Some things to keep in mind - who registered the domain name first, you or your competitor? Who established a site first (you can try checking at archive.org)
Since C&Ds have failed, the next step should likely be WIPO or ICANN, but perhaps someone else has some other ideas.
Wherever you are try your local business clubs advisors for other routes as well. It may be that there are some lower cost routes to resolve this in your favour.
For example have you checked the TOS of their hosting company to see if they are falling foul there. It could be that you could get their site removed at source which might be an amusing way to get a result.
For example have you checked the TOS of their hosting company to see if they are falling foul there.
I would suspect if they are not responding in the way Spence would like to C&Ds, they will just go and find a new host. Short term solution, but not for the long term.
What was their response, BTW? That could also make a difference to the next step you take.
What about an investigative journalist?
Investigative TV program even?
That changes the picture a lot.
Be careful, because they might well have a case against you, for harrassment!
In answer to the other questions: both are dot-coms and in the US.
Their response was that not a single customer of mine has EVER contacted them through the site over a period of five years. Apparently they can read the minds and intents of people typing in the url. They accuse me of acting in bad faith and trademarking only in an attempt to acquire their domain. They said my demand is frivolous and without merit, and they have no intention of abandoning their domain name.
It wasn't until the trademark office screwed up on one of their letters to me that I began to consider this a real problem. Suddenly all the other mistakes from other sources became more alarming to me and I saw the potential for lost sales.
As we have seen with cases going to ICANN & WIPO, a registered trademark does not neccessarily mean that they could lose their domain name for being "confusingly similar", especially with the dates involved with you registering second.
Do a search for ixp.com at ICANN (in their domain dispute decisions). It is a pretty similar case to yours, when a domain name was registered prior to the complainant, and prior to a trademark being filed, and the complainant did lose the case, and the respondent kept the domain name in question. And that was an identical name, not a just a confusingly similar name. There could be other decisions that went the other way, but that was the one that I remembered offhand that was similar to yours.
Does your own trademark pre-date their domain registration (if they had done a trademark search the day they registered the domain name, would yours have come up if they searched for similar names)? Does your trademark registration pre-date when they had their site up and running? Is it a unique name, or is it words common to the English language?
If your trademark lawyer does not have specific experience with WIPO and/or ICANN, you might want to have a consultation with someone who is. Or do some research in the domain dispute resolutions yourself, and see what you come up with.
There's a chap out there who went out and registered a domain name near on a year after we registered our domain. He made his domain 99.9% identical to our pre-existing domain, only one letter difference. And if that wasn't cheeky enough, he now wants to suggest that we are messing with his sales and his customers!
Maybe instead of getting another letter from his lawyer, we should consider forcing him to turn over his domain to us. We were here first, and he knows it.
They accuse me of acting in bad faith and trademarking only in an attempt to acquire their domain. They said my demand is frivolous and without merit, and they have no intention of abandoning their domain name.
I agree with Buckworks, you don't want to cross the line to harassment. Did you apply for your trademark just so you could attempt to aquire their domain name and/or shut them down as an established competitor at their domain name they've had since 1999? Definitely food for thought.
My suggestion is to talk to a lawyer who is familiar with WIPO/ICANN and get his or her opinion on her case. It probably isn't worth spending the $1500 if an experience domain name lawyer thinks there is the significant possibility that you could lose the case anyway.
If so, I really don't think you have a case. Take the example of dog.com vs dogs.com as an example. Heck, somebody even challenged my domain name on the same grounds. When you register the domain name www.widget.com, you don't automatically get the rights to www.widgets.com if widget isn't the name of your company.
Is the domain name the actual name of your company that you already have a trademark on or is it a somewhat generic word?
We were here first, and he knows it.
kevinpate, your situation looks more clear cut (of course, looks can be deceiving ;) ). For someone to copycat a nearly identical domain name from you, and then accuse you of that, speaks volumes. Is it a brandable name, or a string of common keywords? Were you using it in business before he did?
I guess his lawyer will get a surprise when he receives a C&D in response to his own legalese letter ;) There are plenty of people out their flexing their lawyer's muscles, but the fact remains that some of that flexing is completely unfounded, and used as a strong-arm tactic instead.
