It really should have registered the domain name earlier.
A Boise garage door company blamed a competitor’s use of the domain name BoiseGarageDoor.com for a 40% drop in business.
And it managed to win a UDRP for BoiseGarageDoor.com — although the decision didn’t hinge on this drop in business.
The case pitted a company called Boise Garage Door LLC against competitor Sunrise Garage Door Co. The complainant has been in business for decades but finally got a trademark on “Boise Garage Door” this year.
Back in 2009 Sunrise said it hired a consultant to help it get more business on the web. The consultant researched SEO terms people use when they need a garage door in the respondent’s service area. This consultant, not surprisingly, found that “boise garage door” was a common term. It also found other terms, such as “nampa garage door” and “garage door” were commonly searched.
So Sunrise Garage Door hand registered BoiseGarageDoor.com to get some search engine traffic.
Panelist Harrie R. Samaras found against Sunrise. In doing so, she showed she has little grasp on internet marketing. Consider this:
Relying on an IT expert does not carry the day here for Respondent. Respondent has admitted that there were other phrases (that were not the Mark of a long-standing local competitor) such as “garage door” and “nampa garage door” that were in the IT expert’s list and which Respondent could have used. Indeed, Respondent admits that it registered nampagaragedoor.com the same day it registered the Domain Name “even though there is no company named Nampa Garage Door.” Nonetheless Respondent chose to register a domain name that incorporates the entirety of a long-term local competitor’s trademark clearly with intent for commercial gain – to increase a growing source of customers from the Internet. Internet users who know Complainant and logically use the Domain Name boisegaragedoor.com (encompassing the Mark) expect that they will arrive at Complainant’s website, but they are actually taken to Respondent’s website. From there, they may or may not bother to find their way to Complainant’s website or business. But further, when using the search terms (as opposed to the Domain Name) “boise garage door” in the Google search engine, the Panel learned that Respondent’s search optimization strategy is working for it because the first result is Respondent’s website, not Complainant’s website. Even more problematic is the fact that the title of that first result in the search reads: “Boise Garage Door Experts | Sunrise GarageDoor.com”. So Internet users searching for Complainant by name, not only are taken to Respondent’s competing website, but also see the title (“Boise Garage Door Experts | Sunrise GarageDoor.com”) which suggests a misleading association between the two competitors.
Samaras is confusing marketing based on a descriptive term versus a brand term. The fact that the search result says “Boise Garage Door Experts” shows that Sunrise is trying to capitalize on a natural term people in Boise are searching when looking for a garage door, not necessarily the brand name.
This misunderstanding is also evident here:
Respondent argues that it “only uses the domain page [Domain Name] as a forwarding domain to its primary web page at www.sunrisegaragedoor.com. . . . Any confusion by potential customers should be resolved the minute the webpage is loaded, because if any consumer attempts to find Boise Garage Door’s webpage, they would immediately realize they were not on that page once Sunrise Garage Door has loaded.” The fact that Respondent “only” uses the Domain Name so that customers or potential customers will end up at its competitive website is not an exculpatory explanation but, rather, an incriminating admission.
No, it’s not incriminating. It would be incriminating if the term was a company name only, but in this case it’s also a descriptive name. If you buy the argument that the domain was to take advantage of the descriptive term, then this isn’t incriminating at all.
Here again:
And Respondent permitted a misleading use of the Domain Name (as discussed above) in conjunction with the presentation of the search results to suggest some affiliation between the parties.
Now, all this said, if these were the only details I’d say it looks like Sunrise just got screwed. But there’s one item that bothers me.
Sunrise’s consultant told it about other keywords that could be registered as domains to drive web traffic. Those include some that would be very expensive, including GarageDoor.com. But nampagaragedoor.com was on that list. According to the panelist’s write up, Sunrise said it registered nampagaragedoor.com when it registered BoiseGarageDoor.com. This would jive with Sunrise’s claim that it was targeting it just for SEO purposes as a descriptive term.
But the whois record for nampagaragedoor.com shoes it was registered two years later — in 2011.
As for Boise Garage Door LLC’s 40% drop in business? Sunrise points out that it coincided with the overall economic funk.
Adam says
They should have never been granted the tm
John says
Nice Post
Chris says
Here in Seattle, there are several transportation companies that do business as “Seattle Town Car.”
The company that owns SeattleTownCar.com has a great asset, but are not pursued for infringement (I know them). I assume it is because the term is generic. Anyone can use it.
Rob says
look, i know there are people who will cry foul for a whole lot of nitty little reasons but this was a good and right decision. seriously, just how much BS can you throw around to justify using another company’s name as your web address? especially if you are in the same industry. a lot apparently.
yes sure, it COULD be a descriptive term too but CLEARLY the registrant knew that it was the full and exact name of its competitor. they knew what they were doing in removing the ability of that company to register its name as a domain, AND for the purpose of taking the business from those web visits and making money from them.
i am not saying this specifically for domain ownership/squatting, as a general rule: a thief/criminal/dishonest/unethical person will always have some kind of justification or excuse for doing what they did, and they will always claim innocence or ignorance. they may well have some minor valid reasons/points, but as a whole they know they do wrong.
craig says
So Sunrise recognized the value of an exact search term domain name and Boise Garage door didn’t?
And then they lost it because of a complaint that their better domain name increased business?
Further, it seems the domain registration preceeded
the TM……AND it is pure generic!
Didn’t think you could TM a place name combined with a generic term???
What this does point out is the commercial value of exact search term URL’s…..
This just doesn’t wash!
Street kid says
Google in their latest algorythym is making big moves to drop rankings of exact match domains (EMD) to prevent having an unfair indexing advantage over brandables and other domain names. Yet no domainers seem to be talking about it. I assumed that this would impact the domaining world significantly?especially with monetization programs like Frank’s building heavily around them? Since this post is about a generic EMD, I hope I’m not too off topic.
Andrew Allemann says
@ StreetKid – Frank’s monetization program is just a parking program — it doesn’t rely on search traffic. It relies on type-in traffic.
steve says
I just trademarked Washington Windows.
Microsoft is sued, and every company cleaning windows in washington. I am rich!!
John says
There is a good article in yesterday’s NY Times on AdWords and how small businesses are seeking alternatives. Thought it was very informative.
craig says
Look….a search engine’s job is to search for what you ask for. If you ask for pink dog crap, and pink dog crap is out there, job one for them is to display it. And if they don’t, and feature what they have decided you want, (for whatever reason) that’s manipulation….pure and simple. Further, would you continue to use a search engine that did not display the exact term you searched for if you KNEW it was out there? I sure as hell wouldn’t!
That fact is one of the main reasons they are on the hot seat all over the world.
What do you guys think?
Michael says
Unbelievable explanation by the panelist. He obviously hasn’t the slightest clue of how internet marketing works, as you rightly point out Andrew. The decision is based on personal opinion and not on actual facts.