Big Brother objects to my domain name

[Gemini23]

Just seeking advice here really... I registered a domain name in 2005 and have been trading with it ever since.. first registered in 2001 I believe. A worldwide 'Big Brother' web domain has this week threatened legal action as my domain name of xyzgreenwidgets.com is 'similar' in name to their yxz.com

I am seeking advice but am wondering what to do in the worst case scenario... as I sure can't afford a huge legal bill... I have built up numerous links and am gracing page 1 of Google with some good traffic and fair income... is there anyway I can retain the 'goodwill + incoming links' that I have built up over the past 4 years with the website of xyzgreenwidgets.com and no it isn't a rip off from the Big Brother.. just the Big Brother flexing their muscles...

I gather the xyz.com was first registered in or about 1998... anyone any help would be greatly appreciated...

[piatkow]

Probably depends on what the actual values of x,y and z are.

[kaled]

You could reply along the lines of...

I am operating a legitimate business. I do not misrepresent the business in any way and I have no reason to believe that my customers are confused as to the ownership of the domain name. If you wish to make me a sensible, commercial offer for the domain name and/or the website, I will consider it, otherwise I consider this matter closed.

I might have missed something, but I think this single paragraph covers all the points necessary. Paying a lawyer to dress it up may be worthwhile.

Kaled.

[Rosalind]

There are a few big companies notorious for this, and they send out letters from their lawyers to everyone who has a domain that's even slightly similar. Only you know whether you intended to pass yourself off as them and trade on their good name, but if it's really a 3-letter trademark, of which you have 2 letters reversed, they may have no case.

The use to which you have put the domain matters a lot, as well. Are your green widgets the same as theirs, and does your website look at all similar to theirs?

[Gemini23]

just to say without actually entering the name... a similar would be... Big Brother is firstplace dot com and mine is firstplacefortickets dot com

The first two words are 'generic' they are not 'names' as such...

[Dinkar]

Gemini, if you are not living in USA then just ignore it. Just don't reply.

I hope your domain is not registered with Godaddy. If so, transfer it to somewhere else.. most preferably to non-US registrar.

[Gemini23]

As a follow up.. not with GoDaddy and am in UK but does it matter who registered with? It was never an intention of ours to pass off or mimic other website.. BUT we sell the same/similar products as do hundreds of others.. eg... tickets for a football match can be sold by numerous websites but are essentially the same product.. tickets to see a football match... our website does not resemble Big Brother at all...
and also has unique content... the bottom line is that most of our sales arrive from organic search engine results... and Google does not pay the greatest importance to the domain name - more 1)content 2)meta tags 3) content 4) inbound links 5)website structure (and yes there are more... BUT domain name is (I believe) quite some way down the list... all of this is just quite worrying as if Big Brother wishes to go to court just because they can.. I then have to carry the cost... which would potentially be massive...

[piatkow]

but does it matter who registered with?

I suspect that some registrars are more likely than others to take unilateral action in the event of a complaint.
You need professional legal advice. If your hosting and registration are in the UK then the whole thing should come under English (or possibly Scottish) law and a specialist solicitor will be able to advise.

[man in poland]

Be polite but firm. There are a number of companies that attempt to bully legitimate businesses using this tactic. If you have built up this business legitimately, don't roll over and give in to them.

I cannot comment on your particular case without knowing the specifics, and encourage you to seek professional legal advice.

[Gemini23]

Thanks for all of the replies to this.. I am taking legal advice (and the cost of that)... given the scenario of me having to give up the domain name... is there any way that I can retain the 'goodwill' of inbound links and ranking on Google.... by doing some sort of redirect?

[Swanny007]

If I was you I'd first contact these guys - [eff.org...] - I have dealt with them over a firm letter I received from a big company. And the EFF helped me decide what to do.

If you do have to give up the domain name, a 301 redirect will send all traffic to your new domain. Just be sure that you can keep the 301 up for a few months (at a minimum) so you don't lose out on too much traffic.

[piatkow]

EFF would only be a help if Gemini23 has the domain or hosting located in the USA and the "big brother" tries to go for the host or registrar. If they go through the courts in his own jurisdiction then letters referring to US federal law will be met with derision.

[Gemini23]

just to say thet the registrant is <snip> so not sure if EFF would be relevant or not?
I have started down the legal route and am starting to count the costs already....

[edited by: buckworks at 12:13 am (utc) on Nov. 27, 2009]
[edit reason] Removed specifics [/edit]

[MamaDawg]

Technically speaking, you can do a 301 redirect from your old domain to your new one and request a "change of address" in Google webmaster tools. You need to do this while you have control over both names because you need to verify ownership.

However this is something else to run past your lawyer before you actually do it. (Especially if the other party has at any point requested that you NOT do so.)

[man in poland]

It would also all depend on whether they are asking you to move your site off that disputed domain, or want you to hand that domain over to them. If the latter, a 301 to your new domain will not be the answer, obviously.

[Gemini23]

The bottom line is that I don't wish to relinquish the domain and do not believe that I have in anyway sought to mimic a trademark domain... but IF they decide to take me to court.. as they have done to other smaller businesses I cannot compete financially to fight them.. I have got legal advice at the moment... and will have to wait and see what transpires by next week.. having had my domain for 4 years I like to think that I have a case... I have read up on Google and it seems that I would need to hang on to the old domain for 180 days? and am not sure IF that could be done... maybe if the domain name was 'live' (ie not shown the url or on the actual website they wouldn't object... (very frustrating having spent four years of hard labour getting the website to where it is now..

[kaled]

Courts are generally slow. Since you have been in business using this domain name for several years, the enemy has an extremely weak case for obtaining a temporary injunction, therefor, you should be able to keep this domain for a while yet.

Certainly, you should plan for the worst, but caving in is not your only option. You can defend yourself in court, you may even be able to submit your arguments in a written form for consideration by a judge. It is standard practice that big companies try to win by intimidation - don't be intimidated. If you believe you have right on your side you should fight. If you can't afford legal costs then do it yourself. Even if you loose, you will learn a great deal from the exercise.

Others may correct me, but assuming you get past the temporary injunction, you'll be served with court papers, you'll have to respond by saying that you intend to contest the case, a date will then be set and you'll have have to make your case. So far, I've fought all my battles out of court, but I think that's more or less how it works. There is a risk that costs could be awarded against you (meaning that you have to pay their costs) but in the circumstances, it would be a hardhearted judge that made that call (but you should be polite and reasonable - you must avoid appearing to be belligerent).

Kaled.

[Gemini23]

Thanks for the advice Kaled. I will update you once I get a reply from the international company. The somewhat ludicrous situation is that when I first started out as an 'affiliate' I had links to the international company and they sold their products 'through me', they have a procedure through the affiliate marketer whereby they 'check' your website and you are then appproved.. That was probably 2-3 years ago. Even more bizarrely I only this week got an email from the affiliate maerketing side of the international company saying 'use these deeplinks' to sell their products... I actually haven't sold or provided links for them for probably about a year.
They want their cake and they want everyone elses cake...

[man in poland]

Gemini - if they approved your website some years back, this strengthens your case considerably. In fact, I am increasingly convinced that they are trying the old bullying tactic (I've dealt with it before) and by remaining cool and polite but firm, you can see this thing out. I think a judge would find any evidence that the company had 'approved' your website in the past pretty compelling evidence to have this case dismissed in your favour. But again, take proper legal advice - and do your best to track down anything to support your case (ie terms and conditions about this 'approval' process) If they have changed them in the meantime, check Wayback Machine to be sure of their T's and C's at your time of registration. Good luck!