I'm beginning to think that a trademark for small businesses is a vanity thing.
No, not at all. But circumstances seem to be working against you in your particular case, since she registered her domain name first, and before you trademarked it. Using it as a handle online does not neccessarily qualify it as using it in commerce first (and I can't even recall any cases where this was used in reference to a domain dispute).
There are many tiny businesses that have successfully gone to ICANN/WIPO for dispute resolutions with trademark issues and won. But the main difference is that those domain names were registered AFTER, and could argue the bad faith aspect of it.
Yes it is interesting when each part bought their domain name.
What is also interesting is when each party started using the name visibly in their business.
If one party was using it a long long time ago and established the name as associated with those products but did not switch into the net as soon as possible.
It may be evidenced that the other party was trying to pass off as the first by appropriating a similar name on the internet.
Note: you need a proper time line of events vis a vi the usage of this name in all media and perhaps expense on promotion of your business with this name, also when did you first take out any legal protection on the name? you have to have professional legal advice on this.
Discussion in here is just that, chat without the facts.
Ah, well. Hindsight is 20/20. I've decided to let the matter drop. My trademark attorney thinks I've got as good a case as any, but for some reason I don't trust that opinion. And I'm not willing to bankrupt myself to find that out for sure. All I can do is continue to correct the people and companies that get me confused with the other site, and keep plugging away at ranking well.
Thanks to everyone who helped me clarify in my mind what step to take next. I appreciate it.
If it were me, I'd take the money you would have wasted on attorney fees and dump it into Adwords and Overture. That will get you tons of traffic/leads that doesn't really care what your domain name is.
I am sure there are often ways to turn a bad situation into a better one or somehow move to take the advantage if you have enough effort and energy you can put behind a positive plan.
For example have you considered a planned re branding exercise for your business, this time with the new target market position, name associations and domains etc tied up legally without any doubts or competitors from the word go.
If you were able to put enough effort into effective communications around the new positioning and branding of your business, perhaps in a step by step process from the present to perhaps a dual brand then onto the new name on its own, you might come out significantly ahead of your competitor in terms of market exposure and awareness simply because of the significantly increased exposure in your market place.
Are you able in the process to position yourself as the higher quality and higher priced supplier, leaving them the cheaper end of the market (if the higher end is more profitable that is :-)
It could be that you could even somehow leverage some not inconsiderable offline media coverage on the facts and issues around the dispute which have undoubtedly affected you and about which you could be seen to be making a positive effort to resolve for the benefit of your customers.
You would need to have a strong (viable) plan to move on from this as initially it would also throw some of the light of publicity onto your competitor.
But if you want to make an significant difference and distance between yourself and your competitor, saying this clearly to your marketplace could well be a good start in a campaign to reposition your business in the minds of your market.
I have not been responsible for implementing such a strategy for a branded business so it is just an idea. Perhaps some of the other more traditional marketing people in here may have some experiences they would be willing to share.
One thing about my "stuff" is that while I work in the same medium as the other party, I feel the similarity ends there. Theirs is very traditional. As a creative artisan, my things are constantly evolving and the newest things I'm doing (even as I type) are non-traditional. So I could possibly take the concept of cheaper v. upscale and turn that into traditional v. fresh, or expected v. new and creative, old school v. new concept. In short, you can get what they have anywhere. Not so with me.
Lots to think about...
I think often the reason people have problems with domains and trademarks etc is because they started with one that did not travel well in the direction they ended up taking.
It is I think why some of these names which are very obscure can appear great if you can support them and get them associated with you in the minds of the market.
In UK we have "Orange" mobiles, Goldfish credit cards NTL, AOL (no longer America On Line as that did not travel well etc) Dixons which I think was the founders name, Vodafone? means what? associates though .. all sorts of names which are just that non descriptive
I am not sure you need a special brand name though Spence, how about using your own name or something like that, are you really a "branded" type of operation.
Reputation I am sure is important but it sounds like you are almost like an artist who creates things, they usually use their names.? :-)
