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Big Publishing Group demands my domain

wolfb.com — I registered deusto.com in 1997. Now, eight years later, Planeta Agostini, one of the biggest publishing groups in Spain and owner of Ediciones Deusto, sends me letters demanding me to transfer them the domain, because they registered the trademark "deusto" in 2002 . Now they have presented a complaint to the WIPO and the domain is suspended.

Bury

hombrelobo 2 years 217 days ago, made popular 2 years 217 days ago

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AhronZombi, on 10/12/2007, -2/+5man fight em
Flashman, on 10/12/2007, -0/+4(I'm not a lawyer, better just say that first.)

I see via WHOIS that deusto.com was registered on 5 August 1997. Can somebody provide a Spanish trademark search page? I can't make head or tail of my Google searches for one.

Unfortunately you are going to have a serious fight on your hands. Even though you got in first with the domain name, and the trademark wasn't registered until 2002, they DO have the advantage of a) money and b) being a big firm. The same factors worked in Apple's favour in the case over the ownership of itunes.co.uk.

I think one big question is whether Planeta Agostini was using the 'deusto' brand in its business at the time you registered the domain. If that's the case, the court may very well side with them.

But if they've just walked in and decided to use a name that you've been using for years, then that's a problem.

Either way, best of luck and keep us all posted.
suppazone, on 10/12/2007, -0/+0man do they suck - fight em. Contact local media - They will hate the bad press
hombrelobo, on 10/12/2007, -0/+2Yes, I can give you a link to the Spanish register of patents:
https://www.marcanet.com/web/registro_marcas1_resultado.asp?pag=1&ns=true&marca=deusto
(this is a search for the term "deusto" on it, and only in Spanish, sorry)

And they were using the brand "ediciones deusto" then. But at that time I was studying at the University of Deusto, owner of deusto.es. And Deusto is a place, a neirbourhood. I don't understand how they can claim it for themselves.

Thanks for the help
Toiling, on 10/12/2007, -1/+0damn. I wish you good luck.
mrfloppy, on 10/12/2007, -0/+1as the first comment on your blog states - contact the electronic frontier foundation (http://www.eff.org/). even if they can't held directly, they might be able to put you in contact with people who could.
hombrelobo, on 10/12/2007, -1/+1I already did, thanks, it is a good idea. And I am happy I gave them a few dollars last year ... :)
xenon901, on 10/12/2007, -1/+2Digg for the little guy!
erichapkido, on 10/12/2007, -1/+0I hope you win. Good luck.
adml_shake, on 10/12/2007, -2/+0say you'll sell it to them for $XXXXX amount of dollars, and they have to provide a link for a certain amount of time to your new site. Most companies will do it just so they don't have to bother with the hassle.
ep0niks, on 10/12/2007, -3/+0***** them man, at least they could offer you money for it instead of acting like.. Microsoft.

I wish you good luck.
adml_shake, on 10/12/2007, -0/+1"Man, don't you mean more like $XXX,XXX ?? :)"

You don't want to be too greedy, or they will tell you to ***** off.
celeb, on 10/12/2007, -3/+0*****..
beejay54, on 10/12/2007, -0/+1Actually you should be okay on this one. There is a pretty historic case involving oreos.com and trademark here in Canada. And I'm pretty sure there are limitations to the application of any given countries trademark law to a top level domain like .com, .net, .org and so on. So long as it doesn't look like you were squatting on the domain you should be just fine.
sagaciousblonde, on 10/12/2007, -1/+0Best of luck, dude.
chrisu, on 10/12/2007, -1/+0if they lose in their attempts to steal the domain from you, send them an email saying something along the lines of "I /was/ going to sell you the domain for €x,xxx but now, due to your spite the price is now €x,xxx,xxx, have a good day. PS, I will be claiming my costs back from you".
wetelectric, on 10/12/2007, -1/+0good luck dude... remember gmail is known as googlemail in the uk
robnoxious, on 10/12/2007, -2/+0I am on your side, but I would be even more on your side if you did something with the domain name ... created some kind of website. It looks like you are squatting.

