digg

Facebook Connect Join Digg About

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.

Who dugg this? Made popular Jan 25, 2006

Digg DudeWhat is Digg?

Digg is a place for people to discover and share content from anywhere on the web. Digg surfaces the best stuff as submitted and voted on by the community. Take the Tour to learn more.

211 Comments

show profanity settings
expand all
  • 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.
  • 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.
  • 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.
  • 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/
  • inactive, 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.
  • AhronZombi, on 10/12/2007, -2/+5man fight em
  • Beanlover, on 10/12/2007, -0/+3"I'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*"

    If John Wayne would beat them to a pulp...imagine what CHUCK NORRIS would do to them! :)
  • cbackert, on 10/12/2007, -0/+2I am concerned this is not the entire story. It is not the policy of the WIPO to suspend domains in these types of situations.

    You should consult ICANN's Uniform Domain Name Dispute Resolution Policy, which is the guideline for WIPO's arbitration.

    Here's an abbreviated version of what they would need to qualify:

    * your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
    * you have no rights or legitimate interests in respect of the domain name; and
    * your domain name has been registered and is being used in bad faith.

    Bad faith is:

    * circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain...(extortion)
    * you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
    * you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
    * by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

    Now the key word in the qualifications is AND as long as you are using the domain in good faith WIPO will do nothing.

    If this is true you do have rights, please be aware of them.

    P.S. As to the people who suggested the IP section of the ABA, and the EFF, they are mistaken. Those organizations would do nothing more than to point you at WIPO documentation at best. The anonymous comment about attempts to sell the domain for $10k and having it used as evidence of 'bad faith' is spot on. Be able to back up any sale figures with expenses of transferring the domain and reasonable affect it will have on your business.
  • 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
  • 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.
  • hombrelobo, on 10/12/2007, -0/+2Replying to some of the comments (god, sooo many ...)

    First, THANK YOU, all of you.

    Then:
    - The domain is not empty. It is empty now because the WIPO has suspended, but you can see the full content in http://literatura-digital.com. It contains 1250 pages in Spanish ..... is that an empty site ?

    - I have a lawyer offering me to defend it for 3000 euros, but then what ? The WIPO is only arbitration, if they go to court afterwards I have to keep paying ?

    - I bought the domain because I studied in Deusto for 5 years and I thought it was a nice name. The university was called that way,and it is reasonably known in Spain. Then I created a site for writers.

    - I got the blogosphere involved, and even if I loose the domain at the end, I gain thousands of friend. THANK YOU. I almost cried when I saw the response (I actually cried, but I am too macho to confess it )

    - Shooting them in the leg .... that is thiking outside the box !!! :)

    - First time Planeta contacted me was 5 months ago with a letter from their lawyers asking me to transfer the domain to them and sending them a I-will-not-do-it-again letter.

    - I don't think bribing someone at the UN is a realistic solution .... :)

    THANK YOU ALL DIGG ARMY !!!
  • jagnum1fan, on 10/12/2007, -0/+2I Just sent this to a columnist at the Orlando Sentinel. Maybe she can help.

    "Hey Susan, I'm not sure if you are the right person to be emailing but I
    have an interesting story that the Sentinel might want to publish. The
    story deals with a company in Spain and an inappropriate request to hand
    over a domain that is rightly someone else's. For more info:

    http://wolfb.com/2006/01/big-publishing-group-demands-my-domain.html

    This article has been on the popular news site Digg.com and has an
    incredible amount of supporters for the one who's rights are being
    unjustly ignored. For the post on Digg.com you can follow this link:

    http://digg.com/technology/Big_Publishing_Group_demands_my_domain

    I would really appreciate any cooperation. The power of the media will
    help this young fellow fend off the big "evil" company. He needs all the
    support he can get and know the Orlando Sentinel reaches many many
    interested readers. Thank you.

    -Kyle"

    We'll see what she says...

