Strange Question about similar name!!

[monkeynuts]

Hi all,

ive got a strange question i need some help with if anyone could give me some advice it would be welcome.

ok the thing is i have been developing my website for a year now and im ready to go live anytime, however the one concern i have is that there is another website with a similar name but the words are just opposites, my website is .com and so is theres.

letme explain say if there was an established website called eg: audiomix.com and i own this domain mixaudio.com or say cheesgrater.com vs gratercheese.com or simplesounds.com vs soundssimple.com could this cause any problems?

meaning that both websites each time have the same two words but in a different order?

im so confused as to if this matters or not?

 

[AEProgram]

Hi all,

ive got a strange question i need some help with if anyone could give me some advice it would be welcome.

ok the thing is i have been developing my website for a year now and im ready to go live anytime, however the one concern i have is that there is another website with a similar name but the words are just opposites, my website is .com and so is theres.

letme explain say if there was an established website called eg: audiomix.com and i own this domain mixaudio.com or say cheesgrater.com vs gratercheese.com or simplesounds.com vs soundssimple.com could this cause any problems?

meaning that both websites each time have the same two words but in a different order?

im so confused as to if this matters or not?

trademark?
will u use your site to slander them ?
if you plan on marketing your site, are you sure people wont mistake their name for yours? meaning if they have the more proper keyword you might lose out to them.

 

[Name Trader]

if your site covers the same area of commerce as yours and you might be infringing on their trademark, registered or unregistered, then you might get served with an UDRP notice, which if you don't defend, you most likely will lose and you will be labeled a cybersquatter and lose your domain. You would then be faced with finding a different domain for your website. There are a lot of might's/maybe's in there. We cannot get more specific with knowing the domains and looking at the websites.

 

[monkeynuts]

if your site covers the same area of commerce as yours and you might be infringing on their trademark, registered or unregistered, then you might get served with an UDRP notice, which if you don't defend, you most likely will lose and you will be labeled a cybersquatter and lose your domain. You would then be faced with finding a different domain for your website. There are a lot of might's/maybe's in there. We cannot get more specific with knowing the domains and looking at the websites.

hmm well to be honest its more similar to the first example i named but not exact: audiomix.com vs mixaudio.com...say if i own for instance audiomix.com and the website thats allready established is mixaudio.com .

there is no trademarks current or pending for my websites name.

now the established website is a online recording studio where users can make recordings and share them with one another through the websites interface,
now the site i have been building and is due to launch is a social networking platform similar to reverbnation where artists can chat and message and share there recordings videos and profiles etc to gain exposure...my website differs as its not an online recording studio!
so they aint really aimed at doing the same thing and will not be used in the same way by its users, i bought this domain name a year ago for this project and own the .com and .co.uk and.org and .net , this wasnt in anyway planned i just searched for the name and all of the above where available so i bought them all and have been building this site ever since, and as you can imagine a site like reverbnation takes some building hence the time frame.

oh by the way the website in question has been online for about 5 years and only has 400 users and the only function it does is recording mixes with there online studio and thats it, users can just follow each other thats all, where as like i said my site is closer to a reverbnation style website for artists to upload there music and bios etc and connect with each other.

 

[Ten10]

if your site covers the same area of commerce as yours and you might be infringing on their trademark, registered or unregistered, then you might get served with an UDRP notice, which if you don't defend, you most likely will lose and you will be labeled a cybersquatter and lose your domain. You would then be faced with finding a different domain for your website. There are a lot of might's/maybe's in there. We cannot get more specific with knowing the domains and looking at the websites.

ok, I am confused by this.

Is the existing doman name registered a company name? I am going to assume the domain name is not registered as a company either.

How does similar domain name infringe on a domain name that is not a registered trademark nor a registered company name? Specially when the combination of words in any order is not trademarked?

Mix and Audio are two generic words. Someone could register AudioMixed.com and run exactly same type of website.

Does it means AudioMix.GURU can not have same type of website, if 'Audio Mix' or 'Mix Audio' or MixAudio or AudioMix is not trademarked?

I think, It would be really odd if just having a domain same ( with different tld ) or similar domain name ( with same tld ), would mean automatic rights when words in the domain name is generic but there is no trademark registered.

Lot of small brink and motor stores have same names and offer same type of service or sell same goods. ( like selling same brand of a product. )

You can find 10 stores ( actually more then 10) having same exactly same generic name and running same type of store in the same country. I have not seen problems for running these same named stores as long as store name is not trademarked. AFAIK, it is same worldwide. Business with only generic words in their business names cannot claim exclusive rights nor prevent others from having same/similar business name even for same class of goods/service without trademarking the generic name in a class.

again, AFAIK , This does not apply to goods. Generic goods/products name are different from business name. To prevent, counterfeiting, goods get automatic protection against same/similar generic name for same class of goods. Goods are not business names ( as in domain name ).

