|Strange trademark situation - where do I stand?|
domain trademark dispute
Hi there, this is my first post.
I have a really strange domain trademark issue that I hope somebody can help me with.
I registered a domain last year, and it is similar to the advertised (online and on tv in the uk) domain of another company.
The domain is two words which on their own are generic.
To use a fictitious but similar example, they have trademarked the name:
Purple coloured widgets, with their website being: www.purplecolouredwidgets.co.uk - 'widgets' here by the way is not a niche product, it's as general as 'footballs'
My domain is www.purplewidgets.co.uk
Every bit of traffic my site has generated, I have sent to them as an affiliate of theirs, but they have not known about the purplewidgets domain (I also use other non-contentious domains to drive traffic to them) until yesterday.
They have now ordered me to take down the website immediately (which I have), and said they are looking into buying it from me.
I simply don't know where I stand with this or what to do next. I am waiting for their offer to buy it, but I have no idea what they will offer or what I should expect them to offer. More importantly, am I in a position to reject the offer, or negotiate with them?
At the moment the domain is sitting inactive and both of us are losing business as a result.
The traffic I send them from this domain is worth around about £3-4000 a month to them, purely through type-in traffic.
I simply don't know where I stand, and I don't want to have to pay for a domain lawyer or anything - can anyone help?!
I think you act cooperatively, accept any offer that you receive, and be glad you don't have to pay a lawer to defend a lawsuit that you will lose.
If your site had nothing to do with the subject matter of the trademark holder, it would be a different matter. But, given that you are an affiliate of them, and are sending them traffic, the name is clearly (to a layman, anyway) confusingly similar.
How could you have possibly have thought that this was OK? You're clearly profiting from the similarity of your domain name to their trademark.
I'm not sure how it is that you didn't know about the purplewidgets website until recently. You don't know what domains you own? OK, well, I guess you can work this in your favor. Explain that you own a lot of domains, and haven't kept track of them as well as you should. Apoligize profusely. In my mind, not an excuse, but it sounds like they are being reasonable, so perhaps they will accept that explanation.
You still may want an attorney, to make sure you don't get yourself in further trouble.
I didn't say that I wasn't aware I had the domain - they weren't aware I had it until yesterday.
It still strikes me as more than a little unfair that they can simply take this off me, or worse as you seem to be suggesting.
They are still making money from this. It's not as if I am directing any business away from them or sending it to a competitor (which most cases I have read about seem to have done).
>> To use a fictitious but similar example,
It's really impossible to make a definite determination about a trademark dispute with "fictitious but similar example," because much hinges on the specifics of each case... for example, that the mark is made up of, as you said, generic terms is less important than the visibility, recognition, and exclusivity of the mark as a whole.
There are also concrete differences between disputes made under trademark laws and those made under domain name dispute policies.
You might want to review nominet's dispute policy... if you want to avoid going to an attorney you'll have to decide for yourself how your situation might be seen:
Comparing your situation to some past decisions might also be helpful:
Could I argue that I was trying to increase their company's business (and obviously take an affiliate commission) for them as an affiliate and given that I did only send traffic to them and nobody else?
They had already accepted me as an affiliate of theirs before I bought the domain.
Oh well hopefully they'll come up with a decent offer, but it is a large chunk of my livelihood at stake here which is why I'm trying to find out whether I do actually have a leg to stand on.
>> They had already accepted me as an affiliate of theirs before I bought the domain.
Odds are that if you check their affiliate agreement it specifies terms as to how you may use their trademarks.
Talk to a lawyer/solictor/barrister. The opinions expressed here are not proper legal guidance and should not be relied upon in forming your strategy or making decisions.
|Could I argue that I was trying to increase their company's business (and obviously take an affiliate commission) for them as an affiliate and given that I did only send traffic to them and nobody else? |
Sure, you could argue that...
But look at it from their perspective. If they have the domain, they still get the traffic, but don't have to pay you a commission. Why should they pay a commission to somebody who is trading off of their good name?
One can argue that they would never have thought of that domain name. They may be thinking that themselves - and it may be why they are willing to make you an offer. Perhaps they are willing to compensate you for the novelty of thinking-up the domain name, even though it may be confusingly-similar to theirs.
Yes - see a lawyer - a GOOD one is not going to drag you into an unreasonable position that is going to be costly to defend. He should level with you, tell you what (if any) laws you have violated, honestly state your prospects, and look out for your interests in any negotiations.
Of course, the right time to see a lawyer was when you dreamed-up this name. Again, WHAT were you thinking?
That's not a retorical question. I'm curious as to what line of thinking went into this domain name and how you have used it, as well as your not notifying the company that you were using this name to send them affiliate traffic. Many affiliate programs require you to disclose domain names when you sign up - does yours?
In terms of what was I thinking,
I didn't know very much about domain names at all about a year ago, certainly had never heard of cyber or typo squatting or the legalities of either (still don't!)
I was driving business to this merchant as an affiliate and doing ok, then by chance i tried to visit their site and put in something like purple-widgets.com by mistake, which brought up several adverts for their company but competitor ads also.
