WebTrends.com Threatens Nigerian Site WebTrendsNg.com
Nigerian self-acclaimed web strategist, Sherrif Shittu (aka Possicon) has recieved a threat letter from the lawyer representing the US based web analytics company, WebTrends, Inc., concerning the use of the WEBTRENDS mark in his domain name.
Apparently, the domain name (www.webtrendsng.com) was recently registered by Mr. Sherrif Shittu, and is being used to track web trends in Nigeria. On the other hand, the domain name (www.webtrends.com) was registered since December 1995 and claims full ownership of the brand name, trade mark, domain name, etc, which means that any company or website that uses that name ‘Web Trends’ could mean a violation of trademark laws and could result in a case of trademark infringement.
We got the scoop about this when we noticed twitter updates from Possicon about the issue. Here are some of them…
We contacted the owner of webtrendsng.com, Sherrif Shittu and were able to take a look at the letter sent to him from Hillary A. Brooks, a Marger Johnson & McCollom lawyer dated March 23, 2009. Here are the excerpts:
It has come to our attention that you using the WEBTRENDS mark as a domain name in association with www.webtrendsng.com and are displaying content relating to Internet marketing. The effect of this use is that Internet consumers searching for WebTrends are being diverted to the webtrendsng.com site. This practice called, initial interest confusion, is actionable trademark infringement and unfair competition in the United States.
Hillary A. Brooks, the lawyer representing WebTrends, Inc. who has her signature on the letter further stated:
If we do not hear from you by April 10, 2009, we will have no choice but to assume that your infringing activities will continue and will consider all actions available to protect WebTrends’ trademark rights and to obtain damages from your organization.
While we’re not sure if WebTrends, Inc should have monopoly over any domain name with those words, we think that the terms ‘web’ and ‘trends’ are generic words that could be used by anyone or any entity. See Target Brands, Inc. v. Eastwind Group.
Besides, if WebTrends, Inc. has registered the mark WEBTRENDS in the U.S. Patent and Trademark Office, does that mean that the U.S. trademark law could supercede that of the Federal Republic of Nigeria?
If Web Trends Nigeria has been incorporated under the Companies and Allied Matters Act of Nigeria does it mean that the company can not use www.webtrendsng.com or www.webtrendsnigeria.com or even www.webtrends.com.ng as a domain name for their business?
From our research, WebTrends, Inc. is not registered in Nigeria and does not have any offices yet in Nigeria. The company also doesn’t cover web analytics from Nigeria and thus may not have any interests in Nigeria.
Since we’re using www.startupsnigeria.com, we are just wondering if the owners of www.startups.com or even www.startups.co.uk would send us a threat email such as that asking us to cease the use of ’startups’ in our domain name or even refrain from listing, posting, indexing, linking, storing, or any other variation confusely similar to Startups’ marks. That would just be funny.
So the questions are: Does WebTrends, Inc. have monopoly over the domain name mark? Do they have the right to take the owner of www.webtrendsng.com to court?
If Read Write Web has featured 10 Future Web Trends and SEOptimise has written about 30 Web Trends for 2009, is ‘Web Trends’ not a generic term or phrase?
What are your thoughts?
This is a tricky one. There are international treaties that Nigeria may or may not have signed on to that could impact this.
I suggest he not allow them to bully him first of all. That is a common legal tactic, that may or may not be a bluff. In this case I lean towards bluff. This is a first of its kind and honestly webtrendsng is too small fry for full blown legal action (maybe? )
Possicon should contact the EFF (http://www.eff.org/) , its kind of in the line of what they do and they might be able to point you in the right direction…
This is a tough one, Web Trends definitely has to go after anyone who is seen as “infringing” their copyright or they can lose the right to own the trademark.
One thing that should be noted, i think, is that the ISP hosting webtrendsng.com is probably not based in Nigeria and the terms for resolution will probably not be based on 9ja law or in a 9ja location so teh role the ISP will play here must be understood. This is why a lot of “infringers” host in obscure places, to complicate the process.
interesting question - Did they choose the name Webtrendsng because the words are used in everyday english or because “Webtrends.com” had already established the name and he would just be riding their wave?
Also saying that ‘Web Trends’ is a generic term or phrase because the words are used in everyday english and so they cannot be trademarked does not hold. “google” has been a word in the dictionary for years and even now that we say “google it” doesn’t mean that google is a generic term.
And the person who said the names are not confusing must have been joking, right?
Copyright law is a tough one. Mr Shittu should fight if he can, I would. But people need to realize that you are dealing with businesses and their livelihood and not a hobby, so if you want to play in the kitchen get ready for the heat. It might be a tough fight.
On a side note IMHO, 9ja sites should get their act together. I see a lot of sites that just throw anything out there and violate things left and right, thinking that there are no implications for any of their actions. Put in some extra effort in setting up from the beginning to avoid potential long term issues because if your site is successful, copyright issues can easily come back and haunt you. Not saying that this is necessarily the case here but the WWW is not 9ja where anything goes.
Good luck, let us know how it goes.
I am not a legal expert but from my point of view it’s a load of BS. Note in the letter it says “unfair competition in the United States”.
Their trademark will only protect them in the US if they applied for US protection, as long as Webtrendsng.com does not give any indication or partake in any form of business in the US they are not infringing on their trademark.
My view is this, it’s because it’s a Nigerian site and with the reputation that we have it’s not surprising. If a UK company registered webtrendsuk.com and had a registered business in the UK they will not be able to touch the site except where they have registered their trademark here in the UK or registered webtrends.co.uk (which they have done).
One other point to note is this, they will have to prove in a court of law that customers that come to webtrendsng.com will actually confuse it with webtrends.com, and that’s a load on BULL.
