Domain Name Problem - Competitior

Buttercake

Hi Folks,

I have a registered business name: abclimited and I own the domain : abclimited.ie , its a very sought after domain in my industry

We go to great lengths to protect our business name and have over 20 domains like: abc-limited.ie abclimited.com/.net/.org etc etc

We have a new guy on the scene who has registsred
abclimiteddirect.ie adding direct to the end of the name

The strange thing is that its a Discretionary Name and not a registered business name? hes not a group or an association etc

Can I take any action against him? and why did the IEDR allow such a thing to happen, Can I go out and register oireachtasdirect.ie or endkennydirect.ie

thanks in advance

TsuDhoNimh

Buttercake wrote: »

Can I take any action against him?

Owning a registered business name (RBN) gives you little (or no) protection for that name.

You should note that registration of a business name:

does not give protection against duplication of the name;
does not imply that the name will necessarily prove acceptable subsequently as a company name;
does not authorise the use of the name if its use could be prohibited for other reasons. It should not for instance be taken as an indication that no rights (e.g. trade marks rights) exist in the name

If you really want to protect it you'd need to go a lot further either in terms of your business structure (company names have a higher level of protection) or else trademarking the name if that might be appropriate.

Your only real option here is to consider taking a case under 'passing off', however this is a legal minefield and the chances of your success would depend on the specifics (which none of us could advise on).

Buttercake wrote: »

and why did the IEDR allow such a thing to happen

If the person put forward a legitimate case as to why they should be entitled to the domain under the discretionary criteria, the IEDR did their job. None of us could begin to comment on the rights or wrongs of their decision given the limited information provided.

Buttercake wrote: »

Can I go out and register oireachtasdirect.ie or endkennydirect.ie

If you had a legitimate case for owning any domain, you could try.

e.g. If your name happened to be Enda Kenny and you operated a business that had a 'direct' element attached to it I'm fairly sure you'd be able to apply for the latter.

business bloomer

Buttercake wrote: »

We go to great lengths to protect our business name and have over 20 domains like: abc-limited.ie abclimited.com/.net/.org etc etc

To be honest, in terms of SEO, the .IE and .COM would be enough, with the main one to be decided depending on your target market.

Also, I hope you have redirects from the "secondary" domains to the main one, or you're risking to be blacklisted for duplicate content.

By the way, don't worry about the other domains and competitors, focus on 1 domain and do good SEO.

TsuDhoNimh

business bloomer wrote: »

To be honest, in terms of SEO, the .IE and .COM would be enough, with the main one to be decided depending on your target market.

There's no SEO benefit in owning multiple TLDs. The reason you might buy up the various options is to avoid competition trying to pass themselves off as your business, protect your brand and to provide a better user experience should someone type in the ubiquitous '.com' rather than the correct '.ie' (as an example).

business bloomer wrote: »

Also, I hope you have redirects from the "secondary" domains to the main one, or you're risking to be blacklisted for duplicate content.

You're risking confusing your customers, confusing the search engines, spreading out your authority and link juice between multiple non consolidated versions of your content and greatly hurting your digital marketing performance and your brand, but you're not going to get deindexed for it. The 'punishment' for it would simply be in the drop in performance that you'd suffer.

business bloomer wrote: »

By the way, don't worry about the other domains and competitors, focus on 1 domain and do good SEO.

The OP isn't taking any of this action for perceived SEO benefits (correctly), they're doing it for brand protection reasons.

business bloomer

TsuDhoNimh wrote: »

The OP isn't taking any of this action for perceived SEO benefits (correctly), they're doing it for brand protection reasons.

Yes, I got that, what I meant is that if I were to buy domains to "defend" my brand I should purchase hundreds of them.

My point was: if you do good SEO there is no need to purchase .NET, .ORG and domain variations with spelling mistakes.

The right website will still be on position 1 of Google, without having to be afraid of others buying similar domains. Their content will not be relevant to users and to Google, therefore they will never rank higher than the "original" brand website.

mneylon

You *could* dispute the registration, but whether you'd win or not depends a lot on what you have versus what they have in terms of prior rights etc.,

See: http://www.iedr.ie/?q=node/34

TsuDhoNimh

business bloomer wrote: »

Yes, I got that, what I meant is that if I were to buy domains to "defend" my brand I should purchase hundreds of them.

