We have been trying to get our hands on widgetshop.com for the last year but it has only just become available and was sitting in netsol's expired domain pending deletion list for ages. We checked it every day for over a month and it turns out that one of our competitors based in the US has registered it and is now pointing it at their own site, however with widget shop as the site title.
Is this grounds for appealing to icann on the basis that they are trying to benefit from our company name? Any help as always appreciated.
Liam
I don't know which post at WebmasterWorld I was reading that day, but somebody said that if you trademark a name before the domain of it is registered (by somebody else), you are able to get the domain back.
Sid
Don't limit your thinking to "the problem is the domain name". It's "how" the domain name is being used that's the problem. This is rough feel legal analysis but, given the manner in which the competitor has chosen to employ the domain, the law may provide multiple remedies including an injuction (stop doing that), an order to turnover, compensatory and punitive damages.
Think about it. Doesn't it jump out at you? It's as if they were running an advertisement in the local papers, trading on your good name, that sent people to "their business address" to buy XYZ. Would your customers think you had moved? Would customers who heard of you by word-of-mouth, but never visited you, travel to the "new store" by mistake? Would that be stealing or otherwise deceiving your customers?
Broaden your thinking.
Check with counsel. If you were in the States I'd consider "tortious interference", "conversion" and a variety of other legal and equitable theories. Basically, another business is trading on your company's good name and good will. Give a judge a set of facts that smacks of unfair dealing and a legal theory of relief that fits the facts and any judge worth his day's pay will fashion an equitable remedy.
In the UK this is known as "passing off".
TJ
Just a quick one though. Would you recommend sending them a nice polite email or getting the lawers involved? Oh yeah my domain name is in my profile if anyone wants to take a look.
thanks again
liam
Ive been on the other side
Just today received an email from a company whos email I have.
Are you planning to buy the domain name from the competitor for a premium or just make sure that they are not redirecting the traffic so as to "pass off"?
Also, don't get an attorney involved in the beginning. Many companies and small businesses will competeley shut you out as soon as you mention that you are going to sue them. They will require that all your communications go through their attorney - which will cost you more time and money.
Should the owner of golfballshop.co.uk be allowed to take the domain golfballshop.com because he's a competitor in the golfball retail sector?
I DON'T THINK SO!
The domain clearly has GENERIC value. If you want it, pay him what it's worth. Don't try and steal it via TM law - you have no case.
INAL, YMMV etc.
jk ;)
Sid
it appears that your domain name is a descriptive phrase rather than something trademarkableEven if the name is discriptive, it can still be trademarked, but the TM wouldn't be that strong. Still, if you can show that someone used your TM in bad faith, even with a weak TM you could take action (I remember reading that somewhere on a link regarding a similar issue--the thread about "lawyers at the door," I believe).
