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.