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I am being sued for my generic domain name

Discussion in 'Legal Issues' started by mv5869, Sep 10, 2011.

  1. #1
    I have owned a wine-related domain for several years, and it is a generic Bordeaux wine name (I dont want to supply the exact name as I will be defending it in court soon). I am being sued by a very large (100 Million plus turnover) wine company for my name.
    SEMrush
    I created the site honestly, with no intention of trying to take business off the other site. The name is similar but it is a descriptive and generic name. I don't believe they will win in court but I cant afford to fight and risk losing (with costs).

    Now I am sick of the situation. I would like to be rid of the site and sell it just to avoid more hassle, but if I offer it to them will it be seen by the courts as a sign that that was always my intention? What should I do.
     
    mv5869, Sep 10, 2011 IP
    SEMrush
  2. mjewel

    mjewel Prominent Member

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    #2
    You're right, even if you win, you lose. Trademark cases can easily generate six figures in legal fees. You should not attempt to offer to sell it - it can be used as evidence of a bad faith registration. You really should see an IP attorney. The company could not only take the domain, but sue you for damages and treble their legals cost (at least in the US). Some large TM holders would rather spend hundreds of thousands of dollars to keep from paying you a penny, others would be willing to give you something to resolve the situation. Each company is unique and I have dealt with both types.
     
    mjewel, Sep 10, 2011 IP
    MTbiker likes this.
  3. reelstuff

    reelstuff Active Member

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    #3
    yes, it is a serious problem, often not worth the cost of defending it, but as with any conversation, (legal disclaimer) (this is not legal advice)

    How far into the process are you, are they just threatening to sue you or have they filed, a docket?

    Are you in the US, or elsewhere, is the website registered in the US?

    These are all valid questions, but again as the other poster recommended, you might want to get advice from a legal authority in your area.
     
    reelstuff, Sep 12, 2011 IP
  4. mnicklas14

    mnicklas14 Greenhorn

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    #4
    How important is it that you keep this domain name? Is your site established and does it bring in revenue? I know you say that it is descriptive and generic, but part of trademarking addresses that. Bordeaux refers to a geographic area which would be fine for you to use the site for anything BUT wine. Once you bring in wine it will infringe on their target market regardless. I don't really see you having any case against them really, unless you take your site down. Even then, a good corporate lawyer could come at you for possible revenue lost, etc. I would see an attorney and see what he thinks. Chances are you shouldn't and probably couldn't afford to bring this to court anyways so you might just want to consider doing what they're asking of you.
     
    mnicklas14, Sep 13, 2011 IP
  5. RobinInTexas

    RobinInTexas Active Member

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    #5
    If you have already retained a lawyer, I would suggest you ask them for the cheapest/best way out. You Have already invested some time and energy in the project, it would be nice if you could get something out of it.

    Without a lawyer, you could spill the beans here and some enterprising person, without your knowledge, might approach them to see if they could get a few £ for it if they could persuade the wine company to sell.

    Last resort just offer to give it to them as a Christmas present.
     
    RobinInTexas, Sep 13, 2011 IP
  6. browntwn

    browntwn Illustrious Member

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    #6
    I see nothing intrinsically wrong with using the word Bordeaux in a domain about Bordeaux wine, but it really depends on the exact name and his usage. Why would using Bordeaux be okay for cheese but not wine? It seems like you just made up your answer and it has no real basis in the law.

    From his question, it seems like he might in fact be using a more specific trademark of a particular winery rather than the overall area name. But without that information it is impossible to give him any real advice. Telling him he has no case when he hasn't even stated the domain name in question seems like jumping the gun a wee bit.

    Posts like this are just plain stupid and basically spam.
     
    browntwn, Sep 13, 2011 IP
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  7. Rukbat

    Rukbat Well-Known Member

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    #7
    The Bordeaux region of France has legally protected the name "Bordeaux" for some uses with regard to wine. It's the equivalent of a trademark. I can't find precedent that's on point, so there may not be any, but using a known trademark in connection with the subject the trademark protects is risky. Selling "Bordeaux bicycles", or using the name for your blog if your last name is Bordeaux, is one thing, but using it for a wine site may infringe.
     