This got me thinking that maybe there are other domains available to do the same sort of thing, but I wasn't interested in directing to a competitor because I was a big fan of this company's affiliate program anyway.
So I found and registered the domain - simple as that really.
No I didn't have to let them know about it as far as I knew.
I seriously thought I was doing them a favour by generating more business for them that they hadn't seen or knew existed. They had been going for well over a year when I bought the domain, it's not as if I snatched it from them as they were setting up the company.
Thanks for all the replies so far, they are very informative.
One more question if you don't mind - you advise I see a lawyer - does anybody know in what region this is likely to cost for an initial meeting/consultation?
I know fees will vary, but am I talking tens, hundreds, or thousands of pounds just to find out where I stand with this matter?
Yes - see a lawyer
If this is your livelyhood then fight.
If they had the legal right to take it from you, then why would they offer to pay you for it?
Should not cost much for a consultation(Most are free).
|If they had the legal right to take it from you, then why would they offer to pay you for it? |
Even if they had the legal right to the domain, filing an ICANN appeal costs at least $1500 plus staff time to see it through.
It might be cost-effective for them to just buy it, as well as better for relations with a productive affiliate.
More than once I've advised a client to "hold your nose and make the guy an offer" rather than going the ICANN route to oust a cybersquatter. It doesn't always work, but when it does it's easier, faster and cheaper than the confrontational approach.
|as well as better for relations with a productive affiliate. |
If they take his site, he is no longer an affiliate.
He clearly said that he drives traffic to them in other ways besides this domain.
If I had 3 different sites sending sales to a company and they tried to Bully me into giving 1 of the sites to them, I'll be dammed if I send them another sale.
I would find a competitor of that company and I would send all sales to the competitor.
I don't see any point in fighting it. If it goes to court and the affiliate wins the domain, the merchant could just cancel the affiliation.
Just an update guys, any help would be greatly appreciated.
I've just had an email from them saying basically how much do I want for it?
Based on the info I've given on this thread in terms of revenue figures, can someone advise me on what to reply?
thanks very much,
Have you consulted with a trademark lawyer yet?
Do you realized that your emails or letters may be used against you in a WIPO proceeding?
IF you think the domain has value are you prepared to lose all that value for wont of investing 1/10 or 1/20 or 1/100th of that value in securing the guidance of a good pilot, who can help navigate you through hazardous waters?
I've found, through experience, that cheap tools tend to break in use. Now, the bigger the project the more I am inclined to invest in the best tools. The costs associated with using cheap tools can include serious injury.
|I've just had an email from them saying basically how much do I want for it? |
Based on the info I've given on this thread in terms of revenue figures, can someone advise me on what to reply?
But one should never let oneself be forced to name the first price in a negotiation. Particularly in this situation. Name a high figure, and there's a chance they will use it as evidence of your ill intent.
This is a pretty common script prior to a WIPO proceeding. You are being set-up my friend.
Let them name a figure first.
Better yet, get a lawyer. One that specializes in trademark law, and preferably with domain experience.
We can't even give you BAD legal advice, since we don't know the exact particulars of the domain names.
OK I threw the ball back into their court by saying make me an offer. Now they want all the domain registration details from me, like when it expires, registered address etc.
I'm finding it extremely hard to read their intentions - anyone have any theories?
PS Thanks for all the helpful responses so far.
I am curious about their affilate contract. You would think they would allow you, as an affilate, to have some use over their trademarks. I would look into what they allow. They must expect their affliates to do some marketing... Which in my mind would include setting up a website. And why wouldn't you pick a domain that has some meaning to the products you sell?
The best advise here is to get a lawyer but I am curious what they allow from their affilates and why they would want to hinder your marketing plan. Seems counter-productive to take down your affilates websites.
A good rule of thumb for selling your site is 3-4 years of total revenue. So 3000euro a month 48,000 a year times 3 years is roughly 150,000euro.
I'm an Amazon affiliate, so I am familiar with their policies. I don't know about other affiliate policies. But Amazon is the Big Kahuna of affiliate programs, so one might expect their agreement to be fairly typical.
Amazon does not permit affiliates to use "Amazon" in a domain name. They do allow it to be used in a URL (i.e. to the right of the domain name).
They also do not permit the use of "Amazon" as a keyword for advertising.
It's clearly a situation that's causing confusion by the similarity to their domain name, and companies MUST take whatever steps they can to protect their trademark lest they forfeit protection by neglect.
They're 100% in the right by making their demand, and checking for trademark law is a wise thing to do for people buying domain names, especially if they know it's close to a trade name that's already been in use.
A good site to check which also is not legal advice, but is informational, is [chillingeffects.org...]
If you look up grounds for trademark dispute in the FAQ you can clearly see that confusion is a major issue - and in your place I'd be very careful about negotiating prices, it might be wise to avoid any appearances of *trying* to sell it to them, even to the point of refusing to name a figure and just going by what they offer.