trade mark and someone stealing your website name

[huggytree]

some of you know my company name here....please dont bring it up so the offender cant do a websearch and find what im thinking!!!

so i own the trade mark for my business name....my comany is named after a large city...so its generic..... the State of WI let me trademark it...so i own it

a competitor has taken website adress and added the word 'service' onto the end of it....which i DO NOT think is a big deal

but inside their website their actual company name isnt listed....they are calling themselves my company name with the word 'service' after it.....when i called their phone number they do not answer it as their actual company name....just 'dave the plumber'....which happens to also be MY NAME

i would not have any issues if they just listed their company as who they actually are....they are trying to muddy the playing field

i sent them a letter telling them to delete or change their website within 14 days or i will be contacting a trademark lawyer. then i finished my letter with 'your website should tell your potential customers who you actually are'

do i have a case? anyone with any experience here?

[Harold Mansfield]

some of you know my company name here....please dont bring it up so the offender cant do a websearch and find what im thinking!!!

so i own the trade mark for my business name....my comany is named after a large city...so its generic..... the State of WI let me trademark it...so i own it

a competitor has taken website adress and added the word 'service' onto the end of it....which i DO NOT think is a big deal

but inside their website their actual company name isnt listed....they are calling themselves my company name with the word 'service' after it.....when i called their phone number they do not answer it as their actual company name....just 'dave the plumber'....which happens to also be MY NAME

i would not have any issues if they just listed their company as who they actually are....they are trying to muddy the playing field

i sent them a letter telling them to delete or change their website within 14 days or i will be contacting a trademark lawyer. then i finished my letter with 'your website should tell your potential customers who you actually are'

do i have a case? anyone with any experience here?

You may. Seems like they are intentionally trying to deceive people. However, you trademarked specific words. I do think it is completely legal for someone to use "[yourname]services" , especially in the case of using a city name. I don't think you can claim trademark on every variation of it.

However, on the other hand, I see Vegas.com do just that over everything "Las Vegas" or "Vegas" that sells the same products and services that they do. They are also a big media company with a deep team of lawyers, so even if they aren't right, the court battle alone is enough to put most small businesses out of business.

[huggytree]

i agree with you somewhat....thats why i wouldnt go after their domain name/website address

i think by not telling customers who they actually are INSIDE their website they are intentionally decieving people....the proof is how they answer the phone....who doesnt answer their phone with their actual company name?.....it kinda sucks for me that our 1st names are the same too....many customers know me on a 1st name basis......so when they refer me to a friend ill bet they tell them my name is Dave...

i am willing to spend a few thousand on this......now its his turn to decide whether he wants to spend a few thousand defending it....or just simply add his actual name to his website

[Harold Mansfield]

i am willing to spend a few thousand on this......now its his turn to decide whether he wants to spend a few thousand defending it....or just simply add his actual name to his website

That's the way I'd do it. If this is his idea of being in business, I doubt he can afford a court battle. He may fold as soon as your lawyer serves him with notice.

Are you even sure his name is "Dave"?

[MyITGuy]

You may. Seems like they are intentionally trying to deceive people. However, you trademarked specific words. I do think it is completely legal for someone to use "[yourname]services" , especially in the case of using a city name. I don't think you can claim trademark on every variation of it.

While I'm not sure on how the city name would play into it all, I think there is a good case for Trademark infringement here, below are 8 guidelines that the courts tend to look at/base their decision on. #3 would account for slight differences/variations in names, especially when combined with #4


1 - Strength of the mark
2 - Proximity of the goods
3 - Similarity of the marks
4 - Evidence of actual confusion
5 - Marketing channels used
6 - Type of goods and the degree of care likely to be exercised by the purchaser
7 - Defendant's intent in selecting the mark
8 - Likelihood of expansion of the product lines

[MyITGuy]

Are you even sure his name is "Dave"?

Looks like it is, based on another domain I found with his company name and looking up the corporation.

[Harold Mansfield]

You may be able to get him on a technicality with the local contractors licensing board. Maybe there is something in there that contractors must clearly represent who they are and the name of their company.

I did a license search on him and that is NOT the name of his company. You may not be able to do anything about the URL, but it's not unreasonable to assume that the consumer should know who they are actually dealing with.

There's more than one way to skin a cat.