Good luck with everything.
Sirocco, on 10/12/2007, -0/+9NO! Don't offer to sell it, otherwise they can claim you only held the site to extort money from them, and they'll take it from you without so much as a fight.
BritOverseas, on 10/12/2007, -2/+1Yep, my answer, buy me or go away, simple...

They have to make it worth your while...
johnmacintyre, on 10/12/2007, -1/+0I hope the EFF helps you not only to defend yourself, but also to sue them for damages.

Good luck.
ikkebra, on 10/12/2007, -0/+1been there, done that

I was able to keep the domain which was rightfully mine, but not til after a $30,000 in lawyer fees.
marcopse, on 10/12/2007, -0/+0http://www.theos.com/dispute.html
nightwing2000, on 10/12/2007, -0/+5Don't know about Spanish law, but if I recall - in some jurdistictions making an offer to sell - especially an extortionate amount - is considered evidence of cybersquatting and trademark infringement. (Britain, esp. - and California?) Once they show you only did it to suck money out of them (clever lawyers twisting words) then you lose the whole thing, no money, possible criminal charges of trademark infringement.

Talk to a lawyer.
tmanka, on 10/12/2007, -0/+2The law seems to be in your favor. I assume that you were actually using this domain and not squatting on it, aka putting it up to the highest bidder because you knew about this company in advance and wanted to make some cash from it. If that is not true then you will have a tough fight on your hands. If it is not true, you were using it for your own purposes, and not related to the Ediciones Deusto line of business then you are all set. Let us know what the EFF says, they may take your case pro bono. I would like to root for you on this, but the circumstance around your intent (9/10ths of the law hehe) in acquiring and holding on to the domain have not been addressed.
Noloco, on 10/12/2007, -0/+0Those idiots. How dare they. I mean honestly. You have a website with visitors and now your account is suspended ? How can that be ? I mean doesn't host and you have some type of contract that only if you void something then they could suspend you ? That is lame. I hate bullies. You even said there was .net and stuff. Why couldn't they just move over.
mkjones, on 10/12/2007, -0/+0Get the PRESS/TABLIODS/BLOGSPHERE involved! It will work wonders for you...........
Joe_rigby, on 10/12/2007, -1/+0I'd pillage them for legal expenses, and then rape their women for the inconvenience. Plus you've got to shoot one of them in the leg, it's the only way they'll learn.

That's just what I would do - There's no telling what John Wayne would do if he were here. *shudders*
modsuperstar, on 10/12/2007, -0/+2Don't ask for money. Most of these cases are tried with the company saying you're trying to extort money out of them. In the end you should win this battle if you've used the domain in good faith before they registered the copyright. I would lodge a complaint ICANN or something like that. There are precidents for resolution in these kinds of issues.
antbloor, on 10/12/2007, -0/+1not sure if this is completely appropriate, but look into this case, a British insurance company actually counter sued the oil giant Exxon when they were threatened.

http://en.wikipedia.org/wiki/Exxon_Corp_v_Exxon_Insurance_Consultants_International
Arramol, on 10/12/2007, -0/+1Normally I don't Digg when someone posts their own blog, but for once I think it's actually justified. I hope this fight goes well for you...looks like corporate Nazis aren't a phenomenon exclusive to the United States.
Xoligy, on 10/12/2007, -0/+0"good luck dude... remember gmail is known as googlemail in the uk"

Yes but the gmail.com wasn't registered before gmail was a trade mark.
kdingo, on 10/12/2007, -0/+4"It looks like you are squatting."

"I assume that you were actually using this domain and not squatting on it..."

RTFA guys, the domain has indeed been in use and in light of current events, was moved to http://literatura-digital.com/
Abx0r, on 10/12/2007, -0/+0Get a good lawyer. File a counter-suit for costs of court. Win. Come out even. Tell the ***** to go jump off a cliff.
BobbinFrapples, on 10/12/2007, -0/+2clearly not squat: http://web.archive.org/web/*/http://deusto.com
bpinard, on 10/12/2007, -0/+0erichapkido said "I hope you win. Good luck."
adml_shake, on 10/12/2007, -1/+0Yeah if he can prove that he was infact USING the site and that it had traffic to it on a regular basis, then they don't have a ounce of proof that shoes he was a squater. It's just a business transaction. You have a item they want, make them pay for it.
FredWatanabe, on 10/12/2007, -0/+0This a a huge fight, you should probably get another job on the side to pay the legal fees.