A strongly worded email stating that Webtrendsng.com tracks only webtrends in Nigeria and that their US trademark does not extend to Nigeria.
The worst case scenario is that you offer to put a disclaimer on your home page stating that you are in no way connected to webtrends.com.
Whatever you do don’t give in to them, and if possible seek legal advice.
I’m with Kay on this one. Very on point. While they have a right to protect their brand name, I think this tactic they’ve resorted to is tantamount to trying to bully Sheriff to pack up and shut down.
The claim that customers trying to get to WebTrends.com end up on WebTrendsNG.com, in my opinion doesn’t hold a lot of water, they don’t play in the same niche or geographical area. While webtrendsng.com deals with happenings in the Nigerian web space, webtrends.com focuses on analytics and they don’t even cover Nigeria. So, if you know what you’re looking for, even if you end up on a wrong domain, if you don’t find what you need, won’t you move on?
Also, if you run a google search on both “webtrends” and “web trends” WebTrends.com is number one and WebTrendsNG.com isn’t even listed on the first 5 pages and most people don’t go further than that. You have to specifically search for WebTrendsNG or “Web trends nigeria” or “nigerian web trends” for the WebTrendsNG.com domain to be listed.
I’d hate to think that this salvo was only fired because of the connections to Nigeria, I would expect that people as savvy as they are to be more cautious in their dealings with others.
I think Sheriff should not give up his domain, but then again he should seek legal advice and use a couple of the points myself and Kay have outlined here.
I saw that twitter discussion (part of it anyway).
Here’s the deal. Web trends clearly owns webtrends.com and has a right to worry about infringement. They can rattle Possicon’s cages but there is no getting away from the reality that webtrendsng is actually a distinct web addy that does not dilute webtrends.com’s brand and name. This will not go to court, if they have that much of a problem they can offer Possicon some money and buy the address. The value is easily determined and shouldn’t be a problem.
@ possicon: if you read this, there is quite a bit of law out there on the matter. I am going to assume that you had no intent to ‘piggyback’ on webtrends.com but simply chose a name for your site that best reflects its mission. The only issue you face is financial. However, with serious planning you can destroy this attack in its infancy. Consider creating other web addresses, that reflect the site’s mission and have them link to your site in case. “onlinetrendsng.com” is actually available so you might want to scoop that up quickly.
In fact, being that Dora Akunyili is busy trying to ‘re-brand’ Nigeria and Maduekwe is desperately courting Nigerians in the diaspora, this is a prime way for the Nigerian government to step up and support home grown talent. But if they don’t and you want alternative help, there are ways to get things done. I believe a decisive strategy that takes advantage of numbers against the financial superiority of your opponent could help calm things down.
Just realized I should leave this message at possicon’s…
There is no better time to feel like a Nigerian than now. I feel like a member of a caring community I must say.
@solomon
no piggybacking intended, as u can see on the site it’s strictly for good business purpose.
While I cherish that name, and as much as I know that a website could be promoted to its niche market “irrespectful” of its name; If there is a need to consider another name, I think that will be decided after thorough thinking. For now, am not ready to bow-down.
What is at stake?
1. I have a website running and a lot is in plan for that name
2. We have released 2 editions of our magazine bearing that name
3. Name has gained popularity in its short lifespan so far
All this are investment and one can not just let it go like. In the same vein, I am still open to your suggestion and insightful ideas.
As we proceed, I will bring it to the knowledge of the community.
I Love you all my brothers/sisters.
Thank you.
Go for it sheriff this people(oyinbo) dey bluff nice one your case wud expose more talents and direct the world to naija they are bluffin keep d naija flag moving! You own your domain and why can’t facebook sue allfacebook.com ? Abegi
@Qube - Good point. Also why can’t Facebook sue InsideFacebook.com?
I am tempted to ask him to call their bluff. In the meantime, he should seek legal assistance in Nigeria.
Hmm, this is serious. Its always better to use a different name entirely if you want to blog.
Name means everything. If the mail is fom their company really, then you are up for some trouble. I wonder if you will answer them in court if they eventually throw out a case against you.
I don’t know what to advice on this. Send them a mail to give you more time to think of something. Then see more advices from people and chose what to do.
Remember to chose something you will claim responsibilities for entirle if you loose.
I wish you goodluck.
I think its wrong to use webtrendsng it sounds like a branch of webtrends in NIGERIA. Its like building a site called facebookng.com that would make it look like a nigerian site by FACEBOOK. I really do not have a business in this but I feel its quite wrong.
possicon,
This may be a blessing for you, and its not even in clever disguise. You may be leverage the publicity from this notice to your site’s advantage.
You may want to try writing a blog post about this and then posting it on Hackernews
while i sympathize with possicon, i can remember seeing the conversation in my twitter stream.
i think possicon should move to a new domain name. its much easier that way. you may want to fight now, but the odds are very much against you. i dont know how far you’ve gone considering the fact that this issue is about a month old now but for real, webtrendsng sounds like a nigerian branch of webtrends inc. there’s no gainsaying about it.
@qube @loy, facebook didnt sue allfacebook.com or insidefacebook.com and lost. they just dont want to. there are a few companies like that who dont mind.
adobe is an example of a company that would go any length to protect a trademark. sometimes last year, they issued a “cease and desist” to the operator of the freshairapps.com domain name cos they had a trademark on AIR. they didnt mind the fact that the site was actually promoting applications based on an Adobe platform. the dude had to change his domain name to refreshingapps.com.
remember that this big companies have lawyers on their payroll. they basically have nothing to lose. its just wise to ride on the publicity and get a new domain name in the process.
@Ezra - Thanks for sharing those links. I haven’t contacted Possicon yet to know the latest. Think I should now. Will be sure to provide updates soon.