Very interesting - I came first, now big player moves in with similar brand.

[dennismantis]

I have a very interesting issue, and was hoping you all might be able to point me in the right direction.

Note that the domain names noted below have been made generic.

March 2009
I reserved a domain name, BecomeXYZ.com. My firm owns that domain, and also the website. It's an active website and it makes money, with large future promise.

I originally wanted just XYZ.com, but it was taken. At the time, there was no website there. Someone owned it and had it for sale for a few thousand, so I passed.

July 2009
Some random person emailed me from some generic email account and asked if I had the name BecomeXYZ.com trademarked. We don't. It bewildered me. I did not reply.

Late July 2009
A MAJOR, huge, well known business rolls out a new product - you guessed it - XYZ.com. Their site shows that the name is trademarked. Since that domain was for sale just a few months earlier, they must have bought it. I know this because this company would not be in the practice of sitting on domain names and trying to sell them.

Today
A significant portion of the traffic to our site had actually searched for "XYZ.com" and found us. And they take action on our site which results in a small profit. Sure, this is great - free traffic. The big-name company seems to be doing steady publicity for their site which is benefiting us.

If you search Google for "XYZ.com", they are #1, and we are #2.

I was even considering running PPC to further monopolize on this opportunity.

============================

Nothing has happened. But I want to be proactive.

I understand about "brand confusion" and how it relates to infringrment of marks (something they could perhaps try to pin on us). But we came first. Our site was live and running months before theirs, and we absolutely had no idea they were going to follow up with their project.

So I'm wondering what steps I should take to remain proactive:

1. Do nothing, but realize they might try to sue me. It's tough to sink more time and money into my project with that hanging over my head.
2. Do nothing, because I'm already 100% in the clear, and they don't have a leg to stand on because of the timing noted above.
3. I sue them. I claim they are infringing on my brand.
4. Call them up, explain the situation, and offer them a chance to buy us out (or buy the domain name).
5. I'm sunk - they have money to fight with, and it's only a matter of time until a C&D (or worse) arrives, so I should take the site down ASAP.

Let me know your thoughts!

 

[The Occultist]

The first step is to usually send a cease and desist letter. I advise having an actually attorney draft one up for you.

The fact of the matter is that you do not need to register your trademark; as long as you have been actively using the mark in commerce, you have certain protections on your mark.

 

[divgradcurl]

Domain names are not trademarks. You can obtain trademark rights to your domain name if you use your domain name to identify your product or service -- but it's not automatic. If you use your domain name simply as an address, then it is unlikely that you would obtain any significant trademark protections.

Is the new company in the same industry or space as you? Also, the nature of the term "XYZ" is also important in determining how much trademark protections -- if any -- anyone might have here.

Your best bet is to sit down with a local trademark attorney, who can review all of the actual facts of the situation, and the actual marks and domain names in question, and advise you accordingly.

 

[dennismantis]

domain name trademarks/issues - big dog little dog

Thanks a ton for your feedback - it really helps. Again, they have not contacted me. I'm simply acting preemptively here before I pour any more money into my biz.

Here's a direct almost identical example (again, URLS are made generic): My domain might as well be BecomeGreatStuff.com. And they are GreatStuff.com. BUT - as I said, GreatStuff.com was for sale (for about $5K) when I was looking for my domain name. That was too rich for me. So I paid $20 for BecomeGreatStuff.com.

They are in a very, very similar industry. Serious brand confusion possible.

My site was up and running and doing business for perhaps 2 months while GreatStuff.com was still a holding page with a big for sale sign on it.

Then 2-3 months later - boom - big company (probably as big as AMEX or Dell) rolls out GreatStuff.com, TM. My jaw dropped - big-time TV ads.

I had no idea it was going to happen. I obviously researched around the Internet for "GreatStuff.com" and similar names/companies (which is how I knew the domain was for sale) prior to opening my business. There was nothing noteworthy.

Today, two attorneys ran trademark searches for me. GreatStuff, etc. does NOT show up. No records of any trademarks. Not sure if there is a delay in records showing up, but it appears today that the Big Company doesn't yet have the name trademarked.

I know one thing - their "GreatStuff.com" is big...it would have taken months if not a year to develop. I suspect they had it build and slapped the name on it at the last minute.

Today, I made some serious money from traffic that was looking specifically for their website. I can see in my stats what keyword people searched on to find me - and they were looking for GreatStuff.com. I can't complain.

I certainly didn't plan this. It would appear I used the term "Great Stuff" in my logo and as my site name several months before they did. I could understand if they were upset (haven't heard a peep from them) - but that's their fault. I existed first - or so I believe.

The domain name GreatStuff.com was actually owned or registered since 2001. The WayBackMachine shows that the URL mostly hosted linkouts and junk - never a sign it was a real site. Changed hands a few times. But I wonder if since the Big Company bought this domain (after I was already up and running), they somehow inherit historical rights - so they could claim they owned some rights and somehow used the service mark as far back as 2001 - even though they didn't become owners and use it as a website until after me in 2009.

