.ca problem: Someone bought the .ca of my very active .com local web site - help?

[orange]

Summary:
If I get a lawyer to send a strongly-worded letter to the company who bought the .ca version of my site name, could that hurt my chances if I later try to use the official dispute resolution process?

[in that the lawyer letter could be a warning signal to them, such that they may setup a basic site to make it seem like they didn't buy the domain in bad faith?]



Details:

Since the late 90s, my company has operated a web site for my local city & surrounding area.

The domain of the site is somethingcity.com (where "something" is like web, net, etc.; and city is the city name).

A name like "NetCleveland" is similar to what my site's name is.


The site has grown a lot since about 2002, such that it now has:
- over 5000 registered members
- over 100,000 messages posted per year
- millions of dollars worth of goods/services posted in the classifieds each year

It's very well known in the city, such that it would be practically impossible for anyone involved with local web sites to not know about my site (these guys who bought the .ca version would certainly have known about my site).

So due to this long-running history and popularity, and how it's referred to by its name very often (without the .com), I think it is a common-law trademark.


.ca problem:

Earlier this year, a slimey local computer firm bought the .ca version of my site's name. It's been a few months now, and I was hoping they simply wouldn't use it (and then I could buy it when it expires). But I just noticed that they must have setup a portal script a few days ago (the site is still essentially just a template though).

CIRA (the Canadian Internet Registration Authority) has a dispute resolution process, but it costs $1750 or more (that's partly why I was hoping I could just get the domain at expiry... it's hard for me to afford that).


Questions:

So here's what I'm currently pondering:


1) a) If I get a lawyer to send a strongly-worded letter to them, would that likely work? Does the lawyer have to be from the same province? (e.g. say I'm in Alberta -- can I use an Ontario law firm?)


2) If I get a lawyer to send a letter, could that hurt my chances at the regular CIRA dispute resolution submission (if the letter doesn't work, and I need to pursue that later)?

[in that the lawyer letter could be a warning signal to them, such that they setup some basic site to seem as if they didn't get the domain in bad faith?]

Also, about how much might a lawyer charge for a letter?


3) Would simply suing them perhaps cost less than the CIRA DRP fee of $1750?


4) If I did use the CIRA dispute resolution process, would I likely win?

I know the site name is only the city name + a prefix... but it's very well known in the city, and has operated since the late 90s.


5) Does anyone have any other suggestions for how to proceed?


I'm a fairly experienced domainer (with a large portfolio, although basically for my own development)... I wish I had simply bought the .ca, but didn't, and am stuck with this problem now.


Thanks a lot for any help anyone could provide

 

[DropWizard.com]

Summary:
If I get a lawyer to send a strongly-worded letter to the company who bought the .ca version of my site name, could that hurt my chances if I later try to use the official dispute resolution process?

[in that the lawyer letter could be a warning signal to them, such that they may setup a basic site to make it seem like they didn't buy the domain in bad faith?]



Details:

Since the late 90s, my company has operated a web site for my local city & surrounding area.

The domain of the site is somethingcity.com (where "something" is like web, net, etc.; and city is the city name).

A name like "eCleveland" is similar to what my site's name is.


The site has grown a lot since about 2002, such that it now has:
- over 5000 registered members
- over 100,000 messages posted per year
- millions of dollars worth of goods/services posted in the classifieds each year

It's very well known in the city, such that it would be practically impossible for anyone involved with local web sites to not know about my site (these guys who bought the .ca version would certainly have known about my site).

So due to this long-running history and popularity, and how it's referred to by its name very often (without the .com), I think it is a common-law trademark.


.ca problem:

Earlier this year, a slimey local computer firm bought the .ca version of my site's name. It's been a few months now, and I was hoping they simply wouldn't use it (and then I could buy it when it expires). But I just noticed that they must have setup a portal script a few days ago (the site is still essentially just a template though).

CIRA (the Canadian Internet Registration Authority) has a dispute resolution process, but it costs $1750 or more (that's partly why I was hoping I could just get the domain at expiry... it's hard for me to afford that).