If you see my question : HELP! Registered a .com too good to be available!, I recently registered a singular .com when plural .com already is an active website.

This is like saying just because Redbicycles.com is selling some some good or service and Redbicycle.com or Redbicycles.GURU or Redbicycles.SHOP cannot sell the same! Perhaps buyers are more likely to search for singular then plural for a product or service and direct relation to the domain name makes it easy to remember the website. Perhaps buyers would prefer .SHOP as it more clearly indicates it is a shop then a .com!

If just running a business on a generic domain-name.com makes it easy to shutdown every other business on other tlds with same domain name, then no other tld would sell.

To me, it appears, if the words are commonly used in everyday communication and are generic and not trademarked in any order, I would think it would not be a problem, but then IANAL, maybe I have misunderstood the whole thing!

I am genuinely interested in understanding this. Maybe someone with experience, specially a lawyer, can chime in and help clear things or point to udrp cases for domain names based on non trademarked generic words?

there is no trademarks current or pending for my websites name.

What about trademarks on the other domain name?

You may want to check if their domain name is registered as a company name.

Also, If your domain name is not already trademarked, why not trademark it?

How about registering your domain name as company name? would that work?

I don't understand how someone with no trademark can come after another domain name! I don't think a domain name is even a valid business/company name, unless registered as a company name. If it was like this, then every domain name would become a company name!

So if other domain owner has not registered theirs as trademark or company name, how can they come after yours?

To be safe, I guess you may want to consult a lawyer to figure out what is right way to go forward with this.

If you do, please update this thread.

 

[Name Trader]

Just because a domain doesn't have a registered TM doesn't mean they don't have any TM rights (although they might not have any).

You will find many of those motor stores don't have any trademarks and they are quite happy to compete with each other in the marketplace.

Having a company with the same name means nothing to a URDP panel.

The point is AudioMix.com and MiXAudio.com are confusingly similar names. The first leg of three a complainant has to prove to win a UDRP. The 2nd leg is to prove the respondent is infringing on their trademark (registered or not), and the last leg is to prove it was registered and used in bad faith. The complainant has to prove all 3 legs to succeed. So, if the respondent is infringing their tradmark (which is possible from the explanation given). The fact that the complainants domain was registered 5 years ago and the the respondents only one year ago, it is at least possible that he might have registered and using it in bad faith.

I think the OP should consult the advice of a Trademark/IP lawyer, because I am not a lawyer, and my advice is only from my limited experience, which means it has no basic value, other than to suggest consulting a TM/IP lawyer. If the OP has spend as much time/money as he says he has, then consulting a TM/IP lawyer would be money well spent.

 

[monkeynuts]

Just because a domain doesn't have a registered TM doesn't mean they don't have any TM rights (although they might not have any).

You will find many of those motor stores don't have any trademarks and they are quite happy to compete with each other in the marketplace.

Having a company with the same name means nothing to an RDP panel.

The point is AudioMix.com and MiXAudio.com are confusingly similar names. The first leg of three a complainant has to prove to win a UDRP. The 2nd leg is to prove the respondent is infringing on their trademark (registered or not), and the last leg is to prove it was registered and used in bad faith. The complainant has to prove all 3 legs to succeed. So, if the respondent is infringing their tradmark (which is possible from the explanation given). The fact that the complainants domain was registered 5 years ago and the the respondents only one year ago, it is at least possible that he might have registered and using it in bad faith.

I think the OP should consult the advice of a Trademark/IP lawyer, because I am not a lawyer, and my advice is only from my limited experience, which means it has no basic value, other than to suggest consulting a TM/IP lawyer. If the OP has spend as much time/money as he says he has, then consulting a TM/IP lawyer would be money well spent.

lol this was not registered in bad faith i had an idea for a website and started hunting for a two word dot com that wasnt taken that matched the kind of website i wanted to build, i typed many thousands of names to get this name and it come up as not being registered EVER before! so obviously i snapped as many of the domains with that same name as i could up, then it wasnt until last month i typed in the keywords and noticed a website with a reverse naming come up in google at the top.

this was after well over 8 months of working on my website, so i went to the website to see if its similar and to be honest its not!
yes it has to do with music but most websites with audio in the name will tend to be music related.

