question Can a domain name be considered as a trademark?

[dotNAMES]

Hi Nameproers,

I would like your inputs about an article I have readen that a domain name can qualify as a trademark when it is used in connection with a website that offer services to the public.

I am actually in conflict with a really big company owning a big portfolio of sub companies in the same business area as mine.
Let say, I own the domain name superservice.com and use it for years for my small business.
This big competitor owns Super.com and Service.com. As a payment descriptor they use "Super*Service.com".
For months now, I am receiving complaints from their customers believing I am the one charging their credit cards. Some of them, really stubborn, also threated me with legal actions.
I decided to contact this company and kindly ask them to change their payment descriptor. They simply answered it was impossible.
I then proposed them to acquire my domain name, as long as it could also complete theirs, and they came back with a very indecent offer. Like a peanut.
I tried again to make them understand it was still impacting negatively my small business but the only answer I received was, as long as I don't have any registered Trademark, I can either accept their offer or go f##k myself.

What are specialists here think about this?

 

[jberryhill]

What are specialists here think about this?

There are too many unknowns.

I gather that the actual names in question are not "superservice.com", "super.com" and "service.com". Absent some idea of what the businesses are (although you mention that you are a competitor), relative priority, and the degree of distinctiveness of the terms at issue in relation to whatever the business might be, there is no way to address the various issues that might be relevant to the circumstances here.

As a general proposition, ANYTHING perceptible to consumers can function as a trademark if it is distinctive of the source or origin of the goods/services on which the mark is used, such that consumers may differentiate the goods/services of one competitor from another in the relevant market. It can be a word, sound, image, smell, color, etc., so whether or not the mark is a domain name is of no particular consequence.

I have run into the problem of companies using inaccurate billing descriptors in credit/debit card statements previously. You should (a) inform the customers as you have been doing and (b) urging them to report the charges as fraudulent to their credit card / debit card issuer. Enough fraud complaints will get the attention of the actual biller. But what that has to do with a trademark issue puzzles me.

I doubt they want the domain name, since they are probably happy enough to allow upset customers to chase you instead of them. But absolutely urge those customers to contact their credit card issuer and the consumer protection bureau or attorney general of their state, along with the state in which the actual biller is located.

 

[dotNAMES]

Thank you for your detailed response.
I still don't understand why they don't change their payment descriptor. It would easily resolve the problem and everybody would be happy.

Actually, I do what you suggest and reply all their customer contacting me to fill charge back and contact directly (providing names and email address) of the CEO and CTO of this company. Still, it impacts negatively my business and some of those customers simply don't believe that I am not the one taking their money. On the top of this, some bank automatically remove the * in the descriptor and for those customer, their really believe I am the one doing this.

If you want I can send you per PM the details of this company and domain names.
Do you believe a "Cease and desist" letter could be a way to resolve this problem?

 

[jberryhill]

Do you believe a "Cease and desist" letter could be a way to resolve this problem?

Absent specifics, I have no idea what might be an appropriate approach.

I posted in response to the general question posed in the subject line since it is a question of general interest that pops up from time to time.

 

[jberryhill]

Still, it impacts negatively my business and some of those customers simply don't believe that I am not the one taking their money.

This is a little difficult to understand. I assume at some point they were at the site of this other company and they bought whatever it is they bought. Presumably, they received some emails from the other company in relation to whatever it is they bought?

Is your site and the other site so indistinguishable that, if directed to look at your site and look at the other site, the customers in question would not be able to remember from whom they bought whatever it is?

What is it you and the other site are selling?

 

[Kyle Tully]

Is your site and the other site so indistinguishable that, if directed to look at your site and look at the other site, the customers in question would not be able to remember from whom they bought whatever it is?

In my experience, around 50% of people are either too stupid to look or too angry to listen.

We used to run a store with "boho" in the name. The number of return requests, refund requests, and general support questions we would get from people who had shopped at "boohoo" was insane.

Some were apologetic when they realised their mistake, others were having one of it and insisted we had taken their money

 

[jberryhill]

Yes, we used to get these all the time with Frank Schilling’s portfolio of over 200,000 names. We had a variety of ways we’d deal with these things, but absent specifics, there’s not a one size fits all answer. Sometimes, when they were clearly using a fake billing reference on purpose to avoid accountability, we’d take it up with the relevant state consumer protection bureau, law enforcement, or relevant licensing agency if it involved a licensed business of some kind.