Questions:

So here's what I'm currently pondering:


1) a) If I get a lawyer to send a strongly-worded letter to them, would that likely work? Does the lawyer have to be from the same province? (e.g. say I'm in Alberta -- can I use an Ontario law firm?)


2) If I get a lawyer to send a letter, could that hurt my chances at the regular CIRA dispute resolution submission (if the letter doesn't work, and I need to pursue that later)?

[in that the lawyer letter could be a warning signal to them, such that they setup some basic site to seem as if they didn't get the domain in bad faith?]

Also, about how much might a lawyer charge for a letter?


3) Would simply suing them perhaps cost less than the CIRA DRP fee of $1750?


4) If I did use the CIRA dispute resolution process, would I likely win?

I know the site name is only the city name + a prefix... but it's very well known in the city, and has operated since the late 90s.


5) Does anyone have any other suggestions for how to proceed?


I'm a fairly experienced domainer (with a large portfolio, although basically for my own development)... I wish I had simply bought the .ca, but didn't, and am stuck with this problem now.


Thanks a lot for any help anyone could provide

You don't indicate what prefix you're using but a name like say webvancouver isn't particularily unique as it involves two very common words. And common law rights only involve the local area you trade in. ( at least that's my understanding).

I would approach the owners anonymously and attempt to buy the domain as most .ca's can be bought for less than $1750. If that doesn't work then a lawyers letter MAY scare them into giving it up but lots of time it gets people's backs up and then you'll get nowhere.

You can try suing but that will set you back a good 4 figure balance right off the bat.

I don't sense you are in a good legal situation with this. But then I'm not a lawyer:tape:

 

[whitebark]

Have you contacted them at all? Make an offer to buy it but don't let them know who you are(owner of other website). Like DropWizard said, at a decent price they will probably let it go without a fight, and that will save you lots of time and headaches. And yes, you should have registered the .ca. Now are you going to have the same problem with .info, .net etc? If so, better to buy them all if possible.

 

[orange]

Thanks very much for your comments to both of you -- much appreciated

You don't indicate what prefix you're using but a name like say webvancouver isn't particularily unique as it involves two very common words. And common law rights only involve the local area you trade in. ( at least that's my understanding).

Yeah, that's partly my worry... it's just a prefix + the city name. But in the local area of the city + region, it is a very well-known site (I'd guestimate that 25-35% (or more) of web users in the city have heard about the site at some time).

I didn't mention the name here because I'm afraid of the squatters googling it later, or of the .ca version getting unusual traffic due to a mention here.

I would approach the owners anonymously and attempt to buy the domain as most .ca's can be bought for less than $1750. If that doesn't work then a lawyers letter MAY scare them into giving it up but lots of time it gets people's backs up and then you'll get nowhere.

You can try suing but that will set you back a good 4 figure balance right off the bat.

I don't sense you are in a good legal situation with this. But then I'm not a lawyer:tape:

Hmm, yeah, that's true I should have gotten a lawyer to send them a letter earlier, but was hoping they just wouldn't use the site and then I could just catch it at expiration.

I guess I could make an anonymous offer, but I just think it would seem fishy to them and they would realize something was up. The city's not really large, so it's a pretty well-known site given the number of users (I think many other locals have probably surfed at one time or another, simply due to a lack of other good sites for the region).

And these squatter guys would probably know that the only person interested in buying the domain would be me (the .com owner).

So I'm not sure what to do :| Maybe I'll contact the lawyer and have a letter prepped to be sent right away if needed. And I'll make an offer and if they don't accept, then the letter can be sent-off right away.

I guess maybe an offer of CA$200 (?) would be good to start, since they'll probably try asking for twice whatever I offer.

 

[orange]

Have you contacted them at all? Make an offer to buy it but don't let them know who you are(owner of other website). Like DropWizard said, at a decent price they will probably let it go without a fight, and that will save you lots of time and headaches. And yes, you should have registered the .ca. Now are you going to have the same problem with .info, .net etc? If so, better to buy them all if possible.