this website is an online recording studio where people create music online and share it, my website is a social platform like reverbnation that involves original artists creating profiles and uploading bios etc and general chatting with each other and adding friends.

i wasnt aware of this website at all and this is why im here asking for advice, to see if its ok, it is two generic words yes but reversed, its only like someone buying something like upspeed.com when theres a website called speedup.com or say hitdirect.com when theres a website called directhit.com is it not? this is why im confused, and no it is not a registered company nor is it a trademarked website, its a none profit website as far as i can tell with only 400 users over a 5 year period as it has no monetizing nor membership fees nor adverts on it! like i said i was lucky i got a 2 word domain that has NEVER been registered as a business name a trademark or a domain name after searching everywhere.

damn i even snapped up the google id twitter id youtube id facebook id and every other name associated with it i could find on the net, this has been an extensive project at thousands of hours work over a year to build, so no its by no means bad faith. it was just seeing a reversed name that worried me.

 

[DU]

The point is AudioMix.com and MiXAudio.com are confusingly similar names.

Two generically descriptive words reversed are not really confusingly similar, though confusingly similar is obviously a matter of judgment.
I would say that more than 7 out of 10 people would not find these confusing.

In this, case, in fact one could say one is a noun an audio mix and one is a verb mix audio.

 

[AEProgram]

Two generically descriptive words reversed are not really confusingly similar, though confusingly similar is obviously a matter of judgment.
I would say that more than 7 out of 10 people would not find these confusing.

In this, case, in fact one could say one is a noun an audio mix and one is a verb mix audio.

you can delete 95% of all domains right now as everyone could claim the other guys name is similar in one way or another to theirs.

 

[Name Trader]

It's not what you guys think is confusingly similar domain name, or not. It's the view of the URDP panelist(s), as is the infringement of TM rights. You can also protest all you like about not knowing about the other domain name, but if the URDP panelist(s) see it different to you, you're in a bad place.

Let's get something clear here. I'm giving you the worst case scenario here. The other domain name might never have heard of your website, might have no trademark rights in their website, might never pursue you under ICANN's URDP procedures. But if they do, you have to defend yourself. The OP, by their own admission has spend a lot of time (and presumably money) developing their website. He fears the possibility of a UDRP simply because he posted this thread. You would think he would at least spend some money to get the advice of a TM lawyer in order have all his ducks in a row.

Just my 2c worth of opinion. I repeat, I am not a lawyer of any kind. But I have had to defend myself from a reverse hijacking takeover from the .org of my .com (successully). I had never heard of their website, I wasn't infringing on their trademark. My domain was registered first although I'd bought it after the .org was registered, and the domain names were identical (apart from the ext), so I conceded they were confusing similar, which was a mistake, because the panelist decided because I had conceded to confusingly similar I couldn't win a revere highjacking takeover decision, which I felt I was entitled to. As did some other prominent domainers. Single panelists make a lot of wonky decisions. If you want 3 panelists, you have to pay for them, and for your lawyer to present your best case. So why not spend some of that money upfront, for insurance.

 

[alien51]

I have had to defend myself from a reverse hijacking takeover from the .org of my .com (successully). I had never heard of their website, I wasn't infringing on their trademark. My domain was registered first although I'd bought it after the .org was registered, and the domain names were identical (apart from the ext), so I conceded they were confusing similar, which was a mistake, because the panelist decided because I had conceded to confusingly similar I couldn't win a revere highjacking takeover decision

All UDRPs are triggered by claims of "confusingly similar". So that's always a given, by default.

They would have to prove that you have no legit interest on the domain, and you regged it in bad faith.

So you're saying you immediately surrendered with your white flag just because the other guy has the same name as yours?

With regards to the OP, i don't think reverse names would qualify as confusingly similar, unless this is an extremely popular brand we are talking about here.... say "Burger King" versus "King Burger". And this is probably because the term burger king and king burger, are very descriptive that you probably cannot use one without running into the business of the other guy.

But of course it doesn't apply to word combinations that have vague meanings.

For example "BlackStone" is the brand name of a Hedge Fund investment company. But "Stone Black" can be a brand name for just about anything, other than an entity in the hedge fund business as well. If you DID set-up a hedge fund with the name "Stone Black" and you got sued for TM, the Judge would probably ask you why on earth you would pick that name without knowing there is already a similar TM brand in the same business only in reverse. The judge's "opinion" might find you had a naughty motive. And in such case, the probable motive would gain weight in the decision.