  • BobbinFrapples, on 10/12/2007, -0/+2clearly not squat: http://web.archive.org/web/*/http://deusto.com
  • 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.
  • 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.
  • kidlinux, on 10/12/2007, -0/+1Hey people,

    rather than pissing and moaning on digg.com, send an email to arbiter.mail@wipo.int, the general inquiries address for the WIPO Arbitration and Mediation Center.
  • inactive, on 10/12/2007, -1/+2FOR THE DIGG ARMY:

    According to www.nic.es, the administrative contact info is as follows:

    PERSON OF ADMINISTRATIVE CONTACT
    Organización Editorial Planeta-de Agostini S.A.
    EMAIL gestiondominios@planeta.es
    Teléfono: +34 933440600
    Domicilio Avda. Diagonal 662-664
    Población: Barcelona
    Provincia: BARCELONA
    Código Postal: 08034
    País: España

    PERSON OF INVOICING CONTACT
    Nombre: Victoria Ruiz Herruzo
    Organización: Herrero & Asociados S.L.
    EMAIL: dominios@herreroasociados.es
    Teléfono: +34 915227420
    Domicilio: Alcala, 35
    Población: Madrid
    Provincia: MADRID
    Código Postal: 28014
    País: España

  • xenon901, on 10/12/2007, -1/+2Digg for the little guy!
  • thbb, on 10/12/2007, -0/+1A similar story is related in: http://www.taubmansucks.com/

    It's a funny read and has a happy end...
  • 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.
  • clokwise, on 10/12/2007, -0/+1If during these 4 years they never even contacted you regarding the domain, then you have further weight in your favour. There is a great deal of legal precedent on your side. Good luck!
  • lazyguy, on 10/12/2007, -0/+1Screw those bastards.

    Hope you win this thing.
  • 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.
  • RyomaNagare, on 10/12/2007, -0/+1checking on waybackmachine i found from jun 1998 this http://web.archive.org/web/19980613195621/http://www.deusto.com/

    it clearly shows that he did had a fair site with good intentions. at least 5 years before the trademark
  • ionix18, on 10/12/2007, -0/+1This is not pertaining to the Spanish laws because this is a .com domain. There is an international organization responsible for that. There must be 3 points made to force the domain move. One of them is "Was the domain registered in bad faith". I forgot the two others. Because you registered your domain 5 years before the trademark, they will have trouble to prove that you acted in bad faith.
  • byrons, on 10/12/2007, -0/+1hombrelobo - please contact me on this spare spam email address 'killroy03 @ hotmail.com' - I am currently going through the same thing with Sanyo! They are wanting to take away my domain just because they reeleased a new product with a similar name, I would like to know how you are getting on with this and what the outcome is.
  • peace888, on 10/12/2007, -0/+1Same thing happen to me with my domain name (www.polo-home.com)
    Polo Ralph Lauren, the big company came after my domain name, but lucky for me, i won my case and get to keep my domain name.

    You can read about my case here: http://www.polo-home.com/Default.aspx?tabid=68

  • elamr, on 10/12/2007, -0/+1Note To Self:

    "Do NOT piss off Digg Army."
  • mattrwilliams, on 10/12/2007, -0/+1Do not offer to sell the domain for $$$. This is considered bad faith and they will win the fight.
  • techer123, on 10/12/2007, -0/+1Fight them. I just don't get it. Could I search the net and find a .com name that I like, look to see if it is a registered business, if not registered it and call it mine, send a letter. Is it really that easy?
  • 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.
  • digitalArtform, on 10/12/2007, -0/+1DON'T OFFER $$$ without consulting a lawyer first. That can be construed against you.
  • 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
  • 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.
  • 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.
  • 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...
  • timewarrior, on 10/12/2007, -0/+1One question:
    Your website is for Spanish writers to publish their stories.And they are the biggest publishing group in spain.Does the fact that you use their name for attracting spanish writers have anything to with your fight?
  • realfinkployd, on 10/12/2007, -0/+1re: squatter comments

    Remember folks, the internet is more than just "web" and URLs can be used for any number of non web uses, like ftp, email, etc. I personally have a few URLs with no web server running but instead running things like my Kerberos server, LDAP, AFS, email, etc. The lack of a website does not == squatter in all cases.