But, most of time, something along the lines of “Look at our site and tell us what you think you bought from it” and “Now look at the other site” would be adequate. We had a form email for that sort of thing.

If they are doing it on purpose to evade accountability, well then of course they don’t want to buy the domain name.

 

[dotNAMES]

This is a little difficult to understand. I assume at some point they were at the site of this other company and they bought whatever it is they bought. Presumably, they received some emails from the other company in relation to whatever it is they bought?

Is your site and the other site so indistinguishable that, if directed to look at your site and look at the other site, the customers in question would not be able to remember from whom they bought whatever it is?

What is it you and the other site are selling?

Actually, very distinguishable!
It is about Webhosting services.

The main problem is, they own several different companies/websites but have all of them under the same descriptor.

In my experience, around 50% of people are either too stupid to look or too angry to listen.

Exactly this. I wouldn't say 50% though but 25%. And sometimes, peoples can really be stubborn.

Yes, we used to get these all the time with Frank Schilling’s portfolio of over 200,000 names. We had a variety of ways we’d deal with these things, but absent specifics, there’s not a one size fits all answer. Sometimes, when they were clearly using a fake billing reference on purpose to avoid accountability, we’d take it up with the relevant state consumer protection bureau, law enforcement, or relevant licensing agency if it involved a licensed business of some kind.

But, most of time, something along the lines of “Look at our site and tell us what you think you bought from it” and “Now look at the other site” would be adequate. We had a form email for that sort of thing.

If they are doing it on purpose to evade accountability, well then of course they don’t want to buy the domain name.

You might be right with the purpose of accountability but still, I don't understand why they don't accept to change their descriptor and give it, for example, the name of their Main Company.
Few days ago, I've been contacted by another company asking me to change the phone number on this descriptor because it was theirs ! So even, their phone number is wrong!!!!

I also don't understand why I have no other recourse than taking/wasting the time to manage/answer their unsatisfied customers (and some days, it is about answer 10 of them) !

 

[jberryhill]

I also don't understand why I have no other recourse

Well, nobody said you have "no other recourse". But if you are looking for legal advice at to what specifically you might do in your country and/or province/state (as well as theirs), and how much effort and cost that might require, that's unlikely to happen on a web forum on the basis of general information.

You don't have to respond to those people, and you could, for example, come up with a form response of some kind that takes into account the range of things they are complaining about, and provides THEM with information on how to contact the relevant attorney general / consumer protection authority where your competitor is located. You could engage a lawyer to write that form response for you, after review of the range of issues about which they are complaining. You could then send the form response and auto-bounce further emails from that person.

Once in a while, I've seen situations where people will escalate to their AG/consumer protection bureau/whatever, and at that level it is usually easier to point out that the problem arose from someone using an inaccurate billing descriptor.

But, yes, I can completely sympathize with the occasional nuisance of people expecting you to spend your time solving their problems without any compensation for your time or effort.

 

[dotNAMES]

Again, thank you very much for your time and energy to give me answers.
I am not sure though you totally understand the problem I am actually facing with this company.

I am the victim here.
A fortune 500 company is doing something very prejudicial to my small business.
I am the one trying to find a simple way to sort this out (and I still believe modifying a payment descriptor is really not something soooooo difficult to handle) but no, I will have to engage costly procedure to simply avoid someone shitting directly in my garden ?
Is this the reality we now live in ?

In other words, you mean that a simple "Cease and desist" letter won't be enough?

 

[jberryhill]

In other words, you mean that a simple "Cease and desist" letter won't be enough?

I have no idea what course of action might be appropriate to your specific circumstances.

There's nothing magic about a "cease and desist letter". You say that you already contacted them and they don't care. Just because someone sends a letter doesn't mean they are going to start caring.

If a complaint to the relevant Attorney General is appropriate - which it might or might not be - then it's still just sending a letter and is not a costly procedure. By using a misleading billing descriptor, they may arguably be engaging in some form of consumer fraud. So, a copy of a letter sent to a relevant law enforcement authority *might* get more attention from them than a letter from some mook saying "please stop it", which you say you already did.

The reality we live in is that there are costs to doing business. It's not all rainbows and cashing checks. In any business, there are things that happen which are a pain in the ass. That's what the money is for.

