Hi,
I am a college student who lives in Chico, California, and has a web design company with the domain name chicowebdesigns.com
I was just contacted by chicowebdesign.com, saying that my domain name is a trademark infringement, and belongs to their company. I went to their site and found that their company has been established much longer than mine. ...
I got my domain name because it had the keywords I wanted: Chico, and web designs. I create websites for local businesses around the Chico area, and my site has a notice that the site is not affiliated in any way with chicowebdesign.com. I looked up Google search traffic using google keyword tool, and it said that there are only around 28 searches for "chicowebdesign" per month, "chico web design" gets around 320 searches a month. I wanted to target people searching Google for a local web design company, not to interfere with their business, or trademarks. The content of the sites are similar since we are both web design companies, we both do web design, hosting, and graphic design, but that is because those are standard services for web design companies. My site also offers additional web design services, and a business directory of all websites from or related to Chico CA. The sites do not look very similar, they use different color schemes, layouts, my site is not made to confuse or trick their customers. I have had my site for about 3 months, I have worked primarily on 3 design accounts, I have gotten around 600 pageviews.
I looked up some domain name laws and here is what I found at Bitlaw:
"In order to prevail, the trademark owner must show:
1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
2. that the party that registered the domain name has no legitimate right or interest in the domain name; and
3. that the domain name was registered and used in bad faith.
If the trademark owner successfully proves all three points in the administrative proceeding, then the domain name can either be cancelled or transferred to the prevailing trademark owner. If the trademark owner fails to prove one of these points, the administrative panel will not cancel nor transfer the domain name.
Among the ways that a domain name owner can prove a legitimate right or interest in a domain name is by showing:
* use or preparations to use the domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute;
* that the domain name owner has been commonly known by the second level domain name; or
* that the domain name owner is making legitimate noncommercial or fair use of the domain name, without intent of (i) commercial gain, (ii) misleadingly diverting consumers, or (iii) tarnishing the trademark at issue
A trademark owner can show that a domain name was registered and used in bad faith in a variety of ways, including by showing that the domain name owner:
* registered the name primarily for the purpose of selling or transferring the domain name to the trademark owner or a competitor of the trademark owner for a price greater than out of pocket costs;
* engaged in a pattern of registering trademarks of others to prevent the use of the domain name by the trademark owner;
* registered the domain name primarily to disrupt the business of a competitor; or
* is attempting to attract users to a web site for commercial gain by creating a likelihood of confusion with the trademark owner's trademark."
I am not sure what the precedent is with regard to domain names with an "s" on the end, or domain names that refer to the generic services they offer, or locations. Please inform me of your opinions and expertise on this topic.
Thanks!
Robert
I am a college student who lives in Chico, California, and has a web design company with the domain name chicowebdesigns.com
I was just contacted by chicowebdesign.com, saying that my domain name is a trademark infringement, and belongs to their company. I went to their site and found that their company has been established much longer than mine. ...
I got my domain name because it had the keywords I wanted: Chico, and web designs. I create websites for local businesses around the Chico area, and my site has a notice that the site is not affiliated in any way with chicowebdesign.com. I looked up Google search traffic using google keyword tool, and it said that there are only around 28 searches for "chicowebdesign" per month, "chico web design" gets around 320 searches a month. I wanted to target people searching Google for a local web design company, not to interfere with their business, or trademarks. The content of the sites are similar since we are both web design companies, we both do web design, hosting, and graphic design, but that is because those are standard services for web design companies. My site also offers additional web design services, and a business directory of all websites from or related to Chico CA. The sites do not look very similar, they use different color schemes, layouts, my site is not made to confuse or trick their customers. I have had my site for about 3 months, I have worked primarily on 3 design accounts, I have gotten around 600 pageviews.
I looked up some domain name laws and here is what I found at Bitlaw:
"In order to prevail, the trademark owner must show:
1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
2. that the party that registered the domain name has no legitimate right or interest in the domain name; and
3. that the domain name was registered and used in bad faith.
If the trademark owner successfully proves all three points in the administrative proceeding, then the domain name can either be cancelled or transferred to the prevailing trademark owner. If the trademark owner fails to prove one of these points, the administrative panel will not cancel nor transfer the domain name.
Among the ways that a domain name owner can prove a legitimate right or interest in a domain name is by showing:
* use or preparations to use the domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute;
* that the domain name owner has been commonly known by the second level domain name; or
* that the domain name owner is making legitimate noncommercial or fair use of the domain name, without intent of (i) commercial gain, (ii) misleadingly diverting consumers, or (iii) tarnishing the trademark at issue
A trademark owner can show that a domain name was registered and used in bad faith in a variety of ways, including by showing that the domain name owner:
* registered the name primarily for the purpose of selling or transferring the domain name to the trademark owner or a competitor of the trademark owner for a price greater than out of pocket costs;
* engaged in a pattern of registering trademarks of others to prevent the use of the domain name by the trademark owner;
* registered the domain name primarily to disrupt the business of a competitor; or
* is attempting to attract users to a web site for commercial gain by creating a likelihood of confusion with the trademark owner's trademark."
I am not sure what the precedent is with regard to domain names with an "s" on the end, or domain names that refer to the generic services they offer, or locations. Please inform me of your opinions and expertise on this topic.
Thanks!
Robert
