Trademark threat and moving domains

Retroactive trademark desist notice and moving domain

[JohnBiggscr]

Ok so we operate multiple sites, lets say we sell widgits.
To help target a specific audience we have a lot of sites that use brandnames in the urls as well, so the domains are something like BrandAwidgits.com

One domain name we use is the initials of a company, so lets for example say it was called A Large Company, this would mean the domain is ALCwidgits.com
We registered this domain in 2000, and have re-registered it when the time came so that is it now valid up to 2019.
We have been using this site to sell the widgits for a number of years now, and because it is so specific it does pretty well for us. We have clearly stated on the homepage that we are not the ALC company and have provided a link to their official website on that page.

A Large Company have just recently registered ALCwidgits as an official trademark and have sent us a cease and desist notice and demanded we hand the domain name to them.

So 2 things:
Can they actually demand a retroactive domain handover based on the info provided?
(Should note that ALC do not sell widgits to the public but to suppliers, whereas we sell the final product to the public, so we are not competing with them)


How on earth can I transfer to a new domain and keep the rankings the site has? It ranks position 1 for most of the keyword in google and bing, and only a couple of positions lower for other keywords. If we hand this domain over I can't exactly do redirects so what can I do?

[JohnBiggscr]

Addendum:
We also own a 'sub product' domain that redirects to the ALCwidgits domain.
Its registered as ALCsubwidgits.com
The company has also apparently registered this as a trademark name and demand we hand this over as well.
We have owned and operated this domain for the same length of time as the other one.

[piatkow]

Take professional legal advice.

[JohnBiggscr]

We are but I dont stop at just one source for advice, I like to get as much information as possible.
Plus i still need a response to the 2nd part about how to move a site and retain the ranking when we dont own the original.

[Leosghost]

1st part..all depends on where you are,( where you are incorporated or whatever form your legal entity is ), where they are,( where they are incorporated or whatever form their legal entity is, and where they registered their "trademarks" ) who your registrar is ( which is relevant as it it also says where the registrar is )..these all affect "jurisdiction", ( to a lesser degree also who your host is may affect the outcome )..some places are better than others for your position as regards "disputes" over domain names..in some you may have a very good case ..

2nd part..

How on earth can I transfer to a new domain and keep the rankings the site has? It ranks position 1 for most of the keyword in google and bing, and only a couple of positions lower for other keywords. If we hand this domain over I can't exactly do redirects so what can I do?

not much ..but then if the worst happened you wouldn't be handing over the domain ..just the name, and it is possible that as the domain structure would be your copyright that they could not use it..nor keep the urls that the inbound links come to..in which case any victory they might get would be "pyrrhic" :)

You may even have acquired certain rights to the domain name(s) due to your prolonged use of them ..but that depends on who is doing the judging and where and by what laws..as I said in part 1..

flip side is that, in certain jurisdictions ( despite your "disclaimer" on site ) .you may be considered to have been "passing off" ..due to the use of their name and product, as they may have "acquired" rights to have their name and products considered to be their "trademark" even before they formally registered them as such..

See more than one specialised lawyer..any advice/ comments etc here is from "nicks" on a forum ..and is worth what that is..everyone's mileage will vary

[DeeCee]

Sounds like you are basing your business on riding on the brand names and trademarks of others, and yet you seem to be complaining that one of your targets are fighting back?

Did you really expect anything else to happen?

According to normal trade-mark law as far as far I know it, not only do they have the right to fight back, but they also have the obligation to do so. If they do not fight back and protect their names, the resulting trademark dilution could cause them to lose the rights to the brand/trademark.

Ref. for example the case of Bayer losing the rights to the trademark "Aspirin" because they did not protect it adequately from dilution.

[JohnBiggscr]

As I said DeeCee, they trademarked the two names very recently, but the sites have existed since 2000. There was no trademark conflict when we started.
Secondly, we have not been riding or targeting anyone, we are selling products and using domains that makes sense in the selling of that product. It would be like a dealership selling Fords and Chevys having FordChevy in their domain name. None of the companies involved sell direct to the public, just to suppliers, who we purchase from, and we are not taking any business away from that company.
As I also said we announce on the home page of the site that we are not the company that makes the items but here is a link to the company that does if you want more info. There is no attempt to pretend to be the firm or disparage that firm, there is nothing to 'fight back' against.
If anything they just want the extra website and realise we are using the one they want.

And for those that asked about area....we, and the company in question, are US based.

[tangor]

You really need to get a lawyer familiar with trademarks, business names, etc. We can't give legal advice. It is quite possible that failing to trademark your domains when they first started will force one to take the "in business since" approach, and that may fail in face of a registered trademark holder seeking to protect their trademark.

The analogy of Ford or Chevy dealers is not applicable, they are franchised by the automakers and licensed to use the product name on their dealerships.

[Marshall]

Just remember that we live in a litigious society and anyone can [theoretically] sue anyone over anything.

Marshall

[davezan]

Generally speaking, a domain name registered before its trademark namesake existed can be protected against future infringement claims by them. A trademark aims to prevent likelihood of confusion, not necessarily grant one some claim over its domain namesake just because.

OTOH, it can become an issue if the domain holder did something to essentially acknowledge the trademark holder's existence, like putting ads reflecting products of the mark's competitors.

And as mentioned before, anyone can sue for anything. You just have to guard against such things as best as you can.

David