digg for every little guy on the planet.
digitalArtform, on 10/12/2007, -0/+1DON'T OFFER $$$ without consulting a lawyer first. That can be construed against you.
eric_n_dfw, on 10/12/2007, -0/+0I'd say, from http://web.archive.org/web/*/http://deusto.com that he's not a squatter. (But then again, I don't speak/read Spanish so I have no idea what's on the pages! :o)
gwydion04, on 10/12/2007, -0/+1Ever notice that http://www.nissan.com does NOT go to the car company? I think this guy has a precident he can cite.
joerao, on 10/12/2007, -0/+1I had a similar situation with a .biz domain I had registered. A large German shipping company tried to steal it from me. I went into mediation with the WIPO, and the ruled in favor of me. The situation is a little different with .biz domains, but you may find some useful information in the decision:

http://arbiter.wipo.int/domains/decisions/html/2001/dbiz2001-00033.html

Oh, and no lawyers were necessary, just had to write up the counter complaint myself. Make sure to consult the WIPO's past decisions, on the website above, and make sure to do your homework. Sounds like an easy case in your favor...
dhughes, on 10/12/2007, -0/+0 Yes, let us know what the Electronic Frontier Foundation (EFF) has to say.

If someone from the EFF is reading this let us know, please.
breakneckridge, on 10/12/2007, -0/+0Fight the power man. Keep us updated.
raano, on 10/12/2007, -0/+0Normally if you register a domain and don't do much with it, the bigger guy will win easily. But it seems that this isn't the case. You have a good shot at winning, as long as you can show that this was an active site. Try using the "wayback machine" to prove your case that there were regular updates and an active, growing community at Duesto. Don't ask for money, otherwise they'll just see you as a cybersquatter looking for a big payday, and you'll lose for sure. Good Luck!!
chazi, on 10/12/2007, -0/+5First, whatever you do, do not offer to sell the domain to them. If you even discuss a price with them, a price that is more than your out-of-pocket costs, then they can use this as evidence that you registered the domain in bad faith (i.e. simply to profit/blackmail the larger company). This is a sure-fire way to loose the domain.

Second, the WIPO site has all their previous decisions. You can read many examples similar to yours. Some keep the domain, others loose. Start reading them to become familiar with the grounds on which these sorts of decisions are made.
http://arbiter.wipo.int/domains/decisions/

Do not neglect to respond to any communications from WIPO in a timely fashion.

Things strongly in your favour:
1. You have owned the domain for a long time
2. You had a fully operational website at that address (therefore you were not cyber-squatting). Be prepared to prove this with the website on a CD, and the log files showing your traffic over the years. This would be very strong evidence.
3. They may own the trademark, but there must be a "likelihood of confusion" between your website and their business. If they are in paper publishing, you have to be able to show that you are not gaining advantage by piggy-backing off their trademark.
4. Submit as evidence all the other examples of Deusto names and websites you can find. This dilutes their claim to your domain.
5. It looks like they already own e-deusto.com. It pops up on a google search alongside you website. Print out this page NOW and get the taglines translated.
6. Call a lawyer. Call a lawyer, Call a lawyer. Defending should not cost you too much. Their are no court appearances. simply some letters and evidence sent in to the panel. They then make their decsion. You could do it yourself, but only after talking to a lawyer. Spend a little money to first talk to a lawyer, then do the rest yourself.

Hope this helps.
breakneckridge, on 10/12/2007, -0/+0After you WIN, sue for your lawyer fees.
Mwd500, on 10/12/2007, -0/+0Don't give into them!!!
ginty, on 10/12/2007, -0/+0I say fight it, but just be prepared for a fight. Ask the guy that owns nissan.com. Thats his last name, he's owned the domain for like 10 years, but when Nissan motors wanted it, and he wouldn't give it up, they kept taking him to court.
leftfoot, on 10/12/2007, -1/+0I *HOPE* we get another Price Rite Photo thing going on here!
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Big Publishing Group demands my domain

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