    Rukbat, Sep 13, 2011 IP
  8. browntwn

    browntwn Illustrious Member

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    #8

    I think the rules you are speaking abut refer to the prohibition in using terms like Bordeaux to refer to wines that are not actually from Bordeaux. But to have a website about wines from Bordeaux and using the name Bordeaux would not be trademark confusion, it would be accurate and a correct description. That is why the actual content of his website is key. If he is using that name to feature wines from other areas he may run afoul of those rules, but my recollection is that those rules apply to the sale of goods and not the name of a website or domain name.

    http://en.wikipedia.org/wiki/Appellation_d'Origine_Contrôlée
     
    Last edited: Sep 13, 2011
    browntwn, Sep 13, 2011 IP
  9. MTbiker

    MTbiker Well-Known Member

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    #9
    Luckily I only had to deal with this once. I had registered what was generally regarded as a generic term as a domain name, but two years later, I find out from a law firm that it is a trademark. And they were right. They just hadn't chosen to pursue anyone about it outside the US. Anyway...

    Did they not offer you an ultimatum of transferring the domain to them and ceasing operations vs going to court? In my situation, I transferred the domain name for free, then put my site content up on another domain name. That could very well be your most cost-effective solution. I'm no expert though.
     
    MTbiker, Sep 13, 2011 IP
  10. Avisblr

    Avisblr Member

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    #10
    You should look at their site and see if they have mentioned anything specific about that name in their TOS. If it is generic, you need not worry.
     
    Avisblr, Sep 13, 2011 IP
  11. Business Attorney

    Business Attorney Active Member

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    #11
    Without knowing the exact domain name, the mark allegedly being infringed and all of the other facts, any advice you get here (other than to hire a good IP lawyer) is guesswork. Your only two obvious choices are (1) hire a good IP lawyer and listen to his advice or (2) completely give in on the ownership and hope that they don't also seek damages. Even the second choice carries some risk, though if you don't have resources to make a damage suit worthwhile, it is probably unlikely that a large corporation would waste its time and money chasing after you once they have the name.
     
    Business Attorney, Sep 14, 2011 IP
  12. bluffspot

    bluffspot Active Member

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    #12
    It happened to me a couple of years ago - I simply called the company and asked they make an offer on the site saving them attorney fees. Either way the lawyers get paid but in this case not so much. The domain did sell at way more than I would have asked anywhere else... noobs
     
    bluffspot, Sep 16, 2011 IP
  13. browntwn

    browntwn Illustrious Member

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    #13
    That is horrible legal advice and is handing the other side direct evidence of your bad faith.
     
    browntwn, Sep 16, 2011 IP
  14. mv5869

    mv5869 Peon

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    #14
    Many thanks all for the advice. Although I have owned this domain and been building the site for some time, I also can see that for the other party there could be confusion, though I have done everything I can to avoid that.

    In this case, as I am sick of the hassle and stress, I was considering moving my whole site to a new domain as they request, and passing the domain over. In that case is it valid to ask for compensation from the other site? This is not an offer to sell, merely some money to offset the losses I will suffer from lost traffic and having to rebuild my rankings.

    I would expect that making an offer is much cheaper and quicker for them than pursuing court proceedings.
     
    mv5869, Sep 18, 2011 IP
  15. pw2467

    pw2467 Greenhorn

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    #15
    Remember that google recommends 6 months for the domain move. The search index needs to be updated with your new location for all your pages. Can you keep your domain for another 6 monhts?
     
    pw2467, Sep 18, 2011 IP
  16. Jackob2916

    Jackob2916 Peon

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    #16
    What you are thinking is good but in the eyes of law you will be held as criminal so try to consult some good lawyer....
     
    Jackob2916, Sep 19, 2011 IP