Firm blames competitor’s use of domain name for 40% drop in business
It really ought to have registered the domain name earlier.
A Boise garage door firm 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 firm 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 stated 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 firm 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 clients 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 since 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 states “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 clients ought to be resolved the minute the webpage is loaded, since 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 clients or potential clients 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 firm 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 stated, 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 regarding other keywords that could be registered as domains to drive web traffic. Those include some that would be very expensive, counting GarageDoor.com. But nampagaragedoor.com was on that list. As stated by the panelist’s write up, Sunrise stated 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.
