Can someone use my website domain name for their podcast if it causes confusion?

[scribetrotter]

My website is about a certain type of travel. Let's pretend I'm called susan-travels.com. There's a podcast with a related URL, say travel-afar.com/susan-travels. The name of the podcast itself is of course Susan Travels, same as my website.

I started my website in 2007 and they started their podcast in 2014. If they had done a minimal search they would have immediately found me, as my website is quite popular. As a result I decided to protect my business by registering my trademark, which has been granted.

This situation is leading to confusion. People looking for me through an online search find them instead. I receive emails destined for them. People tag me on Twitter and Instagram thinking I am them. And now they say they're going to branch out into broader travel, much closer to what I do.

When I wrote asking that they change their name, they said no, that a podcast is different from a website and that there is no confusion because the topics are quite different (they are SLIGHTLY different only, and becoming less so).

Podcasts and websites may be different, but in an online search, they are treated the same by Google. They are encroaching on my brand and on my 12 years of building it - and the confusion can only increase.

Do I have any hope of protecting my brand? Thank you!

 

[PayrollHRGuy]

Have you registered the domain name as a trademark?

I doubt a common proper noun along with a word like "travels" would be able to be protected.

 

[Taxing Matters]

I doubt a common proper noun along with a word like "travels" would be able to be protected.

Well, let's see "Ford Explorer" and "Lincoln Navigator" are both marks with a proper noun along with words close to "travel" and I'm pretty sure Ford would say those marks are protected.

Do I have any hope of protecting my brand? Thank you!

As you describe it, I think you do. But you should see a trademark attorney about that to pursue it.

 

[quincy]

My website is about a certain type of travel. Let's pretend I'm called susan-travels.com. There's a podcast with a related URL, say travel-afar.com/susan-travels. The name of the podcast itself is of course Susan Travels, same as my website.

I started my website in 2007 and they started their podcast in 2014. If they had done a minimal search they would have immediately found me, as my website is quite popular. As a result I decided to protect my business by registering my trademark, which has been granted.

This situation is leading to confusion. People looking for me through an online search find them instead. I receive emails destined for them. People tag me on Twitter and Instagram thinking I am them. And now they say they're going to branch out into broader travel, much closer to what I do.

When I wrote asking that they change their name, they said no, that a podcast is different from a website and that there is no confusion because the topics are quite different (they are SLIGHTLY different only, and becoming less so).

Podcasts and websites may be different, but in an online search, they are treated the same by Google. They are encroaching on my brand and on my 12 years of building it - and the confusion can only increase.

Do I have any hope of protecting my brand? Thank you!

Trademark law centers on consumer confusion.

If consumers are confused by the dual use of a same or similar name - used as a business goods/services identifier or in a domain name as a web address - there can be good reason for the first user of the mark to challenge any subsequent uses of the mark by others.

It is the holder of a trademark who is responsible for policing the marketplace for infringers and enforcing their rights to a mark. If rights to a trademark are not enforced, the trademark holder risks losing those rights.

I recommend you make an appointment with a trademark lawyer in your area for a personal review of the real names involved and for a personal review of your website and the podcast.

Good luck.

 

[bcr229]

Trademark law centers on consumer confusion.

If consumers are confused by the dual use of a same or similar name - used as a business goods/services identifier or in a domain name as a web address - there can be good reason for the first user of the mark to challenge any subsequent uses of the mark by others.

It is the holder of a trademark who is responsible for policing the marketplace for infringers and enforcing their rights to a mark. If rights to a trademark are not enforced, the trademark holder risks losing those rights.

I recommend you make an appointment with a trademark lawyer in your area for a personal review of the real names involved and for a personal review of your website and the podcast.

Good luck.

This. Also look up who is hosting the other company's domain. If the attorney determines that this other company is infringing on your registered trademark and they refuse to change even after getting a letter from your attorney (which would be the next step), your attorney can contact their domain host and have the infringing material removed from their web site.

If the infringing company has a Facebook page it's even easier, you can send the complaint yourself to https://www.facebook.com/help/contact/trademarkform and they will investigate and take appropriate steps.

 

[quincy]

Domain name disputes can be handled by the Uniform Dispute Resolution Procedure (UDRP), a nonbinding arbitration procedure established by the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is the agency that oversees domain name registration and dispute resolution procedures (http://www.icann.org).

 

[scribetrotter]

All of this is super helpful and I have approached a trademark lawyer to look at options - the future is looking a bit brighter. Thank you for all your help!

 

[FlyingRon]

A UDRP complaint isn't going to solve this problem. UDRP is for disputing the issuance of a domain name, not to keep someone from using a domain name in non-domain contexts. The example he has given isn't a domain. The stuff after the / in a URL isn't part of the domain. Attemping to abuse the UDRP procedure would be a waist fo several thousand dollars in arbitration fees.

 

[quincy]

All of this is super helpful and I have approached a trademark lawyer to look at options - the future is looking a bit brighter. Thank you for all your help!

I am happy you are looking for assistance with a trademark lawyer in your area.

We all appreciate the thanks, so thank you.

Good luck.