 

[HotKey]

If you are willing to sell and they are willing to offer than really this is just a negotiations problem. I would focus on adjusting your expectations while raising theirs. If the DN merits it.

 

[dotNAMES]

I have no idea what course of action might be appropriate to your specific circumstances.

There's nothing magic about a "cease and desist letter". You say that you already contacted them and they don't care. Just because someone sends a letter doesn't mean they are going to start caring.

If a complaint to the relevant Attorney General is appropriate - which it might or might not be - then it's still just sending a letter and is not a costly procedure. By using a misleading billing descriptor, they may arguably be engaging in some form of consumer fraud. So, a copy of a letter sent to a relevant law enforcement authority *might* get more attention from them than a letter from some mook saying "please stop it", which you say you already did.

The reality we live in is that there are costs to doing business. It's not all rainbows and cashing checks. In any business, there are things that happen which are a pain in the ass. That's what the money is for.

Again, thank you for the time and the patience you take to answer my frustration.
I am in Europe and have no idea where to start with sending a letter to Attorney General in the US. But I will do my homework and find it.

If you are willing to sell and they are willing to offer than really this is just a negotiations problem. I would focus on adjusting your expectations while raising theirs. If the DN merits it.

Believe me, it is not a negociations problem. Their offer is simply an insult. I didn't take it personally and tried my best to find a compromise in the middle. But no way to negociate anything with those peoples.

Beside this, I don't want to sell my domain name. Why should I accept a ridiculous offer when I am more looking to find a solution?
Again, if they agreed to change their payment descriptor, it would have been easy for all and cheap for them.

 

[pb]

This is a little difficult to understand. I assume at some point they were at the site of this other company and they bought whatever it is they bought. Presumably, they received some emails from the other company in relation to whatever it is they bought?

Is your site and the other site so indistinguishable that, if directed to look at your site and look at the other site, the customers in question would not be able to remember from whom they bought whatever it is?

Real life example, I have a website at premium.pl that sells domains. Some Chinese company created a facebook profile named Premium_PL where they sold cooking pots. Some people didn't receive said pots and what they did was go to premium.pl, seek out contact form and send a complaint. You can check for yourself that our website looks quite different than facebook.

Ah, there is also a mobile phone operator at premiummobile.pl and we frequently receive questions about mobile plans and complaints about non-working netflix subscriptions. Although in this case they at least have similar colour scheme on their website.

 

[jberryhill]

I am in Europe and have no idea where to start with

When I have a problem that I don't know how to handle, I consider hiring someone who does. This works well for things like auto repairs, plumbing, and other specialized areas where people have years of experience and insight into dealing with those sorts of things.

 

[DomainNature]

Maybe use a tactic to attract their customers to you and convince them that your biz is the real deal.
Otherwise this can be made by your competitor on purpose, because they do some scheme to make money and their customers complain to your biz, because this is convenient for for the other biz to not change their payment descriptor, so they can fool further everyone who deals with them.

 

[HotKey]

Again, thank you for the time and the patience you take to answer my frustration.
I am in Europe and have no idea where to start with sending a letter to Attorney General in the US. But I will do my homework and find it.

Believe me, it is not a negociations problem. Their offer is simply an insult. I didn't take it personally and tried my best to find a compromise in the middle. But no way to negociate anything with those peoples.

Beside this, I don't want to sell my domain name. Why should I accept a ridiculous offer when I am more looking to find a solution?
Again, if they agreed to change their payment descriptor, it would have been easy for all and cheap for them.

It's turned into a negotiation because you gave them an opportunity to buy it. It can turn nasty when the buyer thinks they have some sort of ownership on a domain name they don't own and parties involved aren't willing to come to terms on a sale price. It will then go to the legalese obscurity if the buyer (or seller) thinks they have grounds and want to proceed and as Berryhill suggested needs a professional.

Some proper communication can really work wonders but it takes two.

 

[leopardini]

I will just cut to the chase. You need the trademark.

There are plenty of cheap trademark attorneys online. They can tell you if your domain/business name is trademark-able in about 15 seconds.

You wanna hammer that uncooperative company hiding behind your name? Trademark is your hammer.

 

[DomainNature]

Most important is to offer goods and services on that website, this is already like owning TM without registering a TM, but a registered TM gives you more rights, if not wrong.