Little Guy Sued Over Generic Name Use

[SeattlePaul]

I own a small "mom and pop" company in Seattle. I do home loans, my wife is the real estate agent who sells the homes. When we started our company two years ago, I went to Overture to see what the top terms were. The top terms were variations on the term "seattle mortgage".

I acquired the domain name "seattle-mortgage-loans.com". With the help of many kind SEO experts here at SearchEngineWatch, I have improved my Google ranking to a PR6 and rank highly for terms such as "seattle mortgage", "seattle mortgage company" "seattle mortgage broker", etc. Our website is where we get most of our business.

I just got a "cease and desist" letter from an attorney representing a large company called Seattle Mortgage. They want me to stop using my domain name and stop using the term "seattle mortgage" in any of my advertising.

Here's what they said. "On behalf of Seattle Mortgage, we demand that you cease and desist from using any mark or company name conaining the words "Seattle" and "mortgage" as its domain name or in any other form that is likely to mislead the public."

Does anyone have any information on how enforceable demands like this are? Can a company really trademark generic names? Where is the case law? What kind of attorney, if any, does a person use for this type of case?

[Gerardism]

Any idea if they are going after every mortgage company in seattle that happen to be using 'seattle mortgage' on their site?

Have you tried contacting the United States Patent and Trademark Office (http://www.uspto.gov/web/menu/feedback.html) and seeing what they have to say on the matter?

[SeattlePaul]

Any idea if they are going after every mortgage company in seattle that happen to be using 'seattle mortgage' on their site?

After posting the thread, I went online and investigated other domain names that were close to mine. Almost all of them were owned by a web hosting company in Portland. This company had nothing to do with mortgages. The law firm that sent the letter is headquartered in Seattle. The letter came from their Portland branch. My guess is they are as upset with them as me. I can't imagine they would try to take on every mortgage company in the Seattle area.

Have you tried contacting the United States Patent and Trademark Office (http://www.uspto.gov/web/menu/feedback.html) and seeing what they have to say on the matter?

I found different legal websites speaking to the topic. The law is murky. Their are clear cut cases where domain name owners use the public's association with famous people or companies to divert profit from the rightful owners. In this case, their claim is that the public associates the generic term "seattle mortgage" with their specific company. That would be like getting a letter from the New York Hotel saying someone could not use either the term "new york" or "hotel" in a domain name or website.

The attorney I spoke to pointed out the real problem. If the large company chooses to sue, I'm afraid I'll be buried in legal costs. He says I might offer to sell them the domain name. They would probably demand I also cease and desist from saying what I do (mortgage loan broker in seattle) on any other website I build. The attorney is going to write a letter. The fact that they are wrong seems to offer no protection at all. What may end up mattering in the end is they have more money for lawyers than I do.

[detlev]

Hi,

I'm no attorney but I think you are protected here. The attorney may just be trying to scare you. I particularly find separating the words "Seattle" and "mortagage" troubling. You can't trademark "Seattle" or "mortgage". I think the trademark "Seattle Mortgage" is dubious too.

The Trademark law is there to protect against consumer confusion if someone were to confuse your company with the "Seattle Mortgage" company and since you are both located in Seattle, I think this is where their attorney is coming from. However, when it comes to owning domain space, the terms are too generic to worry about.

Also, if you advertise for the term "seattle mortgage" in the search engines you have the Geico case precedent on your side. Of course it went in a different direction in France, but Seattle is US. I wouldn't worry about your positioning for the terms.

The attorney only has one thing in his favor, you are both located in the Seattle area and consumers might get the businesses confused. But I do not think that means they can force you to quit operating your domain space because it includes the words seattle and mortgage. That area is still pretty gray and I've seen it takes one helluva fight to get someone to quit a domain space. I think it took Sting years and a lot of money to get sting.com away from someone else and these cases are rarely won. The government does not own whitehouse.com!

Of course, for real legal help, please seek a bona fide attorney's advice.

Hope this helps!

-detlev

[detlev]

I just saw your post before mine.

Well, you may have to follow your attorney's advice because I'm not one. I find that the advice given is centered around the real world where you can be on the right side of the law and still lose because the opponent can out-spend you.

Totally unfair. I hope it somehow turns around for you.

Good luck!

-detlev

[SeattlePaul]

Thanks, Detlev. I appreciate the posts. You are exactly right. Their attorney is advocating that whenever someone types "seattle mortgage" into a search engine, they are looking for that company. You and I both know that the name "seattle-mortgage-loans.com" is a product, and it should in no way confuse someone who is looking for a company named "Seattle Mortgage". If a prospective borrower just types in "seattle mortgage" for a search term, most people will be looking for the service, not the company.

Does anyone know more specific case law my attorney could refer to? Our attorney protects my wife's real estate company from trademark infringement, but doesn't know internet individual cases. It would help to be citing real domain name lawsuits that have been settled in favor of the domain holder against companies with generic names. (The New York Hotel, Canadian Furniture, California Winery.)

I wonder if I could interest the evening news in a David vs. Goliath story. THAT would level the playing field.

[Michael Martinez]

You don't have to register a trademark in order to own it. I have had a fair number of discussions with intellectual property rights attorneys. Your domain name is probably in infringement. One of the best places for you to do research (and they used to have a forum where you could ask questions) would be http://www.gigalaw.com/. They have extensive article archives.

If it were me, I would give up the fight and switch to a true generic domain name like mortage-loans-in-seattle (which people are probably more likely to search for anyway -- I have found that people who search for local businesses specify "in whatever-town-they-want").

Do some research on keyword phrases before you pick a new domain name. Try to keep it short.

[SeattlePaul]

Michael, thank you for your posting, and your reference to www.gigalaw.com. It's a great resource. Article after article I read there indicated how difficult it is to enforce a generic trademark. One article used terms like "spring water" and "free checking". No matter how they are used, the public does not seem to associate them with any business and they are too general to qualify for tradmark protection. I don't believe my domain name, "seattle-mortgage-loans.com" is an infringement on their business. From what I am reading, Seattle Mortgage is an unenforcable trademark.

I appreciate your suggestion of my giving up thousands of dollars and the hundreds of hours I have devoted to promoting and building my website, and walking away from a corporate bully without a fight. However, I think I'll give it a shot.

[Michael Martinez]

I appreciate your suggestion of my giving up thousands of dollars and the hundreds of hours I have devoted to promoting and building my website, and walking away from a corporate bully without a fight. However, I think I'll give it a shot.

I didn't suggest any such thing. I merely suggested you change domain names. I don't know if the term "seattle mortgage loans" or "seattle mortgage" is an enforceable trademark. I just wouldn't advise spending any money on a legal battle.

Sooner or later, someone will take the term I suggested. IF it follows the pattern that other, similar geographic terms (which I have researched) have followed, then you'll lose your traffic to a competitor anyway.