No, haven't contacted them at all yet.

I have a hunch that it could be a site user who didn't like being asked to follow the rules (the rules are mostly just keep within the Adsense ToS and to keep from getting sued).

The squatter (computer company) does a bit of web design too, and they work closely with a used car dealership whose owner signed-up with multiple accounts back in 2004 and pretended to be multiple people, simply in order to badmouth his competitors (the IP address and terrible writing style made his scam obvious across the multiple posts). Because of that, I wouldn't be surprised if these guys are similar :S

Good point about the extensions... they aren't really a problem, but I'll be safe now.

 

[DomainTrader]

So let me see if I have this straight:

You are an experienced domainer with a large portfollio
You live in Canada
And you failed to register the .ca version of your largely popular site
The guys who did register this albeit apparently generic domain are in your words "slimey", "squatters" who HAD to be aware of you....AND these squatter guys would probably know that the only person interested in buying the domain would be you the .com owner.

And your strategy as I understand it is ....."make an offer and if they don't accept, then the letter can be sent-off right away"

You not only have no hope, but apparently no clue either.

Sorry for your luck.

 

[orange]

So let me see if I have this straight:

You are an experienced domainer with a large portfollio
You live in Canada
And you failed to register the .ca version of your largely popular site
The guys who did register this albeit apparently generic domain are in your words "slimey", "squatters" who HAD to be aware of you....AND these squatter guys would probably know that the only person interested in buying the domain would be you the .com owner.

And your strategy as I understand it is ....."make an offer and if they don't accept, then the letter can be sent-off right away"

You not only have no hope, but apparently no clue either.

Sorry for your luck.

Wow, 6 posts since you signed up in 2003, and you bother to post something as pointless as this.

I'd be willing to bet you $25,000 that these guys knew of the site, partly due to their slimeball used car salesman client's behaviour, and based on how other web firms in the region know of the site (and people in general).

And yeah, maybe I shouldn't have used the word slimey without giving all the info, but they have built multiple sites for the used car guy (taking care of almost all his web marketing since 2004), and there are certain other things that make them fit the bill. And it's almost certain that the used car guy would have told them that he was banned from the site.

Given the situation, at least with a lawyer letter prepped before-hand, it can be sent off before they have a chance to react much to an offer (if they reject it).

Anyway, if you have nothing good to add, maybe you should just go back to lurking.

 

[Domagon]

Based on what you have written, litigation is probably the only realistic way to get the domain canceled / transferred to you.

If $1750 or whatever is beyond your means, it may be time to seriously reevaluate your business plan ... effectively protecting a brand costs money - ie. trademark registration(s), proactively registering similar domains, acquiring similar domains in the secondary market, attorney fees / litigation / UDRP, etc.

Lastly, it sounds as if this conflict is somewhat personal - if so, then you may want to have a fallback plan for lost AdSense revenue, if they choose to take revenge - I've read numerous horror stories of webmasters getting kicked off AdSense with little to no recourse based on activity that was outside their control.

Ron

 

[RazorNF]

You'll have to evaluate just how much you are willing to spend to pursue this issue.

You should read up on the existing cases that have gone through the CIRA dispute resolution process - there isn't that many of them and it'll give you an idea of where you stand. If you go this route and you lose, it'll probably give them better footing should you go the legal route later.

And if this conflict between the two of you gets even nastier, I would agree with Domagon, they could start doing things out of spite... abusing your adsense account, or renew the domain for 10 years, and not give it up at any price (or asking for something really ludicrous).

It might even be be better to just be patient and wait it out... if they create a clone of your site, or eventually come to you and offer to sell it, it might give you more of a case.

Or they just might let it expire one day, and you can attempt to get it through a dropcatcher - then use the time from now until then to take the necessary steps to formally establish your trademark, etc.

Plus, I don't think you're losing out that much if as you say, you are serving a small community and everyone is already on it...

 

[DomainTrader]

Wow, 6 posts since you signed up in 2003, and you bother to post something as pointless as this.