Valid point. In most cases buying up the .com (where available) and the most relevant ccTLD (or ccTLDs where they intend to operate) is enough, but it is a personal decision for each business to make. If a business feels that their brand is valuable enough to warrant going a bit further it's not a 'wrong' decision, it's just a question of how far would they need to go as any slight alteration on the name (such as adding 'direct') can throw up a problem like the one they're now facing.

business bloomer wrote: »

My point was: if you do good SEO there is no need to purchase .NET, .ORG and domain variations with spelling mistakes.

Good SEO doesn't protect a brand from someone registering an alternative TLD and using it for phishing attacks, malware attacks or other nefarious activity that would potentially negatively impact on the brand.

Personally I wouldn't go into a huge number of TLDs, but picking up a handful of the most common when in a financial position to do so isn't something I'd write off as out of hand.

business bloomer wrote: »

The right website will still be on position 1 of Google, without having to be afraid of others buying similar domains. Their content will not be relevant to users and to Google, therefore they will never rank higher than the "original" brand website.

The 'right website' is the one that shows the search engine they provide the best resource for the users and add the most value to the SERP. Whether it's a similar domain or not isn't a big deal (EMDs have dropped in value significantly in the last year or so and will continue to do so). It's more than possible (even easy in some cases) to outrank original brand websites for brand related keyphrases if you know what you're doing, so saying they'll "never rank higher" is just false (though you won't outrank a brand simply by having a similar to original brand domain name).

As an example, how many times have you searched for a specific brand and found an amazon or wikipedia page outranking it?

Blacknight wrote: »

You *could* dispute the registration, but whether you'd win or not depends a lot on what you have versus what they have in terms of prior rights etc.,

Out of interest (obviously you can't speak in relation to the OP given that we don't know the specifics in relation to their domain and the competitors right to the new domain), is this dispute mechanism something that often turns over IEDR decisions? Are they very defensive on protecting their original call or are they fairly open at overturning decisions if it seems like the criteria (seems like it's mainly 1.1 that's relevant) aren't met?

mneylon

TsuDhoNimh wrote: »

Out of interest (obviously you can't speak in relation to the OP given that we don't know the specifics in relation to their domain and the competitors right to the new domain), is this dispute mechanism something that often turns over IEDR decisions? Are they very defensive on protecting their original call or are they fairly open at overturning decisions if it seems like the criteria (seems like it's mainly 1.1 that's relevant) aren't met?

The dispute process is run by WIPO, who are one of the dispute providers for gTLDs (com / net / org etc)

See: http://www.wipo.int/amc/en/domains/cctld/ie/index.html

You'll see the past decisions here: http://www.wipo.int/amc/en/domains/decisionsx/index-cctld.html

So IEDR don't have any say in the dispute process - they have essentially outsourced it to a neutral 3rd party and will apply the decisions from WIPO

utyh2ikcq9z76b

why not just offer them a few quid for it, could possibly be the cheapest option

Axwell

Because you arent technically allowed to buy a .ie domain name off someone else.

Buttercake

TsuDhoNimh wrote: »

The OP isn't taking any of this action for perceived SEO benefits (correctly), they're doing it for brand protection reasons.

Thank you TsuDhoNimh for your responses, its nothing to do with SEO, it is for brand protection

Hezekiah Famous Mummy wrote: »

why not just offer them a few quid for it, could possibly be the cheapest option

We cant buy the .ie without buying their business and we cant risk them or someone else doing this again with the aim of making money

Blacknight wrote: »

The dispute process is run by WIPO, who are one of the dispute providers for gTLDs (com / net / org etc)

So IEDR don't have any say in the dispute process - they have essentially outsourced it to a neutral 3rd party and will apply the decisions from WIPO

Thanks Blacknight, the IEDR are their usual unhelpful self and passing the buck seems to be all they will do. They suggested WIPO as the only solution and it costs €1,500

I understand that we do not have a trademark, we tried in the past to trademark but a city is used in our domain name so we can't trademark that.

If these guys had an RBN then i wouldn't have(much) of a problem, the fact is they registered it as a "Discretionary Name" is my issue

The Discretionary Naming Policy states:
3.10: Where the proposed name is in the opinion of the naming authority likely to lead to confusion, or is likely to be subject to an administrative proceeding under the Dispute Resolution Policy, another name shall be chosen.

The Dispute Resolution policy:

2.1.3 where the Registrant has registered or is using the domain name primarily for the purpose of interfering with or disrupting the business of the Complainant; or
2.1.4 where the Registrant has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a Protected Identifier in which the Complainant has rights; 

So as these guys did, I could register oireachtasdirect.ie and send in a letter saying that I want it, the IEDR seem to be processing domains without any due diligence on their side.