[huggytree]

yes his name is Dave....his actually company name is 'Dave BXYZ Plumbing'

my guess is im probably losing 10%+ to this guy

im hoping my new website will take the first 4+ positions of any websearch....which will put him out to #5+....so it wont matter anymore

if im going to invest $5-7k in a new website im going all out....this issue has bugged me for a year now....its time to settle it



there was another guy...who had my exact same website name, but with .net (stupid me who didnt think enough to get .net before him).....i did some posting here and used actual names.....his website dissapeared a week later....i figured he ran into my posts on him......he was calling himself ME on his website.....no 'service' at the end of the name......thats when i also did the trademark....funny how people cant play fair and win customers on their own merrit

[MyITGuy]

there was another guy...who had my exact same website name, but with .net (stupid me who didnt think enough to get .net before him)

.NET is available now as well as some other domain names people tend to register (.co, .info, .biz, .mobi, .us), so I would suggest grabbing them up ASAP.

On the other hand, someone is now using the .org

[huggytree]

.NET is available now as well as some other domain names people tend to register (.co, .info, .biz, .mobi, .us), so I would suggest grabbing them up ASAP.

On the other hand, someone is now using the .org

grabbing them up will be part of my new website talks today with the web developer

[huggytree]

i checked the local builder associations....he's not a member....so i cant go after him that way

called one of my suppliers/friend......he knows of him...says this issue doesnt surprise him at all....he may have had this issue before.....the supplier said i should copy his name and add 'services' at the end of it!! to give him a taste of his own medicine

[Harold Mansfield]

i checked the local builder associations....he's not a member....so i cant go after him that way

Check the licensing board. He has a contractor's license. There has to be something in the rules about falsely representing yourself or hiding your identity.

[MyITGuy]

Check the licensing board. He has a contractor's license. There has to be something in the rules about falsely representing yourself or hiding your identity.

The website clearly states their contractor and master plumbing license, so its not like he is intentionally hiding.

I do find it interesting that the main phone # displayed on the similar domain name is different from any phone number displayed on their regular site...so they may be trying to guage how much business they are getting from this similar domain to see if its worthwhile or not ;)

[MyITGuy]

grabbing them up will be part of my new website talks today with the web developer

Let me know how it goes...if needed I could always grab them for you and point them to your website.

Additionally, you may want to consider grabbing the variations
City-Service . xxx
City-ServiceLLC . xxx
City-ServiceINC . xxx
cityservicellc . xxx
cityserviceinc . xxx

Granted, all the variations could cost you a couple hundred a year...but it avoids anyone using your name to get business and could avoid a costly lawsuit.

[huggytree]

The website clearly states their contractor and master plumbing license, so its not like he is intentionally hiding.

I do find it interesting that the main phone # displayed on the similar domain name is different from any phone number displayed on their regular site...so they may be trying to guage how much business they are getting from this similar domain to see if its worthwhile or not ;)


they have 3 phone #'s on their regular website...the 3rd one matches the one on the 'bad' version of their website.....at one time they had all the cities w/ the word plumbing after it.....now i notice most of them are gone.....they also use that strategy with the phone book....under the 'city' section they list their company under each city....its definately their strategy....ive tried a bit of it once w/ very poor results......it appears they have given up some of it...just not the part that relates to ME

State of WI law says all advertising MUST include the Master Plumber license.....so thats why they have it on their website....they ARE intentionally hiding who they actually are....if my lawsuit threat letter doesnt work i will call the State of WI to discuss the issue.........unless they have a DBA i think i can win

[huggytree]

Let me know how it goes...if needed I could always grab them for you and point them to your website.

Additionally, you may want to consider grabbing the variations
City-Service . xxx
City-ServiceLLC . xxx
City-ServiceINC . xxx
cityservicellc . xxx
cityserviceinc . xxx

Granted, all the variations could cost you a couple hundred a year...but it avoids anyone using your name to get business and could avoid a costly lawsuit.

its one of those things where if someone wants to use it they will find a way...id have to protect myself from 100 variations......they could throw ANY word after my company name......its a matter of right and wrong here....im willing to spend $5k if need be....just so it costs them $5k to protect it in return

[huggytree]

the other plumber finally called me today

basically said i have no legal case....and that 'someday' he will add his real name to the bottom of the web page

he admitts he has had several companies threaten legal action against his practices....and doesnt want to pay $1,000 to change all his different websites right now, but when it gets updates 'someday' he will add his name 'somewhere'

so i called a lawyer....he is looking into it all....legal letter $300 + i may have a case with it being a Cyber Squatter....

to file a complaint===$1000-$2000 and that means the other plumber would have to spend similar amounts to fight it.....i cant see him doing so

im waiting to hear back from the lawyer to see if i should proceed

[MyITGuy]

the other plumber finally called me today

basically said i have no legal case....and that 'someday' he will add his real name to the bottom of the web page

he admitts he has had several companies threaten legal action against his practices....and doesnt want to pay $1,000 to change all his different websites right now, but when it gets updates 'someday' he will add his name 'somewhere'

so i called a lawyer....he is looking into it all....legal letter $300 + i may have a case with it being a Cyber Squatter....

to file a complaint===$1000-$2000 and that means the other plumber would have to spend similar amounts to fight it.....i cant see him doing so

im waiting to hear back from the lawyer to see if i should proceed

The C&D Letter from an attorney sometimes does the trick. If he can't spend $1,000 or so to update his websites to include the name, then he likely isn't going to pay hundreds of dollars an hour to defend it (Some attorneys I've spoken with have a minimum of $5K to work the case before it goes to court).