I'd be willing to bet you $25,000 that these guys knew of the site, partly due to their slimeball used car salesman client's behaviour, and based on how other web firms in the region know of the site (and people in general).

And yeah, maybe I shouldn't have used the word slimey without giving all the info, but they have built multiple sites for the used car guy (taking care of almost all his web marketing since 2004), and there are certain other things that make them fit the bill. And it's almost certain that the used car guy would have told them that he was banned from the site.

Given the situation, at least with a lawyer letter prepped before-hand, it can be sent off before they have a chance to react much to an offer (if they reject it).

Anyway, if you have nothing good to add, maybe you should just go back to lurking.

What can I say, every once in a while a post comes along which is deserving of a response.

Casting aspersions isn't going to get you the domain and if you think sending them an offer, only to follow it up with either a veiled threat or real legal action when they refuse you is going to work you may want to reaquaint yourself with the meaning of pointless.

 

[JEsports]

I'd be willing to bet you $25,000 that these guys knew of the site, partly due to their slimeball used car salesman client's behaviour, and based on how other web firms in the region know of the site (and people in general).

I agree with Trader here .. this whole story is just stupid. By the way, if your willing to wager the $25,000 that these guys have heard of your highly popular website then you should have no problem forking out the $1800 to pursue "legal" matters.

Bye the way, do you even have a trademark on this highly popular business everyone has already heard of?

 

[Irish31]

.. Ouch.

 

[orange]

What can I say, every once in a while a post comes along which is deserving of a response.

I don't see why you bothered de-lurking only to make snide insults. Even if you wanted to make a point in your posts, you could be a little more tactful about it.

 

[orange]

I agree with Trader here ..

Well, part of the reason I didn't get the .ca was because the site doesn't produce a lot of profit (yet), and monetization seemed much harder a year ago (and I wasn't sure if I'd bother keeping it up in the long-term, despite the traffic). I just kept it online the past few years while working a regular full-time job in a different field to bootstrap a few ventures.

Around when I saw the site's likelihood of success go up was around when these guys bought the .ca (they bought it just before I decided to go and do so).

And about the wager, it's quite certain that they know about the site, for the reasons I stated above.

Bye the way, do you even have a trademark on this highly popular business everyone has already heard of?

In the first post, I already mentioned the reasons why I think it would fall into the "common-law trademark" category.

A good analogy might be ClickOnDetroit.com -- it's one of the largest Detroit web sites, run by a TV station, operating for over 6 years now. But some guy in Florida has bought ClickOnDetroit.us. Say it was a guy in Detroit who only bought the .us a few months ago -- then I'm sure ClickOnDetroit.com could argue that it would be almost impossible for the guy to not have heard of the web site. Especially if he's involved with local web development.

 

[hugegrowth]

You have a few options,

offer a few hundred $ for the name, a take it or leave it offer, if they accept it's over with minimum time and money spent.

you could threaten legal action, and it might scare them into handing over the domain.

if they aren't scared by legal action, then you have to be able to back up the threat by actually paying a lawyer to investigate even if you have a claim, and this could get expensive. is your name trademarked, if not then it would be hard to prove a case, maybe not impossible but harder. .ca disputes are different than .com, from what I've heard it's harder to get a .ca. Microsoft couldn't even get msnsearch.ca in their dispute that was overseen by cira
http://www.onedegree.ca/2005/08/09/three-ca-domain-name-disputes-resolved

Just let it go. who cares if you own the .ca or not? your site seems to have enough members and posts that the .ca version is no threat. sure it would be nice to have it, but you have made it this far without it. the small amount of traffic you might be losing probably doesn't matter

plus, you could also register the names of the other company or owners in .ca to get back at them heh heh

 

[NostraDomainus]

Until you work on your snide and rude attitude, you're better off staying in lurk-mode. Even if you wanted to make a point in your posts, there's a tactful way to do it. But you're obviously lacking in that respect.

Pot calling the kettle black? :S

You make no mention of owning a TM nor provide any evidence that it was infringed upon, yet act like judge and jury to the parties absolute guilt.