 

[DU]

For fun:

Outside Kids vs Kid's Outside

 

[Ten10]

It's not what you guys think is confusingly similar domain name, or not. It's the view of the URDP panelist(s), as is the infringement of TM rights. You can also protest all you like about not knowing about the other domain name, but if the URDP panelist(s) see it different to you, you're in a bad place.

Surely UDRP panelists also follow law just like a judge would?

btw, anyone knows which country's law do the panelist follow? or is international law?

OR is there a separate law book for UDRP?

 

[monkeynuts]

hehe ty guys for responding to this thread, some of the posts above have given me a more clear perspective on the matter, the question is something that does need to be asked more by unaware people like myself, the main reason as stated above by someone is really just me being worried about the time, effort and money spent on this project, as far as im concerned im quite happy for the website with the reverse name to stick around and even come up in search engines along side me when the key words are typed, to me its never going to be a problem so i cant see why it would with them , because the more ive looked into it our sites are so different for what they actually do. i dont think people would confuse them as they would be listed as two totally different kinds of websites straight away in google in terms of what they offer to there users,
ty all for responding. i will defo stick around on these forums for a while, seems quite good

 

[alien51]

Surely UDRP panelists also follow law just like a judge would?

btw, anyone knows which country's law do the panelist follow? or is international law?

OR is there a separate law book for UDRP?

You can check this URL:

http://www.wipo.int/amc/en/domains/guide/

the question is something that does need to be asked more by unaware people like myself, the main reason as stated above by someone is really just me being worried about the time, effort and money spent on this project

I own a similar e-commerce website myself with the same issue.

For hypothetical example, the guy owns "Tickets Online", then i own "Online Tickets", and we are both in the ticketing business. He has a TM. I don't.

But i made every effort to put a unique logo on my website, with my domain name styled in a unique font. The look-and-feel of the website design is different. And the name of the company running my website is clearly displayed in bold fonts.

You just have to run down on your website the rules that the wipo uses in judging udrps: (1) confusingly similar name; (2) no legitimate use; and (3) bad faith reg.

You also have to know that there is no way you can stop anyone from suing you for anything and whatever reason. But if you feel your brand is legit and is giving you legit income, then it is inevitable that you have to set aside some money when the time comes for you to pay a trademark lawyer to defend your fort.

 

[Name Trader]

So you're saying you immediately surrendered with your white flag just because the other guy has the same name as yours?

read my lips. I said I won the case. But I did agree the domains were confusingly similar because they were identical apart from the ext. But I learned my lesson. I will never admit to any domain being confusingly similar ever again, if I want a reverse hijacking decision out of the panelist.

---------- Post added at 08:53 AM ---------- Previous post was at 08:47 AM ----------

Surely UDRP panelists also follow law just like a judge would?

They interpret the rules just like a judge would/might follow the law. Look at all the single panelist decisions where they have decided you can lose your domain if it is registered OR used in bad faith. Whereas the rules as agreed by ICANN, clearly state that it must be registered AND used in bad faith.

---------- Post added at 08:57 AM ---------- Previous post was at 08:53 AM ----------

You also have to know that there is no way you can stop anyone from suing you for anything and whatever reason.

This is equally true for somebody filing a URDP claim against you, and you getting assigned a rogue panelist who doesn't follow the rules.

 

[alien51]

read my lips. I said I won the case.

Oh, ok. I thought when you said "Success!", it was for the other guy. lol

But I did agree the domains were confusingly similar because they were identical apart from the ext.

Come to think of it, why would they launch multiple TLDs if people have no right to use them if they are generic brands?

It would have to boil down to the "usage". Which is the dilemma faced by Domainers, because domainers are "practically" just squatting on names and not really using them. Which is why domainers are often pinned against the wall on the subject of "no legitimate use" and "bad faith".

But I learned my lesson. I will never admit to any domain being confusingly similar ever again, if I want a reverse hijacking decision out of the panelist.

Yes, because in UDRPs, the "burden of proof" is always on the Complainant. If the complaint is weak, you don't even need to offer a defense.

In a court setting, it's like the defense not calling any witnesses, because it is clear the accusation has no legs.

This is equally true for somebody filing a URDP claim against you, and you getting assigned a rogue panelist who doesn't follow the rules.

I probably would have to say, to set aside enough money to pay for a 3-Panel judge.

 

[Name Trader]

I think the "no legitimate use" is easy to defend. I'm a domainer I buy and sell domain names as part of my business. So I have a legitimate use for the domain and have it parked/for sale as part of my business. (or something to that effect). It works. Provided their is no infringement.

The bad faith largely depends on the arguments used against you. Which the complainant has to prove, not just claim.