You may just want to cover your bases and grab the new domain name and put some unique content on it, even if you keep your primary content on the site you presently have.

Good luck.


P.S. -- Perhaps I should add that one of my own domains was, in fact, selected as an invitation to a cease-and-desist letter which never came. I was contacted by someone who had received a cease-and-desist letter about her domain name. She, like you, decided to stand her ground. She won, my domain and others were allowed to stand, and the "corporate bully" went bankrupt.

But that doesn't mean the little guys always win.

[Nacho]

I didn't see anyone posting to the trademark on the uspto.gov site, so here it is:

http://tess2.uspto.gov/bin/showfield?f=doc&state=793ccu.2.1

[Marcia]

First off, here are some suggestions for things NOT to do

http://www.patents.com/dno.htm

There are simplified explanations at Chilling Effects Clearing House

http://www.chillingeffects.org/domain/

and the FAQ are particularly helpful. There's also a list of things that can be researched. It's primarily to save legal expense by doing the footwork on some research, but some interesting points are brought up

Documenting your Defense (http://www.chillingeffects.org/documenting/)

[AussieWebmaster]

I would also think you could take all your work and do 301 redirects - if you stave them off long enough you could take all the content on the previous pages and put it on the new domain.
That way you don't lose the hard work.
You would also want to change any inbound links you have.

[macdesign]

Interesting post - I own a URL which directly corresponds to a major internet company, I happened to notice one day that they never registered it - big oversight on their part. I've had it for years, and used it to drive new customers to them, using an affilliate link, since on many search terms, my site ranked better than theirs. I made a fair chunk of money from them doing that, till they stopped doing the affilaite stuff.

About six months ago, I got a cease and desist from them. They demanded I close the web site, and that I not renew the URL - surprisinlgy they did not ask me to transfer the URL to them. I consulted with a lawyer friend who said I did not have much chance. ANyway I sent them a letter saying I was not defrauding anyone, that I clearly said on the site I was not them, and told them I was not going to co-operate and please get back to me. I've never heard anything since, but they must have been studying my SEO techniques because their site now gets to the top for the search terms I used to be #1 at, and my site does not rank at all for some things.

I also have a suspicion they talked to Google to get them to give my site specaial consideration.

[Michael Martinez]

I also have a suspicion they talked to Google to get them to give my site specaial consideration.

If your site is still ranking well for some terms, it doesn't sound like Google would have done anything about it.

Trademark infringement is a sticky issue, of course. You can almost be certain you'll lose if it is taken to ICANN, but I think they have occasionally ruled for the original domain name registrant.

[Windsun]

A while back - about 6 years ago - there was a case of Gateway suing Tucows. Some idiot lawyer at Gateway sent them a registered letter claiming they had basically trademarked spotted cows..

It hit CNN etc.. quite an embarrassing moment. Especially since Tucows had been using cows a lot longer than Gateway and threatened to countersue for infringement.

This quote from: http://www.chillingeffects.org/domain/

"Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection).

If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit."

I would think that both seattle and mortage are generic.

[I, Brian]

Common sense would suggest that the terms are too generic, but the law doesn't always run by common sense.

Simply put, when someone makes a legal approach via a legal representative, you simply have to seek professional legal advice on options for dealing with that.

[SeattlePaul]

I didn't suggest any such thing. I merely suggested you change domain names. I don't know if the term "seattle mortgage loans" or "seattle mortgage" is an enforceable trademark. I just wouldn't advise spending any money on a legal battle..

I apologize for getting emotional. It's just that I have spent so much time and money developing the website. So far, it's been the source of our livelihood. Investing money to protect what we've built feels very much like protecting my home against a bunch of rich people who claim my home is theirs. They may have more money to spend in court, but I strongly feel that what they are doing is wrong. It's a hard decision.


Sooner or later, someone will take the term I suggested. IF it follows the pattern that other, similar geographic terms (which I have researched) have followed, then you'll lose your traffic to a competitor anyway.

You may just want to cover your bases and grab the new domain name and put some unique content on it, even if you keep your primary content on the site you presently have..


Problem is, the stand their lawyers have taken in their "cease and desist" letter says I cannot use the words "seattle" and "mortgage" to promote ANY mortgage website. Granted, they may be softer on this than on my own domain. I'll have to think about this one. Good suggestion. I had not thought of it.

[Jill Whalen]

If Seattle Mortgage had been using that name for 5 or more years, and the US Trademark office gave them that trademark, then apparently the trademark office believed it was not too generic. Which means they are allowed to request that (and most likely force) others in a similar business to stop using it, if it might be confusing to the consumer.

That's my understanding of the issue. It seems to me that the Trademark office is the one that had to first decide if something is too generic or not, before they give out the trademark. Once they decide it, then it's a done deal. (Or maybe others are allowed to appeal later? I really don't know.)

[SeattlePaul]

I didn't see anyone posting to the trademark on the uspto.gov site, so here it is:

http://tess2.uspto.gov/bin/showfield?f=doc&state=793ccu.2.1

This is why I love SearchEngineWatch. You guys are good. Nacho, I went to the site you sent me to. The session had expired, but it allowed me to do the search. Apparently, Seattle Mortgage has registered the trademark "Seattle Mortgage". I really don't know how to read the trademark registration. I have tried to attach the pages as text, but the forum system will not let me. (Says I exceed the quota by whatever file size it is, which is about 1K each.) It's simple enough to go to the Trademark Search page at http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=5m3gp5.1.1 and type in "seattle mortgage". If anyone would take a look, I'd appreciate it.

The company that is suing has the same address as mentioned on the trademark report. The law firm that sent me the "cease and desist" is the same one mentioned in the report.

[AussieWebmaster]

If Seattle Mortgage had been using that name for 5 or more years, and the US Trademark office gave them that trademark, then apparently the trademark office believed it was not too generic. Which means they are allowed to request that (and most likely force) others in a similar business to stop using it, if it might be confusing to the consumer.

That's my understanding of the issue. It seems to me that the Trademark office is the one that had to first decide if something is too generic or not, before they give out the trademark. Once they decide it, then it's a done deal. (Or maybe others are allowed to appeal later? I really don't know.)
Unfortunately the government bodies issuing trademarks, copyrights and patents is not doing any serious due dilligence and in most cases issue the request and then let problems get worked out in court.
Try looking at the claims of Acacia Media...
How is it possible that anyone with a sane mind could think Seattle Mortgage could be specific to one company.

[SeattlePaul]

If Seattle Mortgage had been using that name for 5 or more years, and the US Trademark office gave them that trademark, then apparently the trademark office believed it was not too generic.
Which means they are allowed to request that (and most likely force) others in a similar business to stop using it, if it might be confusing to the consumer.

It appears they got the trademark in 2002. Why did you say the part about 5 years? Would that give me some right to contend that it's too generic, even after some bozo at the Trademark office has granted a trademark on a generic term?

