On another forum I visit, one of the members posted about a cease and desist order they received from a company representing shutterfly.com
In the letter, it claimed that the owner of skutterfly.com was trying to captialize on the trademark of shutterfly.com when they registered the skutterfly.com domain name. They quoted the ACPA (Anti Cybersquatting Consumer Protection Act) in their email threat and demanded the owner stop using the skutterfly domain and turn it over to Shutterfly.
The truth was, Nate, the owner of Skutterfly.com creates cool t-shirts for kids, and it just happens that the first t-shirt he made for his daughter was a cross between a skull and a butterfly, so he put the two together and named his business Skutterfly! His site has nothing to do with photo printing.
It seemed pretty clear that Nate did not register the domain name in bad faith. However, when a small business owner gets these type of harshly worded emails that seem to be sent in order to intimidate the owner into giving up his domain, it can cause a lot of stress and anxiety.
Nate’s first thought was to ignore the email. Since it didn’t come from Shutterfly.com directly, he worried that the email might be some type of phishing attempt. After a bit of nudging from fellow forum members, researching his options from the great available information about reverse hijacking and the UDRP process, and consulting with an attorney, Nate decided to face the issue head on.
Letting go of his ego and emotions, Nate wrote a professionally worded email that explained the situation and his legitimate usage of the domain name. He then found the email addresses of Shutterfly’s top level executives and sent them his concerns directly.
Within a few hours, he got a response from the original company that Shutterfly contracted to “recover” the Skutterfly domain. It stated that the management team at Shutterfly forwarded Nate’s letter to the domain recovery company. Shutterfly’s legal team decided not to continue pursuing the Skutterfly domain after reading about Nate’s inspiring home business :)
Who says big internet corporations don’t listen?
The moral of this story is, if you get a cease and desist letter about your similar sounding domain name, take time to research your options. That means ALL of your options, including just giving up the domain name if the time/money/stress it takes to fight the issue is more than it would cost for you to use a different name (something even Nate considered).
Of course, there are cases when people do try to capitalize on another company’s trademark in order to benefit from the stronger brand. In this case, it shows that it IS possible for two distinctly different, legitimate companies to use two names that sound similar.