2 words for you: Due Diligence

GL w/ any future success - I am sure this will turn out to be a valuable lesson for many.

 

[orange]

Based on what you have written, litigation is probably the only realistic way to get the domain canceled / transferred to you.

If $1750 or whatever is beyond your means, it may be time to seriously reevaluate your business plan ... effectively protecting a brand costs money - ie. trademark registration(s), proactively registering similar domains, acquiring similar domains in the secondary market, attorney fees / litigation / UDRP, etc.

Lastly, it sounds as if this conflict is somewhat personal - if so, then you may want to have a fallback plan for lost AdSense revenue, if they choose to take revenge - I've read numerous horror stories of webmasters getting kicked off AdSense with little to no recourse based on activity that was outside their control.

Ron

Thanks, the comments by you and RazorNF are helpful and much appreciated.

That's true about the $1750... I guess in some ways, the site is kind of like a local craigslist... made a few years ago; it didn't work out at the time; I kind of gave up on it, but it just gradually grew by word of mouth in the past few years. [speaking of craigslist, they even have a problem due to craiglist.com being a porn site]

Thanks for the caution about the AdSense risk too... I hadn't thought of that, and these guys aren't that sophisticated (I wouldn't be surprised if they've never used AdSense or AdWords), but true, maybe it's not worth the risk.

 

[orange]

You'll have to evaluate just how much you are willing to spend to pursue this issue.

You should read up on the existing cases that have gone through the CIRA dispute resolution process - there isn't that many of them and it'll give you an idea of where you stand. If you go this route and you lose, it'll probably give them better footing should you go the legal route later.

And if this conflict between the two of you gets even nastier, I would agree with Domagon, they could start doing things out of spite... abusing your adsense account, or renew the domain for 10 years, and not give it up at any price (or asking for something really ludicrous).

It might even be be better to just be patient and wait it out... if they create a clone of your site, or eventually come to you and offer to sell it, it might give you more of a case.

Or they just might let it expire one day, and you can attempt to get it through a dropcatcher - then use the time from now until then to take the necessary steps to formally establish your trademark, etc.

Plus, I don't think you're losing out that much if as you say, you are serving a small community and everyone is already on it...

Thanks, you make a lot of good points... I might just try and wait it out as you mention.

The main reason I actually want the .ca is to make similar sites for nearby towns, so that they can be like a network (the .com's are impossible to get, but the .ca's aren't). For the .com itself, you're right though, in that a clone likely won't be successful (the first-mover advantage of my site is hard to overcome, since a few other sites with better setups haven't done very well, due to a lack of members).

I'm mostly miffed at these guys taking the .ca because it throws a monkey-wrench into the network idea.

 

[orange]

You have a few options,

offer a few hundred $ for the name, a take it or leave it offer, if they accept it's over with minimum time and money spent.

you could threaten legal action, and it might scare them into handing over the domain.

if they aren't scared by legal action, then you have to be able to back up the threat by actually paying a lawyer to investigate even if you have a claim, and this could get expensive. is your name trademarked, if not then it would be hard to prove a case, maybe not impossible but harder. .ca disputes are different than .com, from what I've heard it's harder to get a .ca. Microsoft couldn't even get msnsearch.ca in their dispute that was overseen by cira
http://www.onedegree.ca/2005/08/09/three-ca-domain-name-disputes-resolved

Just let it go. who cares if you own the .ca or not? your site seems to have enough members and posts that the .ca version is no threat. sure it would be nice to have it, but you have made it this far without it. the small amount of traffic you might be losing probably doesn't matter

Thanks, you make a lot of helpful points too. The msnsearch decision is pretty surprising.

plus, you could also register the names of the other company or owners in .ca to get back at them heh heh

Yeah, I have thought about that (decided it wouldn't help my case though.. plus unfortunately, their business name is a bit long, so they might not care, since they can use variants or probably should ideally have a simpler name instead)

 

[MediaHound]

There goes the universe.

I'm usually HAPPY when someone sets up camp on another extension when I have the .com
Just kick back and enjoy the spillover traffic.