That's my understanding of the issue. It seems to me that the Trademark office is the one that had to first decide if something is too generic or not, before they give out the trademark. Once they decide it, then it's a done deal. (Or maybe others are allowed to appeal later? I really don't know.)

Does anyone know?

[Jill Whalen]

Why did you say the part about 5 years?

I think I worded that wrong.

What I was told by a trademark attorney was that if you have been using your name for at least 5 years, there's a good chance you'd be able to trademark it. So if they had it for 5 years already when they applied for the trademark 2 years ago, they had a better chance of getting it.

And AussieWebmaster, you may very well be right about them just figuring people can fight it out in court. That doesn't seem like a good idea to me as I would think that's what the Trademark's office is supposed to do...figure this stuff out before the fact, but maybe it doesn't work that way!

Seems to me that one should be able to feel comfortable once they received their official trademark, that they can then use it and stop others from using it. But as with most things, I guess it's not that black and white!

[AussieWebmaster]

I wish things were black and white... but guess once Turner colorized the world there was no turning back.

[SeattlePaul]

First off, here are some suggestions for things NOT to do

http://www.patents.com/dno.htm

Thanks, Marcia. I'm a "take charge" guy. My first instinct was to do research, and handle this on my own. Your web page referral says that's the #1 thing NOT to do. Impulsive people like me can kill any chance for legal success by trying to substitute years of legal experience with 4 hours internet research. Thank you for saving me from myself.

The other pages brought up other good issues. One was the choice of an attorney. I was about to hire a trademark attorney. Not good enough, according to your sources. I need a trademark attorney with experience in domain name protection.

As always, you prove why there are five little green boxes associated with your name. Thank you again, Marcia.

[AussieWebmaster]

As always, you prove why there are five little green boxes associated with your name. Thank you again, Marcia.
That is now six boxes.... Marcia is the queen of the SEW helpful souls.

[SeattlePaul]

A while back - about 6 years ago - there was a case of Gateway suing Tucows. Some idiot lawyer at Gateway sent them a registered letter claiming they had basically trademarked spotted cows..

It hit CNN etc.. quite an embarrassing moment. Especially since Tucows had been using cows a lot longer than Gateway and threatened to countersue for infringement..

GREAT story. It was the first laugh since I got the attorney letter yesterday.

I would think that both seattle and mortage are generic.

The legal research I am doing from the other member suggested all agree...Seattle Mortgage is too generic. It's not like IBM (series of random letters, but now a brand in the mind of the public) or Kodak (a non-descriptive branding for film and cameras, the BEST trademark). While Seattle Mortgage may have a good local business, they are hardly a household term that people associate with their company rather than the product/service.

I think the issues are narrowing.

1) Is a generic trademark enforcable outside the specific term? I am not operating a website entitled "seattle-mortgage.biz" just to trade off their name.
2) Is the use of "www.seattle-mortgage-loans.com" an infringement on that generic trademark. This seems an even greater general description of the product/service to me, but I'm not an attorney or a judge.
3) In practical terms, regardless of right or wrong and what the legalities might be, what are the best options for a little company going head-to-head against a big company.

[SeattlePaul]

That is now six boxes.... Marcia is the queen of the SEW helpful souls.

:) No need to bring religion into a legal discussion, AussieWebmaster!

[Gerardism]

For the sake of the mortgage industry in Seattle, I hope 'seattle mortgages' isn't tradeamarked either. But if you think about it, the phrase "thats hot" is now a registered trademark.

Also, I would of thought that the company in question would start to target overture.com (and others) for companies bidding on the trademark 'seattle mortgage'

If you do happen to lose the domain name, and there's no problem with you targeting the keyphrase 'seattle mortgages', I would surely try to work all of the publicity you may get with this and push your new site. Even tho you might lose out on a lot of invested time and money, this possible exposure can work to your benefit. Or at least make it work to your benefit.

With the size of Seattle and the story getting out. It will hopelly (somewhat) make up for things.

[SeattlePaul]

If you do happen to lose the domain name, and there's no problem with you targeting the keyphrase 'seattle mortgages', I would surely try to work all of the publicity you may get with this and push your new site. Even tho you might lose out on a lot of invested time and money, this possible exposure can work to your benefit. Or at least make it work to your benefit.

With the size of Seattle and the story getting out. It will hopelly (somewhat) make up for things.

If they kick my a** in court, there's no story. The publicity could as likely be negative as positive. I'll just be someone who tried to steal the good name of an established company in the eyes of the public. If I win, I want to get on with life. I appreciate the thought.

My concern is how far they can push me later. Am I basically being told I cannot market on the internet? There is no point in having a mortgage website in Seattle if I cannot use either of those words because they infringe on trademark.

[NFFC]

>If they kick my a** in court, there's no story.

Thats not true at all, there is a great story there, could be that the legal fees are the best marketing $ you will ever spend. I don't think it will come to that though, they are just trying the strong arm tactics, face them down imho

See a lawyer though, some good advise in this thread but nothing beats a legal opinion.

[AussieWebmaster]

>If they kick my a** in court, there's no story.

Thats not true at all, there is a great story there, could be that the legal fees are the best marketing $ you will ever spend. I don't think it will come to that though, they are just trying the strong arm tactics, face them down imho

See a lawyer though, some good advise in this thread but nothing beats a legal opinion.
Off the bat I would buy another domain name that avoids the terms and say covers Washington State Mortgage Loans or whatever county Seattle is in or nicknames like "Rainy City", "Jet City", "Emerald City" , "Seahawk City"... you get the idea. I would then use the terms as PPC everywhere you can find to place an ad.
The standing rules there are you can use the trademarked term as what generates your ad but not have that in your copy... so you use Mortgage as a term - Top Local Mortgages or some such.
Push back a little...

[SeattlePaul]

If someone has a defensible trademark (f***ed though that may be) for "Seattle Mortgage", do I understand everyone to say I cannot even have those two words in my copy. ("If you are looking for a seattle mortgage..." "For a good value on a mortgage in Seattle..."). Or is that just for the domain name? The "cease and desist" demand was for any use of the terms "Seattle" and "Mortgage", period. Their demand was that ANY use of those two words were covered by trademark.

Switching to a new domain name would not help if they have me that limited on copy.

[mcanerin]

I remember a case here in Canada where Pepsi-Cola sued Coca-Cola and argued that since Coca-Cola was essentially descriptive in nature that they should lose their trademark.

The judge pointed out it was internationally known and also reminded Pepsi that the "Pepsi" part of their name was named after pepsin, and therefore made their OWN trademark unenforcable if their arguments were to be allowed. He sent them packing. :D

If they have a trademark and you don't, there is a prima facie assumption that you are infinging the trademark. That means that you are assumed to be guilty unless you prove yourself innocent - the burden is on you. Otherwise, there would be no benifit to having a trademark.

Personally, I think that the term is probably generic. Unless they have a VERY strong branding and presence in Seattle, I would expect that you could challenge the trademark itself.

