Does GoWaiter.com infringe Waiter.com’s mark?
Here’s an interesting lawsuit that shows the challenges of building a business on a descriptive (aka ‘generic’) domain name.
Waiter.com, a food delivery web site started in 1995, has sued GoWaiter.com, a similar service apparently started in 2010.
Waiter.com has a trademark for “Waiter.com”, which it bases its complaint on.
The plaintiff might have a case here (pdf).
If the plaintiff’s name was FoodDelivery.com, and someone created GoFoodDelivery.com, then it would be a hard case. Food delivery merely describes the service.
But does “Waiter.com” describe the service of food delivery? Maybe at a restaurant. But if I heard there was a web site called Waiter.com, I’d probably think it was a resource site or job board for waiters.
One reason Waiter.com is clearly miffed: if you search Google for Waiter.com, its competitor comes up #2.
GoWaiter.com, it should be noted, has federal trademark registrations for GoWaiter and GoWaiter.com.
[Update 8/22/13: apparently Waiter.com ended up acquiring GoWaiter or its assets, but Waiter.com has filed another lawsuit alleging that the defendant is still using the marks. It appears the domain name still belongs to the defendant.]
So then this begs the question as to why the USPTO examiner granted GoWaiter a TM in the first place?
Didn’t the examiner do a conflict check?
Isn’t that how it works, or am I missing something here?
Ms Domainer says
I saw three live trademarks at uspto:
Waiter.com (Waiter.com, Inc, registered August 1, 2000)
GoWaiter.com (GoWaiter, Inc., registered November 23, 2010)
GoWaiter (Go Waiter, Inc., registered March 15, 2011)
I could find no TM on stand-alone “Waiter.”
But there are other marks on _____waiter.
Maybe I’m missing something, but both have TM’s on their terms, and I see no confusion between the two services.
Besides, the descriptive characteristics are just too close for comfort for those TM’s.
I think the respondent has a good chance of winning this one, that is, if the panel hasn’t been tainted.
If I were the respondent, and I list UDRP, I’d fight this one through the courts.
Ms Domainer says
In addition, this looks like a domain grab because, frankly, “GoWaiter” is MUCH better (in terms of explaining what the business actually does) than just Waiter.
Registrability and passing off issues aside (separate concepts), GoWaiter was asking for trouble. Now they have it.
Andrew, you are right. This is a thorny matter with no obvious determination. The outcome will lie in the subtleties of the case.
Gowaiter has given up the fight after wasting so much money. They just said we will change our name. Now all the franchises are on the hook for it. They were told it would not happen but, if it did that the original parent company would pay for the change. That did not happen.
Maria Bracamontes says
so what about Waiter.com infringing on Waiters on Wheels which was trademarked in 1992. Isn’t that infringing exactly the same? And who is calling the kettle black?