All Questions in Domain Names >> URL deceptively similar?

URL deceptively similar?

Posted by . updated on 11/11/2009
I own the domain www.petsits.com for my group Professional United Pet Sitters.

Another organization that has been around for a long time has threatened to sue me today, because their website address is www.petsit.com .  Their federally trademarked name is Pet Sitters International.  

They have told me they are taking legal action because my address is deceptively similar to theirs.  

I believe the words "pet sit" and "pet sits" are generic descriptors of the industry, and they have little claim to them (We are both associations for business owners who provide petsits) and I know they have no trademark on them.   I also have disclaimers on my site that we are not associated in any way with them or other pet sitter groups.

So my questions are a) does that sound correct? and b) how much may cost me to defend myself against something like this?  Is it possible to sue for lawyer fees if I win my case, or is that just silly?  Any suggestions?
Answers (8)
 
Wolfcastle
This isn't an answer, but after a bit of looking I noticed that the pharma company Bayer seems to have: http://www.Petsitters.com , http://wwwPetsitters.net , http://wwwPetsits.net , and http://wwwbestpetz.com from a lawsuit they won against someone selling foreign diverted pet medications. See any of the websites for details. Have you tried contacting Bayer to see if they are willing to sell those domain names?
 
 
Isaac
Buying a domain name really wouldn't help resolve the issue.  It really does not matter where you get the domain name from.
 
 
Kelley
Quote
See any of the websites for details. Have you tried contacting Bayer to see if they are willing to sell those domain names?


Yep back when I started I did ask bayer if they'd be willing to sell.  But they never responded.  I've heard others have asked also, but not gotten a response.
 
 
Wolfcastle
I whole heartly agree buying another domain won't do anything for the current situation, but in my opinion, petsitters.com is just a better name than petsits.com.

Anyways, here are two pages you may be interested in:

http://www.icann.org/

and

http://www.arbforum.com/domains/decisions/96585.htm

 
 
kelley
Thanks for the past arbitration examples!

I currently have a number of members (maybe 100?) who have signed up for the free alias (____@petsits.com) and use it on their business advertising, so changing my domain to something else would be detrimental to their businesses.  I want to avoid that if possible.

I think the claimant had someone call me yesterday and pretend to be confused (like she looked up the group by the wrong domain name).  I was open and honest at telling her I wasn't the group she was looking for, and gave her the address of that group.  I HOPE that was the 'right' answer!

 
 
JSonnabend
Quote
I was open and honest at telling her I wasn't the group she was looking for, and gave her the address of that group.

That was absolutely the right answer.  Whether or not it's enough is another question.

The good faith use of confusingly similar domain names isn't really addressed by ACPA or UDRP proceedings, generally speaking.  The other party may very well be left with a "straight" trademark infringement cause of action.  In that case, the inquiry boils down, in large part, to who was using what first and where.

You may want to have a qualified TM attorney respond for you to get these guys off your back.  I handle these types of matters routinely, as do others here, I believe.

- Jeff
 
 
Kelley
I am looking into getting attorney (and probably will contact you soon), especially if she pursues this.  

For a straight trademark lawsuit, what does she have to prove if she doesn't have the words in the URL actually trademarked?   Her trademark is for Pet Sitters International, but her debated website address is petsit.com

My arguement is that Pet Sit is a very generic term describing the industry, and not covered by trademark law.  Is that arguement reasonable?
 
 
JSonnabend
You're thinking in the right direction (if that's a permissible metaphor).  The domain name in and of itself is not a trademark -- she has to use the domain in a separate trademark capacity for it to qualify.

Whichever trademark attorney you contact will (or at least should) be able to explain the ins-and-outs of all this to you pretty quickly.  

- Jeff
 

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