I own the domain - but who owns the name? (blog question)
Ohioguy
in 2000, I started writing a monthly computer review column for a
magazine. The next year, I thought it would be nice to develop a
website where I could review local restaurants. I tried to come up with
something that had alliteration. Let's say that I live in Dola, and I
ended up thinking "DolaDining.com" (not the real name) would be a good
website. I saw that no one had registered it, and hemmed and hawed for
about 3 weeks trying to decide whether to spend the 10 bucks to register
it, trying to decide if I would really get around to doing anything with
it, etc. Then I finally decided to get it, and suddenly found that it
was taken. It almost seemed to me that someone had noticed my checking
out the domain name, and decided to buy it. Well, I decided then that I
definitely wanted it, and I spent the lion's share of my tax refund that
year (I think early 2002) to purchase it
from that guy.
One thing led to another, and I ended up getting a job, getting
married, having kids, and then fixing up an old duplex while doing
freelance writing for a couple of magazines and a newspaper. I kept the
domain name registered, but didn't think I had the technical know-how or
the time to actually do anything with the domain. For a short time, I
considered trying to work out something with the publisher of the paper
I was writing for, but shelved that idea when he was late with payment
for articles a couple of times in a row.
Lo and behold, about a month ago somebody left a message on my
answering machine asking me how to transfer the domain. He claimed to
be the former editor of a local paper (not the one I had freelanced for)
that had a dining section, and he wanted info on how to transfer it to a
new owner. I explained that I meant to develop it into a blog that had
local restaurant reviews, and that I had purchased it, but that I
supposed I might sell it if the offer was high enough. He claimed they
had ownership of the name, and then told me he was in contact with an
interested party. He wanted details about how much I had paid, when I
had purchased it, etc. In exchange, he said he would put me in touch
with the interested party. I didn't like his changing story, nor how I
started to feel like he was just digging for information, so I decided
not to answer him any more.
About a week later, I got a message from a woman on my answering
machine. She gave her name, then followed up with "from Dola Dining".
She said she was interested in purchasing the domain name. Now at this
point, I'm rather miffed, to put it mildly. Someone is going around
using the name that I had registered over 7 years ago, and which I
thought I had sole use of. I almost decided to contact her and tell her
that she was just going about the process wrong, and that if she would
just send me a concrete offer in writing, I would consider it. However,
after mulling it over a few days, it actually served to finally get me
off my butt and do some research. I realized I could set up a blogger
account with Google and accomplish most of what I wanted to do in the
short term with the domain name - at no cost. I could set up a blog,
link it to my domain, and post restaurant reviews for places I ate 3 or
4 times a month. With Google Adsense enabled, I
might even make a few bucks to help pay the tips. (not to mention I can
write off the cost of eating out on our taxes)
So, I set up the website, and I've now posted my second restaurant
review to it. After doing this, I decided to do some research on the
woman who wanted to buy my domain. The situation is worse than I
thought. It turns out that she has registered my "Dola Dining" name on
twitter, on facebook, on myspace, etc. This means I can't even set up
an account on any of those services using the name from my registered
domain name - she already has them.
The worst thing is that she seems to have found a way around the fact
that I legally have the "doladining.com" domain name. She has used some
service called the "ning network". (ning.com), which has allowed her to
set up a base website at "doladining.ning.com". Since she has been
doing this for a year, or maybe a year and a half, she gets the hits for
anybody doing a search for "dola" and "dining". She has actually set up
a bunch of other blogs, entries on local websites, and other things
which purposefully have links to her "doladining.ning.com" website, so
that it will show up in loads of searches.
I think I have the better domain name, but at this point I'm
wondering if it even matters. Even though I registered the "Dola
Dining" (again, not the real name) domain on the internet ~5 years
before she started the food blog, or the "doladining.ning.com" website,
as far as I can tell this still won't allow me to force her to stop
using my name on Twitter, facebook or other social linking websites that
will drive loads of searches to her website. And since I would have to
use a different name from my domain name if I registered on those
services, it seems like her registering first there really limits my
ability to bring in new viewers - not to mention it confuses the heck
out of anybody - makes them think that she is the official "Dola Dining"
website. That is how she presents herself - even to me when she called
on the telephone. I'm just not sure what the precedent is when it comes
to a name that is modeled after the place you live. In this
case, it is just the city name, plus "Dining". I thought I had that
sewed up when I noticed nobody else was using it in the papers or online
at the time, and I purchased it outright.
Am I screwed?
tmclone
I'm not a lawyer, but I've learned quite a lot about trademarks, as
least and the laws apply to me and my business. I own a federally
registered trademark, which I only registered because I had someone
willfully infringing it, causing brand dilution, and ruining my
reputation.