    Finkployd
  • Doubledown, on 10/12/2007, -0/+0Stick it to 'em....

    They demand the domain, then you should demand a life with $$$. Then proceed to tell them we don't always get what we want in life.

    Then give 'em the ..I.. and walk away.
  • ShaDoWwork, on 10/12/2007, -0/+0sue them for damages and a public opolgee
  • noclip, on 10/12/2007, -0/+0TOUGH. LUCK. If it was important you could have registered with USPTO for $100.
  • rlutterb, on 10/12/2007, -0/+0I took a grad class in copyright law...

    It makes a difference that your domain is also the name of a town/neighborhood. Trying to fight you for a common name will be difficult... if it were Kleenex.com or ChipsAhoy.com then you'd be more likely to get screwed. I remember back in the day the example was that if a dude owned apple.com but used it legitimately to post pictures of and write editorials about apples (the fruit kind) then Apple, Inc would've hard a very hard time getting it from him... "apple" is a common word.

    Stick to your guns, countersue for court costs and damages. Also, what the hell authority does the WIPO have over your host to shut down your domain? I'd sue your host as well.
  • inactive, on 10/12/2007, -0/+0This gets a digg. Bring those bastards down!
  • jagnum1fan, on 10/12/2007, -1/+1It's time for a new world order in which the average Joe is more powerful than the corporation. All we have to do is help each other out. Corporations are the new dictators of this world. As one, the people they are trying to crush, will stand strong and put them back in their place as services (indentured servants even...) to the average consumer.

    Digg is moving towards being a political power in this new world of gross international corporate ruling. We are an army of voice, opinion, and shear numbers. Our voice will be heard and the evil will subside.

    Long live the Digg Army!!

    Contact your local newspaper to get this story published.
  • mroy, on 10/12/2007, -0/+0They know they don't stand a chance of getting it because you registered the name long before they trademarked it, and it's a common name which are two principal things they look at in these issues. I'd be surprised if a court actually accepted the case based on those two facts.
  • inactive, on 10/12/2007, -0/+0For all you folks that have been refreshing http://www.e-deusto.com/frontal/deusto/home.asp I think the site you should focus your energy on is:

    http://www.planetadeagostini.es

    They are the evil doers.........
  • ManiacFive, on 10/12/2007, -0/+0that sucks. you've been using your site for legitimate purposes for 8 years and now they roll in.

    Contact the papers my man, this isnt like the itunes.co.uk thing where the guy was just hosting ads and such or linking to napster you've a legitimate right to that domain

    I dont speak spanish but who are the www. Ediciones Deusto .com variants registered to? isnt this just greedy if they already own those?
  • NoSalt, on 10/12/2007, -0/+0Double Plus Digg ... Good luck with the fight!!!

    This could turn into any one of us one day so we should all be on your side! If it was an American company trying to steal your domain they would offer you coupons after they won ... DISGUSTING what the big companies get away with.
  • jervana, on 10/12/2007, -0/+0they want your domain, they pay you big bux.

    fight until you cash in my brother. :)
  • FuManchu, on 10/12/2007, -0/+0Umm,
    just hitting the "refresh" will usually reload the page from your cache unless you have your browser set to reload fresh from the URI each time. Jumping around on the internal links for a site might give their server more of a workout.
  • Fetching more discussions...
    Show 51 - 100 of 211 discussions

  • Add a Comment

    Login or register to comment!
    Or, sign-in super fast with your Facebook account ...


© Digg Inc. 2009 — Content created and posted by Digg users is dedicated to the public domain | Terms of Use Updated | Privacy Policy
DIGG, DIGG IT, DUGG, DIGG THIS, Digg graphics, logos, designs, page headers, button icons, scripts, and other service names are the trademarks of Digg Inc.