The question is, is it worth it to you? It will be expensive and time consuming.

On the other hand, a trademark owner can't use their trademark to stop people from competing with them. I strongly question the argument that a search for seattle mortgage should only result in one result and that result should be the trademark owner. Nonsense.

This isn't a search issue, IMO, it's a website/domain issue.

Other questions I would ask include:

Did they perform due diligence in protecting their trademark? Why was this domain even available? You can't abandon your trademark and then try to revive it later. Once it's gone, it's gone.

What is the ceast and desist about? The use of the domain name or the fact that you are ranking well for the term? The first has merit but the second is nonsense.

Is there a possibility of confusion between the sites? Do they look similar?

What do they *really* want? Have you phoned up the lawyer or owner and asked? Sometimes a sit down can be quite helpful. There are some jerks out there, but most lawyers I know are reasonable and can help talk sense into an unreasonable or angry client. Maybe they just want to buy your domain and this is the beginnings of price negotiations. I've done that before - put the domain into question and then bargain from a power position. Do you know? If it is, then file a challenge to the validity of their entire trademark (on the internet and off) and start bargaining from *that* position. Many companies will not want to take that risk, and since it's a valid defence to the cease and desist (no trademark, no cease and desist) they can't prevent you from doing so from a harrassment angle. Chances are it won't even go to court, since they would not want to take the risk. Then the two of you bargain in good faith and settle out of court.

Just some thoughts,

Ian

[Chris Boggs]

when I was with sandiegohealthinsurance.com in (guess) san diego, we purchased the domain bluehealthquotes.com in order to concentrate on selling Blue Cross and Blue Shield. A few weeks after, before we had even placed content there let alone gone live, we received a letter saying we were not allowed to use the terms "blue" and "health" together to market health insurance products, since "blue" was Trademarked. We never fought it figuring BS/BC had a little more money to spend on lawyers than us. I wish we had....

[Nacho]

Sorry Paul for posting the wrong link... my bad :o

This one should work: http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=76295796

Saludos!

[SeattlePaul]

This isn't a search issue, IMO, it's a website/domain issue.Ian

You may be right. The domain was their main issue, but they threw in the kitchen sink as long as they were paying the lawyer to write the letter.


Did they perform due diligence in protecting their trademark? Why was this domain even available? You can't abandon your trademark and then try to revive it later. Once it's gone, it's gone.Ian

Good legal issues. I am afraid that their letter to me proves they are serious about protecting their trademark. I cannot answer your other questions, though they are excellent.

What is the ceast and desist about? The use of the domain name or the fact that you are ranking well for the term? The first has merit but the second is nonsense.Ian

The use of the domain name was their first objection. They say my purpose is to steal their clients. The second objection is ANY use of the terms "seattle" and "mortgage" in the same website.


Is there a possibility of confusion between the sites? Do they look similar?Ian

No confusion in appearance. View for yourself. www.seattlemortgage.com and www.seattle-mortgage-loans.com. I have my corporate name prominently displayed (One Stop Real Estate, Inc.) and have added a disclaimer that we are NOT associated with Seattle Mortgage.


What do they *really* want? Have you phoned up the lawyer or owner and asked? Ian

According to the legal sites I have visited, that's the single biggest "no no". Lay people cannot know the traps lawyers are setting for them. Contact should only be made through an attorney, they say. Ever heard "He who represents himself has a fool for a client?" ;)

[Everyman]

seattle-mortgages.com is available.

[Michael Martinez]

No matter how good the advice you may get here, you really need to sit down with an experienced attorney who represents your interest in the matter.

[SeattlePaul]

No matter how good the advice you may get here, you really need to sit down with an experienced attorney who represents your interest in the matter.

Michael, you're right. I did some research and sent an email to a top local trademark/domain name attorney asking for help. I believe that I won't really know whether it's a bluff or a declaration of war until I get a top attorney to write a response. The law firm that contacted me is huge. They should know how tenuous their position is. I am hoping that if the name of my representative firm suggests enough firepower, they may just go away. At the least, they will know I am properly represented.

[SeattlePaul]

seattle-mortgages.com is available.

Everyman. If I am getting threatened for using seattle-mortgage-loans.com, I'll get creamed for using seattle-mortgages.com. That would be even closer to the "forbidden name". Thank you for the suggestion, though. I may need to pursue an alternative domain name.

[CMServices]

I have the same problem. I had a company tell me that I could not use there company name in my keywords (There NAME is NOT trademarked) Im only a small company they are a 10 million dollar company. what are my rights?

[SeattlePaul]

I have the same problem. I had a company tell me that I could not use there company name in my keywords (There NAME is NOT trademarked) Im only a small company they are a 10 million dollar company. what are my rights?

CMServices, the question may not be your rights, or the legal justification for your use of keywords. The question may be a matter of budget. A good attorney costs between $200 and $350 an hour. Just to meet with you, do research and write a letter resonding to a "cease and desist" order could cost $1,500. That's just the opening move on the chess board.

The company I am competing with did not notice me until my website began getting top ranking for major search terms. One possibility is that they made a business decision. They may have decided they could eliminate a strong internet competitor by initiating a legal challenge. Most people will discover, as I have, that there is a steep price to be paid for justice. They can afford it better than I, and perhaps you, can. We have to decide how much we can pay to defend our rights.

[CMServices]

What happened was when this company went to yahoo to see where they ranked my company was coming up first. that didnt make them very happy. but what i found out was that my webpage designer paid for for placement.
so does anyone know if you can use other companys (not trademarked names) in your keywords?? to get better rankings on search engines?

[AussieWebmaster]

Everyman. If I am getting threatened for using seattle-mortgage-loans.com, I'll get creamed for using seattle-mortgages.com. That would be even closer to the "forbidden name". Thank you for the suggestion, though. I may need to pursue an alternative domain name.
Have you thought of making deal with them... giving them a banner on your site or even to sell all traffic from the domain name to them... you could forward it straight to their website and while you are setting up your new domain etc. you have some income and the possibility of getting them banned for using Doorway Pages which would be classic!!!

[CMServices]

Well I'm not sure that I want to make a deal with the devil. due to the fact we have got a lot of new clients because of the fact that we have used some good keywords. Now when people are looking for them or companys like them they also find us. is that against the law?? We are looking into paid placement where I think the more we pay to be listed the higher we will be ranked. What I have been trying to find out is it against the law to use other companys (not Trademarked Names) in your keywords to get better placement near or above them? Isn't it far for people that are looking for companys in our field to have more than one company to turn to?????

[SeattlePaul]

Have you thought of making deal with them... giving them a banner on your site or even to sell all traffic from the domain name to them... you could forward it straight to their website and while you are setting up your new domain etc. you have some income and the possibility of getting them banned for using Doorway Pages which would be classic!!!