We have been in touch with our solicitor who is sending a letter requesting the website to be removed

mneylon

Buttercake wrote: »

We cant buy the .ie without buying their business and we cant risk them or someone else doing this again with the aim of making money

That's not exactly true
You can reach an agreement for the transfer/ update of the domain holder without having to acquire the business

Buttercake wrote: »

Thanks Blacknight, the IEDR are their usual unhelpful self and passing the buck seems to be all they will do.

I think you misunderstand the situation

The domain is fully registered therefore if you have an issue with it and want to resolve it you need to use the dispute policy. IEDR cannot help you directly and to do so would be to put them in conflict with their own policies and processes

Buttercake wrote: »

They suggested WIPO as the only solution and it costs €1,500

Yes - that is the dispute resolution process for .ie domain names

Buttercake wrote: »

So as these guys did, I could register oireachtasdirect.ie and send in a letter saying that I want it, the IEDR seem to be processing domains without any due diligence on their side.

Again I think you have misunderstood how things work

The IEDR have policies governing domain name registration.

If someone wants to register a domain name they must do so in line with those policies.

It is not up to the domain name registry operator to conduct "due diligence" - their role is to see if the domain name registration complies with their rules and procedures

If the domain in question had been registered under .com then it would be a case for a UDRP as well

Just because it's under .ie people seem to assume that the "first come first served" concept does not apply
It does

The registrant of the domain name was able to satisfy the policy requirements

Buttercake wrote: »

We have been in touch with our solicitor who is sending a letter requesting the website to be removed

Which may or may not work. Depending on what "rights" you are relying on ..

Buttercake

Blacknight wrote: »

The registrant of the domain name was able to satisfy the policy requirements

The naming policy says:
3.10: Where the proposed name is in the opinion of the naming authority likely to lead to confusion, or is likely to be subject to an administrative proceeding under the Dispute Resolution Policy, another name shall be chosen.

It seems that by faxing in a letter saying that they want the domain as a discretionary name, its automatically registered... therefore I can register blacknightdirect.ie and setup a hosting company without any need to register the business name and fax a letter saying that I want it and then its mine?

blue4ever

If they have followed the points below - they are within the rules (not to say that the rules as stated below are a bit loose IMO)

Category 11: Discretionary Name

Requirements:

A signed letter on headed paper from a bank manager, firm of chartered accountant(s), registered auditor(s), tax consultant(s), where the tax advisor identification number is displayed on the letterhead, or relevant professional body/association or solicitor(s) confirming the applicants eligibility and claim on the proposed domain name.
High quality brochure/promotional material or other demonstration of significant investment in the project, expo, or event may be sufficient.
Where the applicant is a natural person: The applicant must provide adequate documentary evidence of a correspondence address within the 32 counties of Ireland and the applicant's legal name. Acceptable documentation would include a copy of the applicant's passport, birth certificate or citizenship certificate.
Where the applicant is a sole trader: Documentation to show that the applicant is trading in Ireland. A copy of a VAT registration certificate or a signed letter on headed paper from an Irish bank manager, firm of chartered accountant(s), registered auditor(s), tax consultant(s), where the tax advisor identification number is displayed on the letterhead, or solicitor(s) confirming that the person (sole trader) is currently trading in Ireland.
Any other supporting documentation that the Registry deems acceptable. Information supporting the "reasonable connection" maybe requested at the discretion of the IEDR.

Buttercake

Thansk blue4ever

Ok well they dont have any of this, unless its made up because they are not vat registered and operate a cash business
A signed letter on headed paper from a bank manager, firm of chartered accountant(s), registered auditor(s), tax consultant(s), where the tax advisor identification number is displayed on the letterhead, or relevant professional body/association or solicitor(s) confirming the applicants eligibility and claim on the proposed domain name.

The name they registered is not a personal name so this is ruled out too
Where the applicant is a natural person: The applicant must provide adequate documentary evidence of a correspondence address within the 32 counties of Ireland and the applicant's legal name. Acceptable documentation would include a copy of the applicant's passport, birth certificate or citizenship certificate.

They are not a sole trader, partnership or limited company or vat registered so this is ruled out as well
Where the applicant is a sole trader: Documentation to show that the applicant is trading in Ireland. A copy of a VAT registration certificate or a signed letter on headed paper from an Irish bank manager, firm of chartered accountant(s), registered auditor(s), tax consultant(s), where the tax advisor identification number is displayed on the letterhead, or solicitor(s) confirming that the person (sole trader) is currently trading in Ireland.