If she has been actually using the name for a real business then yes,
she probably has the rights to the domain. The way a trademark works
is length of time it's been in use. A trademark doesn't have to be
registered to be valid. If you own a domain name you've done nothing
with, then you never started a clock on the use of the name. If she's
been in business (actually selling some product or service) with that
name then she can require you to relinquish that domain name because
she can claim trademark. I had to threaten to sue someone who was
using my business name on various websites and a physical store. She
really didn't understand that she couldn't co-opt my business name and
use it herself. I've owned my business since 1991 (the .com since
1997), and this person started a site in 2002 with a different name,
but used "xxxx.com, AKA mydomainname.com" on every single page. Also,
she had several "mydomainname" stores up on various sites like eBay.
The moment I discovered this I had my trademark registered and had the
3rd party sites change the name of all of her stores. However, her
lawyer had to explain to her that if she didn't cease and desist
IMMEDIATELY she would be sued in Federal court and be liable for
damages up to every dime she'd ever made while using my name before
she finally agreed to change the name of her physical store. In your
case, does this person have a DBA or other registered use of the name
filed with the county? If so, then you're probably out of luck. You
certainly can't use it, and you could be compelled to simply abandon
it. However, again, I'm not a lawyer, so you should probably ask this
in a different forum. Or simply ask a lawyer.
Tony Sivori
>
> About a week later, I got a message from a woman on my answering
> machine. She gave her name, then followed up with "from Dola Dining".
> She said she was interested in purchasing the domain name. Now at this
> point, I'm rather miffed, to put it mildly. Someone is going around
> using the name that I had registered over 7 years ago, and which I
> thought I had sole use of.
All you have sole use of is doladining.com.
> So, I set up the website, and I've now posted my second restaurant
> review to it. After doing this, I decided to do some research on the
> woman who wanted to buy my domain. The situation is worse than I
> thought.
> It turns out that she has registered my "Dola Dining" name on twitter,
> on
> facebook, on myspace, etc. This means I can't even set up an account on
> any of those services using the name from my registered domain name -
> she already has them.
>
> The worst thing is that she seems to have found a way around the fact
> that I legally have the "doladining.com" domain name. She has used some
> service called the "ning network". (ning.com), which has allowed her to
> set up a base website at "doladining.ning.com". Since she has been
> doing this for a year, or maybe a year and a half, she gets the hits for
> anybody doing a search for "dola" and "dining". She has actually set up
> a bunch of other blogs, entries on local websites, and other things
> which purposefully have links to her "doladining.ning.com" website, so
> that it will show up in loads of searches.
>
> Am I screwed?
You still have the name, and you can still build your own traffic and
following. As long as she is using Dola Dining instead of DolaDining.com
on twitter, etc, I don't think you have much recourse.
The fact that her Dola Dining is higher rated in searches is the result of
her work and your inactivity. Also considering that you probably didn't
go to the bother and expense to trademark Dola Dining you don't have
basis for a complaint there either.
I don't understand why she even wants your domain name when she could just
register DolaDining.net, .org, .biz., or .us.
--
Tony Sivori
Due to spam, I'm filtering all Google Groups posters.
jeff
My understanding is that the owner of an established business has a
legal right to the domain name. Such that if there was no FedEx.com, and
someone other than FedEx had registered FedEx.com, FedEx would be able
to claim that domain name. I don't believe that just owning a domain
name entitles you to any other uses of that domain. Anyone can use Dola
and or Dining in some combination that does not match a business name
serving that area. There can be identically named Dola Dinings in
different states.
It does not appear that you have done anything to establish that name
until after the fact.
There is nothing you can do, but there may be something she could do.
It seems like it is not worth her while.
Jeff
Ohioguy
>legal right to the domain name.
when I thought up the domain name, and searched for it. Somebody
evidently saw my searches, and decided to register it shortly
thereafter, because not that long afterwards, the domain was
unavailable. I had to pay hundreds to get it, but decided that it would
be worth it, since I wanted the best website for local dining when I
eventually got around to developing it.
>Such that if there was no FedEx.com, and someone other than FedEx had
>registered FedEx.com, FedEx would be able to claim that domain name.
But see, the reverse is true this time around. I registered the
domain more than 5 years before she started her blog. In fact, you can
see my address and contact info in the whois lookup. (keep in mind that
'dola' is not the actual city name, or domain name) Anyone looking up
the whois info could clearly see what state and city I was aiming for.
Evidently I thought much more protection came from owning a domain.
>There can be identically named Dola Dinings in different states.
True, but there is only one metropolitan area in the US that has more
than 1 million population that matches this domain name, and she lives
in the same area as I do, and started using the same name.
