Question of Trademark Infringement/Domain Name Dispute

[leonardboot]

What is the name of your state? New York

We received a letter from an attorney dated May 4, 2005 indicating that our domain name is an infringement upon his client's trademark.

Wishing to remain anonymous, consider that our website is A_B_C_D.com and the opposing party's site is D_A_B_C.com, each letter representing the same word. We sell merchandise nationwide online through this site. The other party, D_A_B_C.com, is the domain name for a physical store in the state of Massachusetts that does not sell online through that site. They sell online through another site with an entirely different domain name. Both D_A_B_C.com and their ecommerce site with the different domain name sell the same merchandise that we do.

They are demanding that we cease and desist using our domain name because they feel it is similar in name to their physical store's domain name. We do not want to do this. We feel the time, effort and loss to us to change our domain name at this point is not warranted, based upon the following chronology:

In February 2004 their web site, D_A_B_C.com, was established.
In July 2004 our web site, A_B_C_D.ourhost.com, was established as a sub-domain name with our hosting company.
In September 2004 our domain name, A_B_C_D.com, was established through our hosting company.
In October 2004 their application for trademark protection for D-A-B-C.com with the U.S. Patent and Trademark Office was filed, one month AFTER our domain name was established.

We do not want to change our domain name nor do we feel it is warranted. Even though A_B_C_D.com and D_A_B_C.com are similar in name, they are not identical in name, nor do they serve the same purpose. Ours is an ecommerce site selling nationwide and theirs is a physical store in another state selling to local area customers. In addition, we do not see how we could be infringing on their trademark since they filed for trademark protection a month after we established our domain name.

We're basically the little guy in this and we think we're being bullied. We do not have the means nor the resources to take them on and we are not willing to voluntarily relinquish the use of our domain name for all the aforementioned reasons. We'd like to know from a legal point of view exactly where we stand in this matter. Any advice you can give us would be greatly appreciated. Please respond as soon as possible as they are requesting a response from us within seven days. Thank you.

 

[divgradcurl]

We're basically the little guy in this and we think we're being bullied. We do not have the means nor the resources to take them on and we are not willing to voluntarily relinquish the use of our domain name for all the aforementioned reasons. We'd like to know from a legal point of view exactly where we stand in this matter. Any advice you can give us would be greatly appreciated.

You are in a tough position. A couple of things to consider:

1. Their use of the words A+B+C+D, albeit in a different order, does predate yours on the web, so it's not like they are some little mom+pop store that just cropped up.

2. Filing for a federal trademark does not mean that they had no rights prior to the filing -- it just means that they didn't have federal registration. It is still possible to claim common-law trademark rights. As a side note, "Washington Redskins," the football team, is not a federally-registered trademark. It used to be -- but then it was determined that the martk was not "trademarkable" and they lost their registration. However, they still have rights, and they can and do assert them.

3. Trademark infringement is not related to "exact" duplication of a mark -- it is a "likelihood of confusion" test, and the test is usually a nine-part (or thereabouts, it differs from circuit to circuit) test.

4. Establishing a domain name does not necessarily establish trademark rights.

Basically, from a legal standpoint, it will all come down to whether they can prove common-law trademark rights for their web presence. They almost certainly can prove common-law rights in the state where their store is located, but for the web, it will depend on all of the facts of the situation.

Practically, however, if you do not have the "means or resources" to try and stand up and make them prove their common-law rights, then you may have a tough go of it. Based solely on the facts given here, if they filed a UDRP action with ICANN or whatever, you would likely have a good chance of hanging on to your name -- but if they take it to court, unless you are willing to pony up for a lawyer, well, what can you say...

 

[davezan]

UDRP-wise, you'd have a glimmer of a chance if how you're using the name is
different and/or unrelated to what the other is doing. If you're selling online
ebooks and the other is selling clothes offline, that can help.

What are you 2 selling, btw?

But as divgradcurl said, the other party might have the resources to go to
court instead and use something like, say, the Anticybersquatting Consumer
Protection Act (ACPA). If you need a wee bit of "pro bono" help, you can go
to www.internetjustice.org .

Good luck!