Websites devoted to advice on how to handle a "cease and desist" letter say that all the things you are suggesting are classic blunders. Whether the respondent ends up in arbitration or real court, the arbitror/judge looks at intent. An offer to settle is interpreted as a sign that your original intent was to infringe on the plantiff's trademark, then make money from them. A respondents best chance is to prove innocence.

On a practical level, when a high-powered attorney gets a response from a little guy offering to settle, what I've read suggests that is a sign of weakness. The attorney for the big company smells blood.

I'll be meeting with an attorney soon. The first step will probably be to draft a letter in response to the "cease and desist". The contents of the letter will be less important than the letterhead. It will be a signal that I'm well-represented and am willing to fight. From all I've read, it may be the best way to make the Bully go away.

[AussieWebmaster]

Websites devoted to advice on how to handle a "cease and desist" letter say that all the things you are suggesting are classic blunders. Whether the respondent ends up in arbitration or real court, the arbitror/judge looks at intent. An offer to settle is interpreted as a sign that your original intent was to infringe on the plantiff's trademark, then make money from them. A respondents best chance is to prove innocence.

On a practical level, when a high-powered attorney gets a response from a little guy offering to settle, what I've read suggests that is a sign of weakness. The attorney for the big company smells blood.

I'll be meeting with an attorney soon. The first step will probably be to draft a letter in response to the "cease and desist". The contents of the letter will be less important than the letterhead. It will be a signal that I'm well-represented and am willing to fight. From all I've read, it may be the best way to make the Bully go away.
Thanks for the information... I was thinking of buying that other domain and just giving the guy a hard time.... guess I still could but not to offer it to him for sale.

[JohnW]

I'm not a lawyer but it seems to me that they have trademarked a company name, but IMO there is no way they can stop you from saying what do do - which is conducting business as a provider of seattle mortgages, a generic and I would think non-copyrightable term for use in this context. Jeesh. As to the domain name, it too is simply descriptive of what you do, not who you are. As far as I know, the legal test here is the "likelyhood of confusion", i.e., is your use of these words likely to confuse the public? Will the public confuse your company with their company? I don't think so. Are you taking advantage of their name's goodwill or reputation? Nope. I would tell them to forget it, see you in court. Of course you should consult an attorney before you do anything, and make sure he looks at the GEICO case.

[SeattlePaul]

I'm not a lawyer but it seems to me that they have trademarked a company name, but IMO there is no way they can stop you from saying what do do - which is conducting business as a provider of seattle mortgages, a generic and I would think non-copyrightable term for use in this context. Jeesh. As to the domain name, it too is simply descriptive of what you do, not who you are. As far as I know, the legal test here is the "likelyhood of confusion", i.e., is your use of these words likely to confuse the public? Will the public confuse your company with their company? I don't think so. Are you taking advantage of their name's goodwill or reputation? Nope. I would tell them to forget it, see you in court. Of course you should consult an attorney before you do anything, and make sure he looks at the GEICO case.

Are you evesdropping? John, I JUST got off the phone with an attorney specializing in trademark law in general, and domain name law in particular. He said EXACTLY what you said, almost word for word. For your (and everyone's) information, the Supreme Court has recently ruled that even a defensible trademark cannot be broadly applied when used a description. Seattle Mortgage is trademarked as a company, but this does NOT give them broad protection for use of this generic term.

However, the attorney also gave me this caution. The likely outcome doesn't prevent them from starting a war of attrition. At $500 per letter, the meter runs up quickly. ($500 was the lowest rate I received, too. They ranged up to $1,500.) My attorney said that they know their case is weak. That would not stop him from trying to kick a little guy's a** if the roles were reversed. If they decide to go to trial, the cost would probably exceed $100,000 with almost no chance to acquire attorney fees.

It's a hard world, especially when the school bully decides to pick a fight.

[Michael Martinez]

What happened was when this company went to yahoo to see where they ranked my company was coming up first. that didnt make them very happy. but what i found out was that my webpage designer paid for for placement.
so does anyone know if you can use other companys (not trademarked names) in your keywords?? to get better rankings on search engines?

Generally speaking, it is considered an unfair use of a trademark to use a company's name in your keywords unless you are authorized to resell or reuse their name.

If you are selling hamburgers, you may NOT use "McDonald's", "Wendy's", or "Burger King" in your advertising (and keywords are a recognized form of advertising) unless you operate a franchise.

However, if you offer a rebuttal to, say, some company policy, you can use "A rebuttal of McDonald's company policy", or "A rebuttal of Burger King company policy" in your Web page keywords as long as that accurately describes the content of the page.

That is, editorial opinion is protected speech. Use of a competitor's name or trademarks to promote your own business is NOT protected speech, and it should never be used by anyone as a means of achieving top rankings for their Web sites.

[AussieWebmaster]

Generally speaking, it is considered an unfair use of a trademark to use a company's name in your keywords unless you are authorized to resell or reuse their name.

If you are selling hamburgers, you may NOT use "McDonald's", "Wendy's", or "Burger King" in your advertising (and keywords are a recognized form of advertising) unless you operate a franchise.

However, if you offer a rebuttal to, say, some company policy, you can use "A rebuttal of McDonald's company policy", or "A rebuttal of Burger King company policy" in your Web page keywords as long as that accurately describes the content of the page.

That is, editorial opinion is protected speech. Use of a competitor's name or trademarks to promote your own business is NOT protected speech, and it should never be used by anyone as a means of achieving top rankings for their Web sites.
But at this level it is not the company so much the product... think Hamburger... everyone is selling them and now one company holds the name??? Hey even Coca-Cola shares the Cola part...

[Michael Martinez]

But at this level it is not the company so much the product... think Hamburger... everyone is selling them and now one company holds the name??? Hey even Coca-Cola shares the Cola part...

I was using company names in my examples, as the question I originally replied to concerned the use of a company name in the person's keywords meta tag.

While I cannot recall the specific details, the use of rival company names, or rather the unauthorized use of company names in meta keywords tags (and other portions of Web pages) has already been tested. It is NOT advisable.

Editorial usage is protected. Using someone else's name for the purpose of promoting an unauthorized product or taking traffic away from an official Web site is NOT protected.

Use at your own risk.

And it is perfectly reasonable for people to say, "Michael, since you don't remember the specifics, why should we believe you?" Truth is, no one needs to believe me. Do research at legal archives like Gigalaw (http://www.gigalaw.com) because they most likely will stay up-to-date on what is happening with topics like this.

[JohnW]

>Are you evesdropping? John, I JUST got off the phone with an attorney specializing in trademark law in general, and domain name law in particular. He said EXACTLY what you said

Yes, my new eavesdropping software is the bomb ;-)

Don't let them bully you. If they aren’t just making noise and they actually file a lawsuit against you that is without merit, you may have a case for damages and/or sanctions against them, including attorney fees.

>At $500 per letter, the meter runs up quickly.

