Cease & Desist on Domain Name Use

[chandrika]

Having the keywords in the domain name anyway is really only a small factor in SEO, so it probably is not worth the trouble and if it is going to create resentment in the long run it probably has more downsides than benefits anyway.

[deepsand]

I view Stroller Rentals as a generic term like auto parts.
His business address is not even in Orlando.

There is no requirement that business names eschew common words, or restrict use of words descriptive of location to only those relating to a particular area relative to that of the business, in order to be protected from use by others.

I guess he is going with the infringement because of our earlier dn registration date and fact that he registered a similar name to mine a month later .

Even if he decides to attempt to trademark those words after we registered a domain name?

Merely registering a DN does not serve as evidence of an unencumbered right to use such, even if such is done prior another asserting a claim re. his own right to use.

The other party claims to have been using "Orlando Stroller Rentals" in commerce for nearly three years; i.e., long before you/your friend decided to use a very similar name.

That prior usage is the basis for said party both filing for a Federally granted Mark, and demanding that you/your friend not use the DN of the confusingly similar name.

And, assuming such claim to be true, said party has very strong claim to both the Mark and the DNs in question.

[hotels]

That prior usage is the basis for said party both filing for a Federally granted Mark, and demanding that you/your friend not use the DN of the confusingly similar name.

I see the light.

Would this premise also hold for say boulder city realtor com and realtor boulder city com

[deepsand]

I see the light.

Would this premise also hold for say boulder city realtor com and realtor boulder city com

Without concrete facts for comparison, it would be speculative to say more that that yes, it could.

Aside from the legal issue, bear in mind that, if you think to gain from such similarity, it stands to reason that the other party might likewise gain, to your loss!

[hotels]

Without concrete facts for comparison, it would be speculative to say more that that yes, it could.

Aside from the legal issue, bear in mind that, if you think to gain from such similarity, it stands to reason that the other party might likewise gain, to your loss!

What I do when creating a site or suggesting a name is try and pick a dn by keyword (3 or 4 word) search term.
If one combo not available then I try another string.

Deep has opened my eyes up in regards to hassle that can come up at a later day.

In future I'll add a wild card(keyword).
Ex: maybe magic stroller rentals dot com
bouder city realtor information dot com
Something like that should fly wouldn't you think?

Reading these forums and newsletters over the years has morphed my thinking into keyword rich domain & files names,good relevant content,juice,easy nav help for serps.

I know there are a lot of other factors that need to be worked as well.

I value the input of everyone that has posted on this thread.
Thanks for that!

[deepsand]

In future I'll add a wild card(keyword).

Ex: maybe magic stroller rentals dot com

That's the key to avoiding litigious disputes; something that make the DBA and/or URL unique.

With respect to, for example, cities, look for nicknames associated with that city.

Orlando - The City Beautiful.

While that doesn't exactly roll off the tongue, it serves to present the idea.

[BluePlanet]

First, Orlando can not be trademarked. Stroller Rental is very generic and the granting of that trademark blocks an entire class of services. It is too generic to be a trademark. That trademark should never have been granted and can be defeated.

However, we are talking about a lot of money and time, and obviously there is not enough money in stroller rentals to make it worth the bother.

I would though tell them that. That is an invalid word mark and can be invalidated in court. Only their graphical mark is valid. They are seriously over-reaching.

This is a common problem. Here in Key West, some B&B trademarked "Key West Bed & Breakfast" and now they are claiming nobody else can use that phrase. The TDC, Tourism Development Council is fighting them and has already spent 60k or so.

Call it Sunshine Stroller Rental or something if you're doing a real business. If it is just about the domain name, give it up.

[deepsand]

First, Orlando can not be trademarked.

But, it can be used within a Trademark/Service Mark.

Stroller Rental is very generic and the granting of that trademark blocks an entire class of services. It is too generic to be a trademark. That trademark should never have been granted and can be defeated.

Same as regards "Orlando."



The Mark is not examined in terms of its individual & separate words, but as the totality of such.

As an example of Proper Names and "generic" words being used within Federally granted Trademarks, there is "Thomas Jefferson," "University," and "Hospital," all within the registered Mark "THOMAS JEFFERSON UNIVERSITY HOSPITAL."