 

[leonardboot]

We're both selling dyeable wedding shoes. He's well established, ranked right up there on Google under his other domain name, not the name in dispute here. I'm just getting started. I have spent a lot of time and effort designing my site myself, establishing link partners, etc. This is my first website. It took my almost a year to get it going and it was quite a learning experience. I feel I established my domain name legally and in good faith. I never anticipated a situation like this.
There are many, many ecommerce sites selling these products online. For example, dyeableshoes.com, dyeableshoestore.com, dyeableshoecompany.com, dyeableshoesonline.com, to name a few. You can see all the names are similar.
I'm very resentful that this guy is picking on me this way. I don't know if I'm right or wrong here, but I know I obtained the name legally. It would cost me a lot if I have to go to court. If I relinquish the name, it would cost me a great deal of time and effort to change everything it's taken me so long to create.
As the first responder here stated, I'm still unclear how I could infringe upon his trademark with my domain name when I clearly had that domain name one month before he filed his application for trademark protection.

 

[divgradcurl]

As the first responder here stated, I'm still unclear how I could infringe upon his trademark with my domain name when I clearly had that domain name one month before he filed his application for trademark protection.

See my response #2 above. They may have already acquired trademark protections before they filed a trademark application. A registered trademark gives more protections than a common-law mark, but a common-law mark is a completely enforceable mark. If they can establish common-law trademark rights dating before you started your website, the fact that they waited until later to register is of no relevance. I'm not saying that they DO have trademark rights -- if this ever went to court, they would have the burden of establishing that they did have rights -- but I am saying that they MIGHT have trademark rights.

Trademarks are not like patents -- you don't ever have to apply for a mark to claim a mark -- you simply have to use the mark in commerce, and you can acquire rights via use.

 

[leonardboot]

I'm new to this and I'm really trying to understand all this legalese. I really do appreciate everyone's input.
One of you said that "if they can establish common-law trademark rights dating before you started your web site, the fact that they waited until later to register is of no relevance."
I don't quite understand that because from what I read, I am under the impression that common law trademark protection only applies to the geographical location in which the mark is used. That being the case, it seems to me that if this particular party has common-law trademark rights in the state of Massachusetts simply by virtue of using the mark in commerce via their physical store, then those rights do not extend beyond that point. And if those rights do not extend beyond that point, that point being the Commonwealth of Massachusetts, then how is it possible that my domain name is infringing on their mark if at the time my domain name was established all they had was common-law trademark protection within their own state?
Please clarify. Thank you.

 

[divgradcurl]

I am under the impression that common law trademark protection only applies to the geographical location in which the mark is used.

That is correct. However, as you yourself noted in your first post, they began using their mark on the internet before you registered your domain name. Whether or not that use was sufficient to establish the use of their mark on the web, well, that will depend on all of the relevant facts. But the fact that a common law trademark is limited to the geographical location in which the mark is used does not mean that a common-law mark holder cannot establish the entire U.S. as their geographical region. It's where the mark is used, not necessarily where any particular physical store location is.

That being the case, it seems to me that if this particular party has common-law trademark rights in the state of Massachusetts simply by virtue of using the mark in commerce via their physical store, then those rights do not extend beyond that point.

See above. If they have established rights on the internet -- and I'm not saying they have -- then they would not necessarily be limited to Massachusetts or wherever. Trademark law is not a cut-and-dried answer area of the law -- there are a lot of gray areas, and most of the answers depend on a detailed understanding of all of the relevant facts and caselaw.

And if those rights do not extend beyond that point, that point being the Commonwealth of Massachusetts, then how is it possible that my domain name is infringing on their mark if at the time my domain name was established all they had was common-law trademark protection within their own state?

See above.

The problem here is that you are seeking a "bright line" rule that will tell you whether or not you are infringing. It simply isn't that easy -- whether or not they can show that you are infringing a common-law trademark will depend on a) whether they can prove by a preponderance of the evidence that they hold a common-law trademark, b) whether they can prove that it applies to you, and c) whether they can prove that you are infringing on that mark. Without knowing ALL of the relevant facts, it's hard to tell how this will turn out. There is a ton of caselaw showing common-law markholders asserting their rights against domain holders; most of it involves the use of a person's name, which, by definition, cannot be a registered mark, only a common-law mark; again, whether or not a common-law right can be asserted in this case will depend on the complete facts, but it is certainly a possibility that they could assert common-law rights against you.

But more to the point: from a practical standpoint, what are you going to do? You noted in your first post that "We do not have the means nor the resources to take them on."

 

[leonardboot]

I suppose I was hoping to find a cut and dried answer here and obviously this is not a cut and dried situation. As to what I am going to do, I am consulting with an attorney in my area who specializes in these types of issues and, based upon what information and advice I receive from him, I will decide whether or not it's worth it for me to proceed with this. As I said initially, cost is a factor for me. I had hoped there'd be an easier, less costly way out of this. I did contact internetjustice.org, actually prior to the suggestion here to do so, but to date haven't had a response.