I can't imagine a company of their size not doing their homework. But what gives? No trademark records at USPTO. I mean, if even a tiny possibility existed that some little guy like me could call foul and force them to change their name - after they've spend perhaps hundreds of thousands to market "their" name over the last few months - would they even have proceeded with using that name? That scares me - it's like they know something I don't know, or hold pocket Aces.

And why haven't they contacted me? They are #1 on Google and I'm #2. There's no question they know I exist. And it would be clear that surfers would readily hit my link and think they are in the right place. Anyone would see that I'd take business away from them. So maybe they know they've got crappy cards.

So here I am today worried about the future of this business. I'm waiting for some letter to arrive. I simply want to operate my business without fear of getting a C&D or being sued.

If I'm right, I could send them a C&D. But I'm not interested in a battle. Plus - it's actually beneficial to me that they continue to promote their site. I'm the unwitting beneficiary.

So I'm really hopeful I can just determine that if the shoe drops, I'll be on the right side of things. I want to pre-emptively determine where things stand. If I'm in the clear, I'll do nothing beside continue to build by company. If I'm wrong, I'll change the name ASAP. So how might I determine if I'm right or wrong without litigation?

 

[FlyingRon]

Who registered first or what website came on the air first is COMPLETELY INCONSEQUENTIAL for trademark issues.

A trademark or registered corporate name is what matters for domain conflict matters.

The registration of a trademark is only part of the issue in resolving trademark issues.

Lets say the trademark really is "GreatStuff" despite that fact that GreatStuff never had an internet presence, they have used the mark in commerce for years and that means that, yes they can bully you out of your use of the mark on the internet.

 

[dennismantis]

Thanks for the response...I understand your point. This issue isn't related so much to the domain name itself...rather the name that I'm publicizing and operating under (which happens to be the same as the domain name).

But it appears they do not have a trademark, and only selected the name and acquired the domain name (similar to) GreatStuff almost 2 months after I was already up and operating.

They had no previous interest in the name and had never used it. I am the first to use it in a branded, commercial sense (I think). And I 100% used it in a commercial sense before they did. The only other place the name existed or was ever used was as a holding page for a domain name to host advertisements.

It was my understanding I could, for instance, simply operate under service marks (simply call myself BecomeGreatStuff . com), regardless of whether I trademarked that name. Away I go.

Then at some future point, someone else comes along and calls themselves GreatStuff .com and even trademarks the name. But I presently do not see how they could claim ownership or that they used the mark before I did if a dispute came up. More research needed, of course. This is all preemptive thinking.

Therefore, wouldn't I be able to lay claim to that trademark in a dispute?

All I'm trying to protect against is them coming to me, saying I've stolen their name/mark and I'm wrongfully taking away their business. I didn't. I'm not trying to force them to change names - they are now helping me. But if they do come knocking, I want to be able to say:

"Hey jokers - I was ready for this moment. You cannot lay claim to the usage of this name before June of 2009. I was fully operational April 2009. I'm a nice guy. Leave me alone, and I'll leave you alone. If you push me, I'll win the trademark battle in court."

So - the question remains - how can I arm myself with such knowledge so I could be ready with a statement like that?

 

[FlyingRon]

You need to get a lawyer. First, you won't get anywhere pro se. Second, we can't help you because you are being intentionally vague to the point of us being unable to give useful advice.

But given the information, you may or may not have a trademark claim. However, being first is only part of the answer. Further domain name issues is even more screwed up than any legal principle and "I WAS THERE FIRST" gets you absolutely nothing in that space. If they are more famous than you an want to push the issue, you will lose.

 

[dennismantis]

Thanks Flying Ron. I'm not trying to be purposefully vague - I simply don't want to publicly post the actual names/domain names in question, so I'm doing my best to provide directly understandable replacements.

I agree - I need to consult a lawyer. Actually, I'm courting a few. It's a difficult issue because I have a little business I named something like SprintNow.com because the publically available Sprint.com was too costly to buy from that private owner, then a huge company comes along, does just that, and calls themselves Sprint.com. And whoa - suddenly my little business explodes with profits - all thanks to them and their massive advertising. I"m smart, so I think they will be upset when they realize a lot of their advertising is helping me instead of them. But nonetheless, I didn't do it on purpose. Yet I'm not complaining about $100s in profit per day because of it.

So I'm sitting on a gold mine of unknown value. If somehow, they in fact pre-date me in some way, I've gotta get out quick before they sue me, even thought I didn't purposefully set out to grab a ton of their business.

But if I pre-date them, they are currently spending hundreds of thousands in ad dollars which will make me thousands per month. I'm not gonna close them down and take their name even if I legally could. And they wouldn't want to close down either given their expenditures. So I'd hope they'd either buy me out or let it ride, hopeful that I didn't take too much away.