It's a cost of doing business. The first letter from your lawyer needs to explain that their case is frivolous, completely without merit, and is simply a ploy to attempt to harm your business - it should cite the appropriate case law, and threaten a countersuit, sanctions etc. A good first letter from you may be all that is needed. Also, IMO you should keep this situation off of the public forums - at least for now - your attorney will be able to advise you on this as well.

[rustybrick]

I've actually seen a very funny case of this.

It was between a savvy developer (who happened to know SEO) and a law firm.

He was upset with how a law firm treated him, forgot the case, and posted a blog up with his issues. The blog was at the domain www.law-firm-name.com. So the law firm sent him all these letters and the whole works. But they had nothing at all on him.

Eventually, the complaint blog ranked #1 for the law firm name. As you might imagine, that really ticked off the law firm. So the law firm eventually offered a huge sum of cash for the domain name, only. He turned it down, he wasn't interested in the money, he wanted an apology from the law firm. So it went on and finally he gave in and sold the name to the law firm.

But the blog, he put under a different URL. And guess what, that new URL, that doesn't have the company name in it, ranks #1 for the law firm name (I don't remember the name any more, but I saw it myself).

Just a funny story, to lighten things up.

[rustybrick]

Oh, bottom line.

Don't mess with someone who knows SEO. :)

Law firms, heh, a dime a dozen. ;)

[SeattlePaul]

>Also, IMO you should keep this situation off of the public forums - at least for now - your attorney will be able to advise you on this as well.

It's probably good advice, but I'm curious. Why shouldn't I be able to talk about this stuff? It seems like if it's true, I would have a First Amendment right (a Constitutional guarantee of Free Speech, for those of you non-Americans) to say whatever I wanted. That's, of course, as long as it's true. I will check with my attorney, in any case. I'm sure you had a good reason to bring it up. What might be the downside?

[AussieWebmaster]

It's probably good advice, but I'm curious. Why shouldn't I be able to talk about this stuff? It seems like if it's true, I would have a First Amendment right (a Constitutional guarantee of Free Speech, for those of you non-Americans) to say whatever I wanted. That's, of course, as long as it's true. I will check with my attorney, in any case. I'm sure you had a good reason to bring it up. What might be the downside?
Apart from giving your opponent an insight into your thinking and tactics.... a record of your knowledge at set times etc.

[mcanerin]

I agree with AussieWebmaster - it's not so much a freedom of speech issue, as a "not telling an opponent information they don't need to know" issue.

Remember also that while your lawyer is telling you one thing, theirs is no doubt telling them something else. One of the joys of legal practice is that you can make an arguement for almost anything.

It doesn't matter what a lawyer says (unless it's basic law) , it matters what a court rules. There have been many times where a lawyer *knew* what the law was, only to have it changed by the court on the spot right in front of him. Pretty much every landmark ruling happened this way, as a matter of fact.

I agree with your lawyer, btw - I'm just making sure that everyone knows that there is no victory unless it's settled out of court to everyone's satisfaction, or a judge rules on it and there are no grounds for appeal. Until then, it's just "pretty confident". Of course, the same applies to your opponent, as well. ;)

Ian

[June]

Hello,

I would concure that you should seek legal advise and invest in a professional response to their notification. I would seek out the biggest/known firm in the seattle area, to do the responding.

Another point is that they are doing business as Seattle Financial Group

Interesting thought: Seattle Financial also has mirror sites out there by different domains, a little black hat going on
http://www.seattlemortgage.com and http://www.smcommercial.com

On the other hand I can understand their frustration, being the on the recipient side of someone buying a domain name simular to mine, just by putting dashes inbetween the words instead of a together string, then buying .tv etc in the exact. They even went as far as copying the text as well. Thank goodness, they have fell off the face of the earth.

If you are pure of heart and intent, fight on

[SeattlePaul]

I agree with AussieWebmaster - it's not so much a freedom of speech issue, as a "not telling an opponent information they don't need to know" issue.Ian

Thanks, Ian and AussieWebmaster. You're right. The issue is not whether I CAN talk about what's going on as much as whether I SHOULD talk about what's going on. I see it's in my best interests to limit sharing my thoughts. I think it's more likely that I would be overheard discussing the case by the wrong person in a local restaurant than having someone involved with the case on their side discovering this thread in the Members Only section of SearchEngineWatch.

[SeattlePaul]

Hello,

I would concure that you should seek legal advise and invest in a professional response to their notification. I would seek out the biggest/known firm in the seattle area, to do the responding.

Hello, June, and welcome to the forum.

The firm I have retained is a boutique. They have 9 attorneys, and are headed by a husband and wife team. I contacted the wife Saturday at 11PM by email. Her name came up in a Google search. I shared how upset and frightened I was by the challenge of fighting the biggest competitor in town represented by one of the biggest law firms in town. I wanted to hear back from them when they opened Tueday. She responded at 12:30AM Sunday morning. She said to set a time for a conference call. All their firm does is Internet trademark cases. They have been up against the big law firm before. The call came at 2:30PM Sunday. While they are not making me a Pro Bono case, they are keeping their fees very reasonable. They feel like I do; a large firm is hoping to intimidate a small competitor.


Interesting thought: Seattle Financial also has mirror sites out there by different domains, a little black hat going on
http://www.seattlemortgage.com and http://www.smcommercial.com

What is "a little black hat"?

On the other hand I can understand their frustration, being the on the recipient side of someone buying a domain name simular to mine, just by putting dashes inbetween the words instead of a together string, then buying .tv etc in the exact. They even went as far as copying the text as well. Thank goodness, they have fell off the face of the earth.

If you are pure of heart and intent, fight on

I am NOT pure of heart...ask my wife! :rolleyes: Seriously, what I have done is take a generic descriptive term and use it as my domain name. What they have done is take a generic term and trademark it. I used to build and promote websites for small local builders. It would be like XYZ Contruction using a domain name like www.seattle-home-builders.com and getting a tradmark challenge from a business called Seattle Builders. My website, as you may have seen, is highly personal and homemade. Their website is corporate. It sounds like you were dealing with obvious theft.

Again, what is the "black hat"? Sounds like a term worth knowing.

[Elisabeth]

Again, what is the "black hat"? Sounds like a term worth knowing.

*sigh* since you asked twice, i have to give you some links to previous (and long) dicussions on the topic of 'white hat vs. black hat' SEO -


Ethical Search Engine optimisation Explained
http://forums.searchenginewatch.com/showthread.php?t=4246

Black Hat, White Hat & Lots of Gray
http://forums.searchenginewatch.com/showthread.php?t=3302

whitehat vs. blackhat, it is all BS
http://forums.searchenginewatch.com/showthread.php?t=1081

but don't get too involved with it, as i'm sure you have plenty of other important reading to do.

best of luck with your legal battles.

elis.