I personally took on one of the top rated intellectual property attorneys here in FL, and after two weeks of going back and forth the other company eventually changed their name and dropped the domains.

[huggytree]

my issue is if i pay $1000-2000 to start the legal process what stops him from fixing the website and then creating a NEW one under a slightly different name? maybe costing me $1000-2000 again?

this guy is a POS.....when multiple companies are threatening him over his websites its obvious his business is based upon stealing a tiny bit from everyone else...instead of making his own brand

i got somewhat angry with him today.....it was like talking to a wall.....he BS'd me about a few things ..i called him out on all of them....i dont know why he called me....all it did was make me more determined

he was trying to make friends with me.....telling me that we met once ( i dont remember it)....then telling me he has sent me 12-15 customers (never got 1)...then promising me MORE free work in the future........if he has so much work then why steal from other plumbers websites?....truth? he's struggling and despirate

[thewebwriter]

Report them to BBB. They are showing a BBB logo without the link. I think that is a legal infringement. Get the BBB to chase them.

[MyITGuy]

Report them to BBB. They are showing a BBB logo without the link. I think that is a legal infringement. Get the BBB to chase them.

Good point...but probably won't have much of an effect...

If you wanted to pursue this I would look at the following from the BBB Code of Business Practices:


2. Advertise Honestly
Adhere to established standards of advertising and selling.
An accredited business or organization agrees to:
A. Follow federal, state/provincial and local advertising laws.

B. Abide by the BBB Code of Advertising. Supply, upon request, substantiation for advertising and selling claims. Correct advertising and selling practices, when recommended by BBB.

C. Adhere to applicable BBB industry codes of advertising.

D. Cooperate with BBB self-regulatory programs for the resolution of advertising disputes.

E. Use the BBB name and logos in accordance with BBB policy.

F. Avoid misleading customers by creating the false impression of sponsorship, endorsement, popularity, trustworthiness, product quality or business size through the misuse of logos, trustmarks, pictures, testimonials, or other means.

3. Tell the Truth
Honestly represent products and services, including clear and adequate disclosures of all material terms.
An accredited business or organization agrees to:

A. Make known all material facts in both written and verbal representations, remembering that misrepresentation may result not only from direct statements but by omitting or obscuring relevant facts.

B. Ensure that any written materials are readily available, clear, accurate and complete.

4. Be Transparent
Openly identify the nature, location, and ownership of the business, and clearly disclose all policies, guarantees and procedures that bear on a customer’s decision to buy.
An accredited business or organization agrees to:

A. Upon request, provide BBB with all information required to evaluate compliance with BBB standards. This may include, but is not limited to business name, address and contact information; names and background of principals; business and banking references; licensing and/or professional accreditation; and a complete description of the nature of the business.

B. Clearly disclose to customers:

direct and effective means to contact the business
terms of any written contract
any guarantees or warranties accompanying a product
any restrictions or limitations imposed (e.g. limited supply,maximum number available per customer)
the business’ return/refund policy
any recurring commitment into which the customer may be entering, including information on how future billing will occur
total cost of the transaction, including tax, shipping and handling, and other related charges

C. If selling products or providing services on Web sites or via other electronic means:

provide any required product labeling information
disclose the nature and terms of shipping, including any known delays or shortages of stock
provide an opportunity to review and confirm the transaction before the sale is completed
provide a receipt summarizing the transaction after the purchase


As far as the logo itself, they don't appear to be using the approved logo, do not have a reference to the additional name and are not linking to their BBB Page properly:

Simply, adding the logo to your website is not acceptable. Because a company’s website is an extension of their offline operation, BBB will approve companies’ use of the seal online when it has been determined that they meet all standards. The approved Accredited Business seal for use online will and must link to the company’s BBB Reliability Report.

[thewebwriter]

Although their-Name.com is accredited, the site that is in dispute is not. I think that is enough to warrant BBB checking it.

[huggytree]

sure i can play the BBB game

i can poke him .....which will probably make him dig in his heels more

or i can scare him and MAKE him change it or pay $1,000-2000

i doubt the BBB scares anyone...thanks for advice though