This seems to have done it - "reasonable connection" they have been using a different business name for a year (not RBN registered, .com website), discover us and think we want this domain
Any other supporting documentation that the Registry deems acceptable. Information supporting the "reasonable connection" maybe requested at the discretion of the IEDR

I have a reasonable connection with Tesco, I shop there, so i should register tescodirect.ie

TsuDhoNimh

You might want to take a step back from this a little Buttercake. The responses seem more personal than professional, so you're potentially not thinking of them objectively.

Ok well they dont have any of this, unless its made up because they are not vat registered and operate a cash business
VAT registration is to do with a threshold of turnover, nothing to do with whether or not someone is conducting business legally or whether or not they're eligible for a domain name. Irrelevant.

Paying for something in cash is the customers prerogative. As long as accurate and honest returns are made at the end of the year there's no problem at all operating on a cash basis. Irrelevant.

It's quite possible that they had a bank manager, accountant or other professional party confirm their eligibility for the claim. Without further information there's nothing to suggest they couldn't/didn't meet this requirement.

They are not a sole trader, partnership or limited company or vat registered so this is ruled out as well
How do you know they're not a sole trader? They have to be one of the above (or some relevant business structure) if they're trading, even if it's simply by default.

To register as self employed I simply need to fill out a form and send it to Revenue. It's a private document that you wouldn't have any right to access.

Perhaps you mean they don't have a registered business name? That's different to not being a 'sole trader', but perhaps it's relevant as they legally must have a RBN if trading as anything other than their own names. Again, nothing to suggest they couldn't fully comply with this requirement.

This seems to have done it - "reasonable connection" they have been using a different business name for a year (not RBN registered, .com website), discover us and think we want this domain
At this point you're simply guessing, which really won't help when it comes to gathering relevant information and putting a case together on why they shouldn't have the domain.

You either need to think about it objectively and with a clear head or you'll end up tackling the situation in completely the wrong way.

Buttercake wrote: »

I have a reasonable connection with Tesco, I shop there, so i should register tescodirect.ie

I'd be fairly sure that Tesco have their brand trademarked, so you'd fail horribly in the attempt.

If you want to feel hard done by, that the IEDR is out to get you and sit making silly analogies that are completely irrelevant and of no benefit to you or your current issue, fine. Knock yourself out. If you'd like to ask questions that might help, that would seem like a far better idea.

Buttercake

thanks TsuDhoNimh, anything said its out of frustration and not intended to be personal in any respect, if its taken that way i do apologize.

I made ridiculous analogies because IMO its a ridiculous process, if this was a .com i wouldn't care because i know its free reign and anyone can register .com domains.

I do appreciate the points made and my issue is with the IEDR not anyone else, it just seems that what the IEDR do, no one has any recourse unless they pay 1,500 out to an appeal which not many people can afford to do.

Its more frustrating that someone, a competitor, is able to do this which is an attempt to confuse the public and will work in their favour. As i said in the orignal post we do so much to protect ourselves with domains and we cant think of every prefix to register. We have left it with our solicitor who will deal with it, he has suggested that passing off would be the only way to go. Thanks again for all help

mneylon

Buttercake wrote: »

It seems that by faxing in a letter saying that they want the domain as a discretionary name, its automatically registered... therefore I can register blacknightdirect.ie and setup a hosting company without any need to register the business name and fax a letter saying that I want it and then its mine?

Yes
And then you'd have to deal with our lawyers and / or a dispute with WIPO

mneylon

Buttercake wrote: »

I made ridiculous analogies because IMO its a ridiculous process, if this was a .com i wouldn't care because i know its free reign and anyone can register .com domains.

And the same is true of most other domain extensions including .ie

You seem to be operating on the basis that the IEDR are going to conduct some extra checks that are completely out of scope

Buttercake wrote: »

I do appreciate the points made and my issue is with the IEDR not anyone else, it just seems that what the IEDR do, no one has any recourse unless they pay 1,500 out to an appeal which not many people can afford to do.

I'm a bit confused by this

The IEDR has a dispute resolution process. It is operated by a neutral 3rd party - WIPO. This is a good thing. It means its run objectively.

You may think that paying 1500 euro for it is too much, but you are not obliged to use it if you feel that going down the legal route will work better for you (though tbh I suspect that will cost you more than 1500 euro .. )

Buttercake wrote: »

Its more frustrating that someone, a competitor, is able to do this which is an attempt to confuse the public and will work in their favour. As i said in the orignal post we do so much to protect ourselves with domains and we cant think of every prefix to register.