[incrediblehelp]

Was the American Blind/Google lawsuit ever settled? This was a similar case, but it involved AdWords instead of organic search.

Also the Google results and traffic seattle-mortgage-online.com achieves really has nothing to do with the lawsuit according to the post I have read through before. You can blame the domain holder for ranking well on Google or even producing good traffic. It sounds like Seattle Mortgages is only suing because the domains name is similar to their patent business name.

Personally I think it sucks that they are trying to do this, but I am not a lawyer and I have to to agree from looking at the previous posts that Seattle Mortgage, the company, may have a case if they go by patenting only. Of course I wish, is this lawsuit occurs, the lawyers, the judge and the public would look at this from a big picture perspective and see Seattle Mortgage, the company, are suing only because of seattle-mortgage-online.com successful SEO campaigning and NOT because their name is similar to theirs.

[June]

Hi There

Just got off the phone with a lawyer friend who is on a legal assoc. board that covers this exact topic.


He said the case is without merrit and that if you went to court they would lose that there is already case law where the big guys have lost to these harassment type lawsuites.

Black Hat ? Think of it being good guy vs snidley whiplash, good at heart but slightly sneaky ok,,,, sometimes really sneaky.

Good luck to you

[AussieWebmaster]

June you are a godess.... am sure anyone interested in this thread appreciates the input....

[Chris Boggs]

I see it's in my best interests to limit sharing my thoughts. I think it's more likely that I would be overheard discussing the case by the wrong person in a local restaurant than having someone involved with the case on their side discovering this thread in the Members Only section of SearchEngineWatch.

Seattle, the "members only" entitles you to post...ANYONE can read this info. Beware assumed anonymity. If you are wondering, cut and paste the link for this thread in your browser and email it to someone…they will open the thread right on this page…

Also be advised that this board lends itself to high rankings within Internet searches. Search "seattlepaul" at Google you will see what I mean. Don't think for an instance that a good lawyer (or a phalanx of them) won't find a thread in here. Don't worry though there's nothing in here they can use against you, in my untrained opinion...

[June]

June you are a godess.... am sure anyone interested in this thread appreciates the input....

Thanks you made my day!

SeattlePaul,

Just a thought, don't minimize your abilities, excellent job on rankings as well as design, (I like yours better! ) and accomplished this in a highly competitive field where the big players are spending boat loads of $ to be seen.

[SeattlePaul]

Thanks you made my day!

SeattlePaul, don't minimize your abilities, excellent job on rankings as well as design, (I like yours better! ) and accomplished this in a highly competitive field where the big players are spending boat loads of $ to be seen.

June,
Thank you, but all I have done is read SearchEngineWatch for several years. It's been my only resource for SEO info. I have followed the highway others have created, and tried to do what was suggested.
Funny thing. When I finally stopped gaining rank by doing the basics, I asked for help on the forums in improving my Google ranking. The response was generous. Even Danny Sullivan jumped in. (See http://forums.searchenginewatch.com/showthread.php?p=32292#post32292). It worked beyond my wildest dreams. A couple weeks later, I was in a legal battle. What can you do? :confused:

[SeattlePaul]

Seattle, the "members only" entitles you to post...ANYONE can read this info. Beware assumed anonymity. ...
Thank you twice. First, for pointing out that this "private conversation" is really an internet megaphone.

Don't worry though there's nothing in here they can use against you, in my untrained opinion...
Second, for the reassurance that this probably won't hurt me. Nothing in any of this seems intuitive.

[hugo guzman]

This is slightly off topic (deals more with metatags than domain names) but the resource may prove useful to you:
http://www.phillipsnizer.com/library/topics/meta_tags.cfm

Hope this helps...

[Marcia]

He said the case is without merrit and that if you went to court they would lose that there is already case law where the big guys have lost to these harassment type lawsuites.
It would be nice to have the case law available to the attorney who sends a letter, it would probably nip it in the bud if there's already precedent.

[SeattlePaul]

It would be nice to have the case law available to the attorney who sends a letter, it would probably nip it in the bud if there's already precedent.

Marcia, thank you for the suggestion. My attorney specializes in this field and already has the case law. In fact, he said there was a recent landmark decision from a high court that defined this topic. It clarified the use of generic terms in lawsuits brought by companies who trademark generic terms. Basically, it confirms that the use of a generic term is OK, regardless of trademark, as long as the generic term use is descriptive. If you call your company "Search Engine Optimization" and you trademark the name...good luck. It doesn't mean you can stop others from using a common phrase in the English language.

My attorney is waiting for my check and signature on the "I have retained you" agreement. Then he'll write the letter to the Big Bad Wolf. This should happen within the week. I'm certain he'll bash them with case law in his response letter to their "cease and desist". I'll post the case law for you when I get it.

[AussieWebmaster]

Good luck and keep us posted if it is advisable.

[Mel]

Well Seattle Mortgage is not a trademarked name, it is only a service mark, BUT you might be interested in this little blurb at the bottom of thier Trademark registration (http://tess2.uspto.gov/bin/showfield?f=doc&state=2m715t.2.1) which says:

Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE MORTGAGE APART FROM THE MARK AS SHOWN

I suspect that if your attorney replied to them that they had no exclusive right to the word mortgage based on their registered service mark, (which leaves them only with Seattle) that thier C and D letter at least has to be revised.

[SeattlePaul]

Well Seattle Mortgage is not a trademarked name, it is only a service mark.,

Mel, just when I think I've got a handle on all this, someone brighter than me throws me a curve. OK. What's the difference between a trademark and a service mark. I thought they were the same thing.

[Mel]

# A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

# A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

I wonder if its possible to obtain a service mark for seattle mortgage loans? If you qualify for the small business rate it appears to cost about $160 to file.

[tagteam]

I only became aware of this thread today through the Search Day newsletter, so I may not be entirely up on everything that has been covered. I'm also in Canada, so my experience may not be bang on.
I'm not a lawyer, but I am in advertising and one of my jobs is to recommend company names and product names that my clients can claim as proprietary with a strong trademark. A generic name like "Seattle Mortgate" is one of the worst things I could ever offer because it is completely indefensible.
I couldn't really tell by looking at your opposition's trademark registry whether they actually have title to the words "Seattle Mortgage" or whether they own just the graphic design applied to the words. I suspect they just own the design - the two often get confused. To really own a term, you pretty much have to coin it yourself or give it a novel spelling or do something with it to make it non-generic.
Meantime - you mentioned that there are quite a few other mortgage providers in the area that could have a stake in this. Have you approached them for support? "The big bad wolf" might not be so ****y (umm..."arrogant") if the suit was lined up against the lawyers for 150 other mortgage & load companies. Who are the other big hitters in your neighbourhood? Do they know what's going on?
Good luck - there oughtta be a law against this kind of intimidation!

:D

[tagteam]

#
I wonder if its possible to obtain a service mark for seattle mortgage loans? If you qualify for the small business rate it appears to cost about $160 to file.