As it is, someone pointedly asked me if anyone had ever bothered to
register the name with the state - as in "DBA - Doing Business As", or a
fictitious name. I did a search online, and no one has. I'm not sure
if it would make any difference if I was the first to register it or not.
tmclone
Owning a domain name offers no protection at all. The only
"protection" would come from actually having USED it for business
purposes. Then it would be a trademark and you'd have protection.
Sounds like you had an idea, spent too much money buying the domain,
then did nothing at all with it. Why would you expect "protection"?
Also sounds like it isn't exactly a long seek. Meaning that
"doladining" would be an obvious name for anyone wanting to create a
food/restaurant site in the town of "dola". Suck it up and move on.
SMS
> Am I screwed?
Yes. You never registered your business name with a Fictitious Name
Notice. OTOH, she has no right to your domain name; it's not like you
obtained a name that an existing business is entitled to. Why don't you
register the fictitious name now, before she does.
OTOH, I remember when the domain "frys.com" was owned by a manufacturer
of french fry vending machines, and Fry's Electronics sued them to get
the domain name, and won. If you have a lot of money and good lawyers it
helps!
tmclone
> Ohioguy <n...@none.net> wrote:
> > Even though I registered the "Dola
> >Dining" (again, not the real name) domain on the internet ~5 years
> >before she started the food blog,
>
> consideration.
>
> > Am I screwed?
>
> Could be; you did it to yourself. LOL: Does, "Use it or lose it"
> ring a bell? How about, "Due diligence"? Man, you sure do get into some
> weird situations; is there not a library in your town? I think you're
> being hustled by someone who wants to coerce you into selling him the
> domain and who knows that by proceeding to use variations of it he's
> tilting the deck in his favor. At this point, your best course of action
> might be to sell it to him for the most money that you can extort. Bear
> in mind, though, that you must keep your price below the opposing
> party's anticipated legal fees if he decides to sue. Otherwise, based on
> your non-performance, there is a good chance that in a civil proceeding
> a judge would transfer ownership to the petitioner and all you'd get
> from the deal is lawyer's bills.
> The purpose of domain registration is to preserve uniqueness among
> domains in order to prevent addressing conflicts; it in no way confers
> any legal ownership or exclusivity of use of the name for any other
> purpose. The privileged of exclusivity or "ownership" is obtained by
> registering the name as a trade or service mark with the U.S. Patent
> Office. In order to discourage unscrupulous operators from doing with
> trade and service marks as you have done with the domain name, that is,
> simply sitting on them, applications must be accompanied by actual
> samples of current usage—such as product labels, advertising, actual
> products—or, at the very least, artwork depicting anticipated
> applications. I do not mean to imply that _your_ intent was nefarious
> but without the requirement, it would be easier for hustlers to register
> trademarks arbitrarily solely for the purpose of extorting cash from
> legitimate operators who later want to use one of them, in much the same
> manner as the wild-west (lawyers' dream) extortion market that now
> exists with domain names.
> If you intend to conduct business using a name other than your own
> for the purposes of advertising, solicitation, bank accounts,
> revenue-generation, collections, etc. you most likely would need to
> register the name as a so-called "fictitious" name in your local
> jurisdiction but that's a separate issue relating to double-dealing and
> fraud.
Oh good doG. I was traveling and relegated to Googlegroups. If I had
realized that the OP was that moronic breeder tax-avoider from some
mid-western fly over state I would never have bothered to reply. What
a complete loser.
jeff
> > My understanding is that the owner of an established business has a
> >legal right to the domain name.
> I understand and support that, but she had no established business
> when I thought up the domain name, and searched for it. Somebody
> evidently saw my searches, and decided to register it shortly
> thereafter, because not that long afterwards, the domain was
> unavailable.
Don't search and not register. Your search suggestions then become
available for others. Not a lot of great easy names left.
I had to pay hundreds to get it, but decided that it would
> be worth it, since I wanted the best website for local dining when I
> eventually got around to developing it.
>
> >Such that if there was no FedEx.com, and someone other than FedEx had
> >registered FedEx.com, FedEx would be able to claim that domain name.
> But see, the reverse is true this time around. I registered the
> domain more than 5 years before she started her blog. In fact, you can
> see my address and contact info in the whois lookup. (keep in mind that
> 'dola' is not the actual city name, or domain name) Anyone looking up
> the whois info could clearly see what state and city I was aiming for.
> Evidently I thought much more protection came from owning a domain.
No, practically none at all. It's the business that has the protection,
and it's trademarks. Owning the domain name only entitles you to
protection from businesses that don't have a clear widespread claim on
the name, hence claim also to the domain name. Owning a domain name can
be more tenuous than you think!
Jeff
>
>