• Word Mark THOMAS JEFFERSON UNIVERSITY HOSPITAL
• Goods and Services IC 041. US 107. G & S: EDUCATIONAL SERVICES, NAMELY CONDUCTING WORKSHOPS AND SEMINARS IN THE AREA OF HEALTH, FITNESS AND SAFETY, AND PROVIDING COURSES OF INSTRUCTION AT THE COLLEGE AND POST-GRADUATE LEVEL; PHYSICAL FITNESS INSTRUCTION SERVICES. FIRST USE: 19870401. FIRST USE IN COMMERCE: 19870401
  
• IC 042. US 100. G & S: HEALTH CARE SERVICES INCLUDING ASSISTING INDIVIDUALS TO STOP SMOKING, AND WELLNESS COUNSELING SERVICES. FIRST USE: 19690601. FIRST USE IN COMMERCE: 19690601
• Mark Drawing Code (1) TYPED DRAWING
• Serial Number 73829388
• Filing Date October 5, 1989
• Current Filing Basis 1A
• Original Filing Basis 1A
• Published for Opposition July 10, 1990
• Registration Number 1616135
• Registration Date October 2, 1990
• Owner (REGISTRANT) THOMAS JEFFERSON UNIVERSITY NON-PROFIT CORPORATION PENNSYLVANIA 1020 WALNUT STREET ROOM M-6 PHILADELPHIA PENNSYLVANIA 19107
• Attorney of Record GLENN A. GUNDERSEN
• Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "UNIVERSITY HOSPITAL" APART FROM THE MARK AS SHOWN
• Type of Mark SERVICE MARK
• Register PRINCIPAL
• Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20010123.
• Renewal 1ST RENEWAL 20010123
• Live/Dead Indicator LIVE

Take particular note of the Disclaimer re. "University Hospital."

Other examples of such abound.

[wige]

Interesting in that example that the disclaimer does not also mention the phrase Thomas Jefferson, which is used by a wide variety of hospitals.

[hotels]

I use efax can't really copy n paste it here.

Here is what they say:
Fax dated January 7 2010
Federal Rule 408 Applies

Thetrademarkcompany.com represents Orlando Stroller Rentals LLC in regards to protection of it's intellectual property. In this regard your registration and your use of the domain name StrollerRentalOrlando.com and corresponding mark Stroller Rental Orlando.

Our client has been continuously using the mark Orlando Stroller Rental in connection with stroller and other mobility device rental services since as early as June of 2007.Our client's services under this mark are advertised worldwide. Because of the excellent quality of the services provided under our client's mark in conjunction with the substantial resources dedicated to promoting the same as our client's mark has become distinctive and synonymous with its mark and now embodies a very substantial amount of valuable business goodwill.

It has come to our client's attention that you are using the domain name StrollerRentalsOrlando.com as well as a mark posted to the site at the domain name in conjunction with services which are virtually identical to our client's. Your registration and use of the domain name and the mark are confusingly similar to our client's mark as listed above and dilutes the distinctiveness of that mark.

Consequently, your unauthorized use of our client's mark as listed above dilutes the distinctiveness of that mark as both a trademark and in a domain name constitutes trademark infringement, unfair competition, and dilution under federal and state trademark and service mark lawa as well as cybersquatting consumer protection act.

You may be liable for compensatory damages measured by both our client's losses and your ill-gotten gains which are subject to trebling as well as attorney's fees and court cost if our client is forced to bring a civil action against you to enforce its rights.

Thus,this is our formal demand that you:
* Cease Use of the mark Stroller Rental Orlando within 14 days;
* Remove all pages posted to the domain name StrollerRentalsOrlando.com within 14 days and consent to the voluntary transfer of the domain name to our client;AND
*Provide an accounting of all profits received as a result of the unauthorized use of our client's mark and THROUGH THE DOMAIN NAME StrollerRentalsOrlando.com

We ask that you confirm, in writing ,that you will comply with our client's demand no later than January 21 2010. Failure to do so or to contact our office concerning this matter will be regarded as non-compliance with our client's demands and will responded to accordingly.

Thank you for your time and attention to this matter. I look forward to your reply at your earliest convenience.

lastly,nothing herein shall be construed as an admission against the interest of our clients all of whose rights are expressly reserved.