I bet you could get a mark for "www.seattle-mortgage-loans.com"

[HitsUSA]

If your commercial usage of the term "Seattle Mortgage" predates the filing date of their Service Mark (August 6, 2001), then your case is a slam dunk.

Commercial usage involves using that exact phrase in any page copy on your site in a way that involved some form of commerce. Since you are a loan broker, that certainly qualifies as a commercial activity.

Check the Wayback Machine for archived versions of your site before the August, 2001 date.

HTH

[meechp123]

Not a lawyer but, I think you're protected. For example, my company is Equity Concepts, Inc., yet, our domain name is www.eciloan.com because www.equityconcepts.com is taken. The owner of the isn't doing with the domain name, he just registered it first.

It's the same type of issue between www.nissan.com and Nissan Cars; check it out for yourself.

[dex21]

Well, if you end up losing in the end then perhaps you could look up the fair use laws about paradoy and use the domain name to create a paradoy site for the seattle mortgage company. If not then point it to a porn site which would probably not have much chance of being confused with selling mortgages.

Won't bring you anything but satisfaction, but hey, isn't that what life is about......

[dengel01]

You'll keep your name. If they own tons on domains where no business is being conducted chances are they are cyber squatters. I've been thru this already a couple times
1 - who used the name first according to Verisign?
2 - is there a current patent / trademark/ signaturemark owned or "on hold" for the other company, and if so when?
3 - is there a likiehood of confusion between your name and their name
4 - is there a possibility the your compaany many be confused with the other or vice versa?
Check Verisigns policy regarding usage, protection, and language: For instance as someone pointed out you cannot trade/servicemark "SEATLE" so there goes that. If they want to service mark Mortgage, they have to be doing something with it, but if your domain all the dashes, and cointains COMPLETELY different content, different looks and feels, the basically your site takes on a secondary because the chances of 2 "normal people" being confused as either site becomes a non issue.

Hope this helps

[SeattlePaul]

You'll keep your name. If they own tons on domains where no business is being conducted chances are they are cyber squatters. I've been thru this already a couple times
1 - who used the name first according to Verisign? I did. I've had the domain name for 2 years.
2 - is there a current patent / trademark/ signaturemark owned or "on hold" for the other company, and if so when? They have had a TM on "Seattle Mortgage" for 3 years, and have used the name in business for 50 years.
3 - is there a likiehood of confusion between your name and their name. None whatsoever. My company is One Stop Real Estate, Inc., dba One Stop Homes & Loans. Theirs is Seattle Financial Group, dba Seattle Mortgage
4 - is there a possibility the your compaany many be confused with the other or vice versa? No. I am a "mom and pop" offering real estate and mortgage services. They are highly corporate, owned by a bank, etc.
Check Verisigns policy regarding usage, protection, and language: For instance as someone pointed out you cannot trade/servicemark "SEATLE" so there goes that. If they want to service mark Mortgage, they have to be doing something with it, but if your domain all the dashes, and cointains COMPLETELY different content, different looks and feels, the basically your site takes on a secondary because the chances of 2 "normal people" being confused as either site becomes a non issue.

Hope this helps My attorney says that the points of law are not the issue. We are confident of victory in the end.

[Chatmaster]

You will love this, I mean who has more right to the URL than the government?

I remember a case a couple of years ago where the South African government claimed the URL southafrica.com is their property, I searched for this and found www.itweb.co.za/sections/internet/2000/0011021213.asp

I think you should sue them for personal damages for causing you to get 3 gray hairs extra, should get a couple of million for that as it could have shortened your lifespan with 78 seconds. :D

[Chatmaster]

O I forgot the company that owned the URL was situated in Seattle! Here is some more information (http://www.computeruser.com/news/00/11/18/news5.html) if you want it, I hope it is relavant, the US law is a bit weird to me lol

[Chris Boggs]

My attorney says that the points of law are not the issue. We are confident of victory in the end.

That just made me think of the Bob Marley song...

"...and the VICTORY, of good over eviiiiiiil." :D

[dengel01]

My attorney says that the points of law are not the issue. We are confident of victory in the end.

Im curious, and you are free to PM me if you wish, but why would your attorney say that points of law are not the issue. THEY ARE EXACTLY the issue. I have a friend who has actually made case law, he was a doman broker and owner a zillion domans and had to argue his case to Network Solutions, and won. I dont think you should have problem in keeping the domain, but I would want points of authority, case law and certainly a strategy in case they play hardball and try and get a temp injunction claiming your use of the name is causing them harm to their brand, their name, and is causing irreperable damages to their image.

Best of luck

[SeattlePaul]

Dengel01, thanks for your interest. My attorney has been very specific with me about being generic on public forums. He encourages me to bitch and whine (so he doesn't have to listen) but not to discuss precise strategy, case law or weaknesses (and they are few) in our position. Once all this has been resolved, I will be free to share exactly what has happened. I have received many direct emails from very nice people who have endured exactly what I am going through, either as plantiffs or defendants. All of them say the same thing; do what the attorney says. We do not know who is reading this thread, or even who is posting to it.

[dengel01]

I totally understand about being generic on a forum because you really have no idea who is reading this. My suggestions were for your assistance, since I thought I would toss in my .02 since I've gone thru it as well as a friend who is a domain broker I know. So as long as you're all locked and loaded to go forward then I wish you the best, but be assured Im on your side, and I've been in your place, so if you have any specific questions re intellectual property law, please PM me.

Good luck

[McFox]

... but be assured Im on your side, and I've been in your place, so if you have any specific questions re intellectual property law, please PM me.SeattlePaul, Suspicion is completely free and should be exercised with extreme prejudice, particularly considering the 'weight' of the the other player(s).

By the way, I am your friend, too -- email me your entire legal strategy as well as copies of any and all evidence. I promise I am on your side and will not give away your secrets. Selling them is a different matter ;)

[eurotrash]

It's simple enough to go to the Trademark Search page at http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=5m3gp5.1.1 and type in "seattle mortgage". If anyone would take a look, I'd appreciate it.

The company that is suing has the same address as mentioned on the trademark report. The law firm that sent me the "cease and desist" is the same one mentioned in the report.

It does not mean that they can get your domain name. Check out the following domain decision at WIPO where they said:

"The Panel concludes that Respondent has successfully rebutted this contention. Respondent has shown that, before any notice to him of the dispute, he had used the domain name in connection with the bona fide offering of his services to a substantial range of customers in the United States of America and elsewhere. Respondent has provided cogent and corroborated reasons for his adoption of the domain name and of his continued use of it in the bona fide conduct of his business. The Policy does not aim to adjudicate between genuine conflicting interests. The Policy modifies the Justinian principle of "qui prior est tempore, potior est iure" – "first in time, first in right" - only where there is clear and unjustifiable misappropriation of Complainant's mark."

http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0449.html has also been cited in multiple later disputes.