Discussion:
Virginia
vitamin-shoppe-online.com and vitaminshoppeonline.com both belong to me. For 3 years I worked on a content rich site using these domains. The site was nealry completed when I received a letter from Bryan Cave in NY stating that there was another company called Vitamin Shoppe and they had a web site called vitaminshoppe.com
The attorney demanded I cease and desist and that I give my 2 domains to his client. Keep in mind I had never even heard of his client prior to this. I never intended to infringe on anyone. However, after much consideration I removed my web site. All 50 pages or so of it.
After more consideration, I decided not to give them my domains. I came by them in good faith and felt they belonged to me.
Then I did some research and discovered 2 articles : and

Both of these articles seemed to be saying that domain names do not constitute trademarks. Moreover, domains cannot infringe on trademarks unless the content of the sites dilute the trademark in question. Do I understand this correctly?
Since I removed the content of my site entirely, then all that remains is the domains which now have no content associated with them, hence I am not infringing.
Witness as other examples the following domains :
None of these domains is being contested. Therefore I do not see why mine should be. I have a right to keep the domains and do with them as I see fit, provided I do not dilute the trademark.
Am I mistaken here?
PS: I am unable to get the URLS to show up as links
Answer:
When did you first register your site?
Registrant:
Vitamin Shoppe Industries, Inc. (VITAMINSHOPPE-DOM)
2101 91st Street
North Bergen, NJ 07047
US
Domain Name: VITAMINSHOPPE.COM
Registrar: NETWORK SOLUTIONS, INC.
Whois Server: whois.networksolutions.com
Referral URL:
Name Server: NS-EAST.CERF.NET
Name Server: NS-WEST.CERF.NET
Status: ACTIVE
Updated Date: 09-jul-2003
Creation Date: 04-sep-1996
Expiration Date: 03-sep-2009
Answer:
I registered my site last year. But just because Vitamin Shoppe registered their domain before I did is no legal grounds for prohibiting my domains. Consider PepsiOnline.com and GEOnline.com. Both Pepsi and GE registered their domains years ago, but that does not give them a monopoly on their name with respect to their names being used in domains.
Answer:
But just because Vitamin Shoppe registered their domain before I did is no legal grounds for prohibiting my domains. Consider PepsiOnline.com and GEOnline.com. Both Pepsi and GE registered their domains years ago, but that does not give them a monopoly on their name with respect to their names being used in domains. Well then let me apologize profusely. I didn't know you were an attorney versed in International as well as U.S. Copyright and CyberSquatting laws.
And by the way, the two examples you gave are on their way to getting the same letter you did. Check out the records below.
PEPSIONLINE.COM
Domain Name: PEPSIONLINE.COM
Registrar: NAMESDIRECT.COM, INC.
Whois Server: whois.namesdirect.com
Referral URL:
Name Server: P2.ASADAL.NET
Name Server: P1.ASADAL.NET
Status: ACTIVE
Updated Date: 06-oct-2003
Creation Date: 05-oct-2003
Expiration Date: 05-oct-2004
GEONLINE.COM
Domain Name: GEONLINE.COM
Registrar: R&K GLOBALBUSINESSSERVICES,INC. DBA 000DOMAINS.COM
Whois Server: whois.000domains.com
Referral URL:
Name Server: P2.ASADAL.NET
Name Server: P1.ASADAL.NET
Status: ACTIVE
Updated Date: 05-feb-2004
Creation Date: 18-apr-2003
Expiration Date: 18-apr-2005
You will lose this if you persist. And in case you didn't know, a copyright case to defend, will cost you more than you ever thought about making in your lifetime.
Now, since you already know the laws pertaining to copyright infringement and cybersquatting, you don't need my help.
Sooooo, have a good life.
Answer:
Originally posted by vso
I registered my site last year. But just because Vitamin Shoppe registered their domain before I did is no legal grounds for prohibiting my domains. Consider PepsiOnline.com and GEOnline.com. Both Pepsi and GE registered their domains years ago, but that does not give them a monopoly on their name with respect to their names being used in domains. **A: and what did YOUR IP attorney advise?
Answer:
You're kidding....Right HG?
Answer:
I registered my site last year. But just because Vitamin Shoppe registered their domain before I did is no legal grounds for prohibiting my domains. Consider PepsiOnline.com and GEOnline.com. Both Pepsi and GE registered their domains years ago, but that does not give them a monopoly on their name with respect to their names being used in domains.
Could you please look at the articles I quoted in my post. They point to several cases where companies which trademarked their names came after ndividuals years later in an effort to hijack domain names. Witness the cases of cds.com and dsi.com
These cases seem to be stating that domains cannot infringe on trademarks unless the domain is a site that is similar to the trademarked named site and offers similar goods and services, hence diluting the trademark. So, unless you have trouble comprending law, why not just read those articles and give us your take on them?
Answer:
So, unless you have trouble comprending law, why not just read those articles and give us your take on them? Because those articles have nothing to do with internic policy. Who, by the way, has exclusive rights to assign names and who, by the way, will take your site offline as soon as the attorney sends them a registered letter requesting such.
And then my friend, it will be up to you to file suit to prove you have a legitimate claim to that particular name.
Now, quit practicing law and do as HG suggested. Hire an Intellectual Property attorney or not. It's up to you.
Answer:
Actually those articles do have something to do with Internic Policy, especially the second one.
Please read
and

Just because your domain has a name that has been trademarked does not mean you are infringing nor does it mean you are cybersquatting.
Answer:
So who owns the federal tradename/trademark vitamin shoppe?
Answer:
Vitamin Shoppe owns the trademark. But the domain name is not protected under it. Again, please read those two articles. They are interesting and address this very issue.
Answer:
Regarding the CDS.COM case,
"unlike a patent or copyright, a trademark does not confer on its owner any rights. There is no prohibition against the use of trademarks or service marks as domain names. Only uses that infringe or dilute an owner's trademark or service mark are prohibited."(17) The Court stated that "'CDS' or 'cds' are the initials of defendants' businesses, and as such are descriptive of these businesses. ... While 'CDS' may have acquired a slight secondary meaning with their consumers ... the mark itself now denotes a term in common usage, and is not entitled to protection as a strong mark [emphasis added]."(18) The Court had the following to say about the trademark: "[d]efendants now seek to expand the scope of this mark's protection to preclude the use of 'CDS' in reference to compact disk products and services, and this renders the mark invalid as being generic"
Answer:
And who owns the domain name AND first registered?
Answer:
Conclusion. These three cases illustrate what has come to be called "reverse domain name hijacking",(25) in which a trademark owner covets an existing domain name and seeks to gain possession of the domain name by launching a challege in NSI's "court" where the challenger almost always wins without consideration of the merits. These three cases demonstrate that the innocent domain name owner who is prepared and able to fund a lawsuit can overcome the initial disadvantage created by NSI's policy by having a regular court consider the challenge on its merits. The cds.com and dci.com cases also warn the trademark owner who engages in reverse domain name hijacking that the outcome may be a court opinion that weakens the trademark.
Answer:
as is stated in these cases, to my very untrained eye it seems that who did what first is not relevant.