If you take your brand seriously then why don't you have registered trademarks?

If you take your brand seriously you will run into this kind of situation if your brand is big enough to be noticed.

Buttercake wrote: »

We have left it with our solicitor who will deal with it, he has suggested that passing off would be the only way to go. Thanks again for all help

If the domain name and site is being used solely to trade off your "good name" etc., then he'd be right.

Buttercake

Blacknight wrote: »

Yes
And then you'd have to deal with our lawyers and / or a dispute with WIPO

But if I follow the naming policy, get my bank manager to write a letter to say i should have blacknightdirect and its not a trademarked then i should own it? I've followed the naming policy, therefore its my domain

would you not be aggrieved with the IEDR that something like this, can/could happen so simply? and then have to pay 1,500 just to get it sanctioned? while the other guy does nothing.

We cannot trademark our name because we have a town name in our title.

Disclaimer: I'm purely making my points which are primarily out of frustration. The above is an example and I'm not been flippant; i am a very happy customer of Blacknight solutions and have been for the past 5 years :)

TsuDhoNimh

Buttercake wrote: »

thanks TsuDhoNimh, anything said its out of frustration and not intended to be personal in any respect, if its taken that way i do apologize.

Just to be clear, I don't feel it's personal against me (or any other poster)... just that it looks like you're taking the IEDRs decision to grant it as a personal attack against you/your business.

I completely understand your frustration (thankfully I've never experienced it, but I get why it'd cause you to feel the way you do), I'm just aware that letting emotions take hold when it comes to making business decisions isn't a good way to go.

Buttercake wrote: »

We have left it with our solicitor who will deal with it, he has suggested that passing off would be the only way to go.

On the surface, it does appear like 'passing off' is a relevant concern. Having said that, it's hard for any of us to comment when we don't know the specifics. You mentioned that the domain in question contains a town name, so that certainly makes it harder to 'fight'. Assuming the rest of the name doesn't contain anything 'unique' (e.g. if it's a generic term mixed with the town name, 'dublincakes' for example), you may be fighting an uphill battle with little or no light at the end of the tunnel.

Buttercake wrote: »

But if I follow the naming policy, get my bank manager to write a letter to say i should have blacknightdirect and its not a trademarked then i should own it? I've followed the naming policy, therefore its my domain

Yes... and no.

Blacknight is a company name. As such it comes with a certain level of protection above and beyond what you would have for your RBN.

If you had a genuine case for it to be relevant to your business then I'd strongly feel you would be able to pursue that name, but as the term in question is relatively unique I couldn't see anyway in which you'd be able to pursue it in that example (however one of the previous examples given, endakennydirect.ie, you certainly would have a genuine case to pursue if that happened to be your name).

Buttercake

I can see your point and been objective to the situation I'm in, I thank everyone for their posting.

I'm sure if this happened to anyone else frustration and emotion will cloud any rational thinking but thats what happens.

It seems that I have no recourse at all and in fact, I should have been doing more to protect my business (we are a limited company, we have 2 RBNs registered to our company) and I cant trademark my business name so the onus is on me.

As I stated my issue is with the IEDR, fobbing you off and telling you the only solution is to splash out 1,500 for 3 guys in Switzerland to go "Well yes this domain should not have been registered" Does the IEDR get fined for allowing someone to breach their naming policy? nope, does the competitor who registered it get fined? nope - instead I have to pay out, does that sound fair? -

Also if someone has only a RBN and is not a Ltd, it should offer them some sort of protection to their business, they went out and registered it, they are also probably using it for banking/tax purposes and if someone comes along and thinks "I like that name, I'll just change it a bit for my own website" then they should be able to appeal it - whats the point in having to register RBNs if we can all use the discretionary name policy and get letters of our bank manager/accountant/solicitor instead of going to the CRO

There needs to be an appeal system between the complainant and the IEDR, if not satisfactory then the WIPO, thats all my point is (and also the naming policy itself). If I did register endakennydirect.ie and put up a dating site do you think the enda kenny would go to the WIPO and wait for a hearing?

Peterdalkey

OP you are not going to love this? 1500 quid would go nowhere in terms of taking legal proceedings for "passing Off" or deception and you may well have a very good legal case for this. As a compromise, might I suggest that you send them a solicitors "cease and desist" letter. If they are just chancers and not real business people, it could well scare them off. It is the result that is the end, not the means!

cheers

Peter