "stolen" if it was not owned/registered in the first place. It is also not "hijacked" if it was not owned/registered in the first place.

If your client had registered the domain to begin with, and their competitor did something fraudulent to get the domain registration transfered to them, or did something fraudulent to get the domain to point to their site - *then* it's stolen or hijacked.

If there is no trademark, service mark, or other reasonable legal reason for no one else to be allowed to use the domain, and it was not either stolen or hijacked, there is little to no case.

I don't condone the type of actions your client's competition took in this matter, but it drives me crazy when people claim stealing and hijacking in cases like this.

The bottom line is: trademark/register the name and good grief register the blasted domain name, or any variation of it. Ten bucks a year sure saves a lot of hassle and legal fees later.

[Electronic Perceptions]

Yes it is unethical and underhanded to register a domain name of a direct competitor - particularly if both companies are in the same town/city - for the sole purpose of trying to divert customers or potential customers from them to you.

A domain is NOT however, "stolen" if it was not owned/registered in the first place. It is also not "hijacked" if it was not owned/registered in the first place.

If your client had registered the domain to begin with, and their competitor did something fraudulent to get the domain registration transfered to them, or did something fraudulent to get the domain to point to their site - *then* it's stolen or hijacked.

If there is no trademark, service mark, or other reasonable legal reason for no one else to be allowed to use the domain, and it was not either stolen or hijacked, there is little to no case.

I don't condone the type of actions your client's competition took in this matter, but it drives me crazy when people claim stealing and hijacking in cases like this.

The bottom line is: trademark/register the name and good grief register the blasted domain name, or any variation of it. Ten bucks a year sure saves a lot of hassle and legal fees later.

[Judith]

I agree that it is important to be careful about the use of language, so that we do not misrepresent or "awful-ize" someone's actions. However, the practices discussed here ARE viewed as cyberpiracy or cybersquatting under U.S. Law. A name may be considered stolen or hijacked if the party that purchased that name has bad faith intent to profit from it at the expense of the person who has legal right to the name.

Under the Trademark Cyberpiracy Prevention Act (Public Law 106-113), which is also referred to as the Anticybersquatting Consumer Protection Act :

“Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person's consent, with the specific intent to profit from such name shall be liable in a civil action by such person.”

A person may be held liable for using someone else’s trademark if he or she
“(i) has a bad faith intent to profit from that mark, including a personal name’
(ii) registers, traffics in, or uses a domain name that is identical or confusingly similar to that mark.”

In considering whether someone has a bad faith intent the court may consider the “extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.”

[trsiyengar]

If you register a domain then you should go for trade mark registration too simultaneously. This way you can protect your trade mark.

Even some popular web sites which disappears due to one or other reason, discontinues to pay the domain registration annual fees. Then the real business begins. Here too, the fradulant and most often the pornograplhic and unethical web sites purchases these domains with highest bid and run their show. Without any consideration for the earlier owner.

Only a regular visitor (to these sites now abandoned) happened to see the new avatar, he is shocked. This way many web sites that closed halfway and failed to renew their domain name, lost credibility. And that too to the most unethical web sites on the internet.

I am shocked to see a very orthodax religious web site with honourable contents broke, the name to fall into the hands of the 'unethical' ones, who now show everything in their site excepting "honesty".

Hence it is always advised to go for Trademark registration alongwith Domain, then you can claim trademark infringements, when such infringements take place.

Namasthe Everyone,
TRS Iyengar
Making all efforts to survive, surving to see the effects.
www.trsiyengar.com