Intellectual property (IP) Law and Typosquatting

[wotzy]

Also posted this in Legal Section

Typosquatting? not sure what you call it. Competitor trading off your name, selling same products and service. Our trademark is registered (ipo.gov.uk). Our domain url are the words from the TM name, always have been.

Has a cease and desist letter ever worked for your company, or is this just old hat now?

They are using TM words in their Meta descriptions too. They are using the same word in our logo in their website logo. We have been established longer, our site has been on the same domain for years. Theirs is about 4 years old. They are becoming a pain in the derrière. And we have been putting off what to do about it.

Any advice, or links very much appreciated.

Difficult to know how close they are (there was a case where a Playboy model was sued by playboy for using their name on her website, but I believe she won, as she had been in their magazine).

If they are selling identical products and services, then the issue is only the TM word.

I would think that a letter (from firm rather than through a solicitor requesting them (firmly, but without threat) to remove trademarked words/logo would be first step.

Second step, if they ignore request (and depending on whether they respond by letter) would be to do some work on checking

a) if they are paying Google or Yahoo! for advertising - if your TM word is enough to find them, as a "paid ad" then Google for one may cancel that word/ block their campaign, after a complaint from your firm

b) find out who hosts their site, and indicate a copyright/trademark infringement, that the company has been warned, and indicate that the hosting company needs to stop display of the site until content is changed, or you will chase hosting firm. That may well be enough - the threat of legal action is bad news for hosters and they may take easiest step and suspend website (which will hit competitor quite nicely).

Write warning letter to firm on Monday, giving them 10 days... See if you can get hosting firm to shut them off on the Friday before bank holiday!

Thanks NewtworkGuy

I don't think they do PPC. Others do, but quite harmless and infrequent - probably without knowledge or harmful intent of who we are.

These guys know what they are doing. And have increased usage and page content with our domain in urls and TM in urls + in meta tags + in descriptive tags. They rank high up in natural listings for our TM name. They have also used placement pages full of our TM with text only content to draw in customers. I have taken screen grabs. I've got loads as proof. I have acted by using twitter and FB and free directories which means they are now pushed off the first page. But I need to act further to get them to stop. Thanks.

Are these .co.uk or .com or other types?

Just curious because there may be different ways to handle disputes (though not sure how high the success rate is if their domain 'includes' your TM name - if they were simply registing the TM with some other top level domain that'd be a clearer 'passing off' situation.

I think that approaching the hosting might be the best way to hit them - depends on who they host with, and how seriously the content can be deemed to infringe your rights.

Would be curious to know if they have used some SEO people to push up their rankings, or just cut and paste material.

If you want you should be able to contact me via one of the domains mentioned on my profile - I'm certainly about how close they have named domains (and whether there are some newsgroups or other boards I can suggest for you to comment, either to get further advice, or to blacklist them direct with hosting firms! No one would like to touch them if they have had trouble associated with their past practice...

Difficult to know how much effort it would take (from your side) for Google/Yahoo! to block them (it isn't an area I've been involved with too much, though I am trying to "get back" a domain which I lost {due to a mess with RegisterFly, a US based domain firm} as someone with a similar idea has registered a name while his company name has a similarity {a different prefix} but is different)

You could go down the DMCA route with Google & co.

You could fire off C&Ds to their hosting companies.

But the best option is to chop them down at the root. Use ICANN UDRP. It costs about £1,000 - £1,500 if you represent yourself but you get control of their domains.

Thanks for the link into Google but they might sling it out as this doesn't, surely, come under the DMCA (which covers music, video, and from what I saw here such other 'creative works' as architectural design and other works of art.

If Google has a section involved with only this aspect of copyright, I would not trust it getting too far.

As for ICANN, valid perhaps (but OP has not indicated whether they're all .uk domains yet). Of course I can see the attraction of getting control of their domains, however! It looks as if one could bundle all names into one case, before submission to a court. However, unless OP owns the .co.uk domains, there are lots of options the other party has to continue to annoy.

I wonder if there's anything one could do via Out-Law (legal firm, will try to find website) about a UK judgement to require the infringers to cease and desist any attempt to misuse the trademark (so it is a persisting order, with perhaps a strong penalty - contempt of court - and affects any variation on names the other party might try), else the OP is playing cat and mouse as new domain names can be used at any time in the future, apparently with no redress. It may cost a bit, but would also be more suited to the task to stop the other party being a nuisance for all time.

I think the C+D to hosting firms might make the TM infringing firm understand this is something that won't go away, however much they might want it to.

sorry, been away for a few days
domains are both reg woth .co.uk and .com

US we own,
www.webname.co.uk
www.webname.com
webname.com
webname.co.uk

THEM
www.notwebname.n et

Yes, they have actually put the word not as a prefix. Yes they know who we are as I got a quote over the phone and asked if they were us. How they laughed and said they knew who we were (or rather that company were) but no they sold the same things and could email me a comparative quote, like for like.

sorry that was meant to say

THEM
THEM
www.notwebname.net

I assume 'webname' is not the actual name.

If they are using 'not' then unfortunately, I don't think you'll get very far with any complaints procedures, as they're clearly not 'passing off' and could argue they are making it clear they are not you.

However if there's material on their site which is a 'cut and paste' job you might have a chance.

It's a bit like a sucks.com domain being registers.

Unless the content is outrageous (libellous, etc) then merely having in the domain name is not enough to get the site closed, or to dispute the name.

Also, if the website actually included your company name then that alone might not be grounds for any case.

Take the McLibel case where McDonalds was named. Merely including their name isn't a problem, accusing food of being carcinogenic was. OK, not a website, but you can hopefully see that much depends on the context.

Without the actual 'competitor' domains to look at, it's a bit awkward to know whether you would be taken seriously. Proving they have a detrimental effect on your business might be really difficult to prove, and if they (or any other firms) can get supplies of the same goods, then it's even more awkward to see you having a strong case.

Glad you gave an example name, as you might have gone down the route of chasing them and spending money on it, when it looks as if they have little or no case to answer (on what I have read, at least).

Sorry, don't want to sound dismissive, but if www.notyou.com is the type of thing, it's hard to see a complaint getting to court (I would be suspicious of motives if some firm says they will act for you - I'd think they were just after a hefty fee).

I suppose I could do a domain with
www.notnotdomainname.com

and FWIW domainname is our reg TM. But I see your point. However it if I were to start using notgooogle.com I'm sure I'd not get away with it - hence 'bing'

Actually I will give serious consideration to
notnotdomainame

feckers

Actually notgoogle.com .org and .info are all registered. The .org is a GoDaddy domain reseller, the .info doesn't load, and the .com is parked, showing 'under construction' and has some ad links.

Just looked for notdomainname.com and .co.uk and found neither.

Puzzled to see you offer .us but not .org (given one needs USA address for .us as far as I know) - but missing the .org could be an oversight.

domainname and webname are not my web address. I would not be stupid enough to post my real domains on an open forum. What are you on about 'Puzzled to see you offer .us but not .org' - not a clue. But thanks anyway.

We have been offered some free legal advice from an IP lawyer and take it from there.

Oh, when you switched from webname to domainname I assumed that actually was the domain name, hence comment (as domainname.co.uk offers .us but not .org) - so I simply misunderstood (and not sure why you'd feel it stupid to post an actual domain name you use - would certainly have helped I suspect).

As indicated, notgoogle {.various} have been registered without a problem, though admittedly none seems to mention Google.

Hope you will post back when you have had advice and say whether action was successful, and on what grounds claim against competitor was made. Will surely help someone else that way.

Thanks.