Cease & Desist on Domain Name Use

[hotels]

Hello,

A competitor has a site named OrlandoStrollerRentals.com, and I suggested to my friend to get the name StrollerRentalsOrlando.com. My friend then bought that name (on Oct 26 2009), and started offering stroller rentals.

Within the past 2 weeks he received a cease & desist order claiming StrollerRentalsOrlando.com was trademarked. The problem was that this same competitor purchased StrollerRentalOrlando.com & OrlandoStroller.com (on Nov 21 2009), and wanted my friend's site removed.

I don't know what my buddy should do. He has parked the domain for now.

All suggestions greatly appreciated.

Thank you

[wige]

Talk to a trademark lawyer.

There are a lot of different elements that may come into play - when the trademark was registered, if the business is acting on that trademark, etc. You will want to talk to someone familiar with trademark law in your area who can do the appropriate research and give you the best advice on how to proceed in your specific situation.

[morestar]

Did he receive an "Order" or a nicely written letter from a lawyer?

[Big Juice]

try doing a trade mark search to see if their claim is true or not. if they are in the process then do a challenge.

[wdillsmith]

Keep in mind there are two different ways your friend can be challenged. One is via ICANN, which resolved domain disputes, and the second is an old fashioned trademark lawsuit. If he loses an icann challenge, he'll lose the domain and that's about it. If it is a trademark infringement, that is potentially more serious. There are lawyers that specialize in ICANN disputes, separate from trademark lawsuits.

Unfortunately, as with any threatened legal action, your friend will have to weigh the cost of fighting vs. capitulation.

[chandrika]

If you check out the link below about domain name trademark law, it sounds very much as if it is not possible to register such a descriptive phrase as a trademark.

Because that company's mark is descriptive of what the company does, it would not be able to federally register the mark

Can You Trademark A Domain Name? @ErikJHeels

[deepsand]

From USPTO :

• Word Mark ORLANDO STROLLER RENTALS, LLC
• Goods and Services IC 039. US 100 105. G & S: Rental of baby strollers. FIRST USE: 20070600. FIRST USE IN COMMERCE: 20070600
• Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
• Design Search Code 01.01.09 - Stars, two; Two stars
• 01.01.13 - Stars - multiple stars with five points
• 18.03.06 - Baby carriages and strollers; Buggy, baby; Carriages and strollers (baby); Strollers and carriages (baby)
• 26.17.09 - Bands, curved; Bars, curved; Curved line(s), band(s) or bar(s); Lines, curved
• Serial Number 77882068
• Filing Date November 30, 2009
• Current Filing Basis 1A
• Original Filing Basis 1A
• Owner (APPLICANT) Orlando Stroller Rentals, LLC LIMITED LIABILITY COMPANY FLORIDA 1107 Tapestry Drive Celebration FLORIDA 34747
• Attorney of Record Matthew H. Swyers, Esq.
• Description of Mark The color(s) blue, orange and yellow is/are claimed as a feature of the mark. The mark consists of a blue and orange stoller with a yellow star design above, next to the blue words Orlando Stroller Rental, LLC to the right.
• Type of Mark SERVICE MARK
• Register PRINCIPAL
• Live/Dead Indicator LIVE

Given the great possibility of confusion in the marketplace between Stroller Rentals Orlando and Orlando Stroller Rentals, your friend is highly unlikely to here prevail.

For the future, never knowingly attempt to use as a Trade/Service mark and/or Domain Name that is so blatantly similar to that of a competitor. Even if you prevail, it will be at no small cost in the purse.

[hotels]

Thanks to all for commenting with possible avenues to pursue.
I am having him fax me 2 page letter and domain name to me.

It's a rich keyword dn that will be monetized with organic traffic.
Something I learned from this site.

Will post it when fax arrives.

In meantime I googled trademark office and gov site cam up first.

I was able to search by company name found on whois

Voila found competitor filed for trademark November 29 & pending serial number on gov site search engine(tess) Trademark Electronic Search System.
Free fast way to check if someone does in fact have a trademark!

gov site had a contact tab with an 800 # someone answered within a minute.

Picked the guys brains for a few moments.

Gist I got was takes 3 months for a gov atty to review then another 3 months to approve and issue.
If and when issued there is a 30 day opposition period.
It's in my day planner.
TESS can be

He said the mark(was for a logo).

Think he might be strong arming my buddy with C&D request.

My official city website is not a com but net

All for now

[deepsand]

He said the mark(was for a logo).

See above data from USPTO; mark is for both drawing and words.

Also, take note of Date of First Use in Commerce; unless your friend can demonstrate that he's been using his mark for longer, he's unlikely to prevail.

BTW, ORLANDO STROLLER RENTALS, LLC does not need a Federally approved Mark to prevail, as State rights can also be brought to bear. Here, too, your friend would need to prove an earlier first use.

[hotels]

Thanks for giving me different ways to look at things and providing me with some tech points to address.

Given the great possibility of confusion in the marketplace between Stroller Rentals Orlando and Orlando Stroller Rentals, your friend is highly unlikely to here prevail.

For the future, never knowingly attempt to use as a Trade/Service mark and/or Domain Name that is so blatantly similar to that of a competitor. Even if you prevail, it will be at no small cost in the purse.

He actually or I will soon have Stroller Rental Orlando

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

When I pick a domain name first thing is to select it based on keywords usually 3 words.
If that order is not available then I look to see what combination is.
An analogy if the goal is to roll a 7 there are different combinations to do so

Keep in mind there are two different ways your friend can be challenged. One is via ICANN, which resolved domain disputes, and the second is an old fashioned trademark lawsuit. If he loses an icann challenge, he'll lose the domain and that's about it. If it is a trademark infringement, that is potentially more serious. There are lawyers that specialize in ICANN disputes, separate from trademark lawsuits.

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 .

Also, take note of Date of First Use in Commerce; unless your friend can demonstrate that he's been using his mark for longer, he's unlikely to prevail.

Even if he decides to attempt to trademark those words after we registered a domain name?
Excuse me for being gullable.

Even if you prevail, it will be at no small cost in the purse.

My buddy seems to be bailing for this reason.
I've got $7 in it for dn transfer fee.
He is offering it on his main site.

Based on this forums(jury)input I may have to do same and optimize page on my site to compete for that search term "orlando stroller rentals"

I may just offer to sell him the name.

I really felt my friend was being steamrolled.

First time anything like this has come up and really appreciate the comments & suggestions.

Wonder if anyone else has been down this road.

Will post C&D request when received for last comments.

Thanks everybody.