A couple of months ago, we were minding our own business, concentrating on all the tasks required for running a small, successful business.
Our systems were in place, a steady amount of files was coming in, and the number of short sales closing each month was increasing. It was feeling like things were under control.
Under control? Hmm, I am learning that can be a false sense of security! Because ever so quickly, something can happen, which will cause you to have to scramble. And that is what happened the day the phone call came in. Before I could even say the words, “Hello, how may I help you?” A woman was yelling at me for violating her trademark and insisting that we take down our website immediately and cease using our domain name! There was no introduction, no explanation, no trying to compromise or work things out. A cage door had been opened and a rabid dog had been let loose. And all I could do at the moment was to try not to get bit! Finally, when the attack was over, I told her to send me the information so I could figure out what this was all about.
Here’s the background … In 2008, we purchased a domain name (shortsales4you.net) for our new company. This domain name was not the same as our company name since it was already taken, but (at the time) we thought it was clever and it would work for us. We put up a website and have been growing & building ever since.
Well, apparently, also in 2008, a company by the name of Short Sales 4U (located in another state) was also started. They had a head start by one month as they opened in September and, while we had been operating unofficially since 2007, we didn’t actually launch our business until October 2008. She then trademarked the name in June of 2009.
Were we contacted or notified of this trademark? No. Were we told we were in violation? Not at all! Did we ever receive a single phone call or email mistaking us for this other company? Never!! And so for the last four years we have been operating oblivious of being in violation of anything!
Well, as reasoning with this person was obviously NOT going to work, and according to the letter she sent us stating that we would owe her $750,000 if we didn’t take down the website (although she did make us the offer that for a mere $5,000 to $10,000 per year she would consider selling us the rights to use her name!), the next step was having to “lawyer-up” to find out how to handle this. And so we contacted an IP (Intellectual Property) attorney.
Bottom line analysis:
- Question #1: Were we in violation of her trademark? Well, while our domain name was not spelled exactly as her company name, trademark law does include phonetic spellings. So because it “sounds” the same, it does violate the trademark (that is, if the trademark were to be upheld).
- Question #2: Based on our company history, could we fight this battle and win the right to retain our domain name? You betcha! We could probably show prior use and as such, keep the name. However the more important question was …
- Question #3: Is the cost, especially in legal fees, for this fight worth it? You probably already know the answer to that! The reality for us was that as time went on, we really didn’t like our domain name! It was hard to explain and we always had to spell it out. Not to mention, our website/SEO guy hated it, so as soon as he heard about this problem, he was quick to tell us to get rid of it (and then gave us instructions for what he wanted in our new domain name … let me tell you how difficult that was to find!!) Fortunately, we never included the old name in our branding or marketing taglines!
So that is the reason we decided to shut down the old domain, and start afresh with the new.
Did that other gal “win”? Maybe. However if her goal was to get a yearly income from us then she is out of luck.
Did we truly lose? Funny, I can’t tell you how many people were disappointed that we chose not to fight! Seems like nobody likes to see the big bully win! But we really are too busy trying to build and improve our business than to expend our energies on this. The reality is that we were given the opportunity to fix something we truly didn’t like. So instead we will concentrate on living up to our new domain name, so our clients know what to expect when they hire our company.
Pretty good, huh?