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View Full Version : What's mine domain worth?



goldenbug
10-10-2012, 11:46 AM
My company, Superior Exterior Eavestrough, owns the domain www.superiorexterior.ca. Another company, Superior Exterior Cleaning, trade marked the name Superior Exterior (which I dispute is a name that can be trademarked). However, he wants my domain name and I told him $7500 and I would change my name to Superior Eavestrough. He has come back via his lawyer with an offer of $5000. and with other conditions:

1. That I sign a co-existance agreement prohibiting me from providing certain services under the name "Superior" or "Exterior".
2. That I not adopt any other domain name that has the words "Superior" or "Exterior" as part of it.

I also own many other variations of Superior Exterior in domain names which he would want if he knew about them.

www.superiorexterior.ca is a top level domain name. He wants it. I've owned it, used it and advertised it for 5 years. What is it worth? What is all the above stipulations worth? Thanks for your help.

puckerhuddle
10-10-2012, 02:56 PM
Interesting case
this is my take.
Firstly according to the Canadian intellectual property office records the trade mark was applied for and granted in 2009. If you have had the domain name for 5 years there is no claim that can be made on your domain name since you had it registered prior to his application for a trade mark.
Trade marks are also specific to certain services or products. The whole premiss for a trade mark it to protect consumers.
The other company has listed the following services as ones covered by the mark.


SERVICES:
(1) Cleaning and washing of building and house exteriors, namely cleaning and washing brick, stucco, vinyl siding, aluminum siding, concrete, stone, windows, eaves troughs, gutters, soffits, fascia, driveways, and walkways; repairing of eaves troughs.
(2) Cleaning and washing of commercial buildings, namely cleaning and washing store fronts, awnings, walkways, exterior signage, and windows; pressure washing building exteriors and windows.
(3) Painting of residential and commercial structures, namely painting buildings; cleaning and sealing of patios.
(4) Cleaning and staining of wood decks and wood fences.

There would be an interesting case to be made that he has infringed on your trade name but to the case of the domain name since he has no claim to it because of your registering the domain prior to his trademark it boils down to a negotiation. What is the domain worth to you as far as business and how much goodwill business will he pick up. I would think that your offer was more than generous.
It is always interesting that a lawyer will try to tie unrelated items into a negotiation. The sale of the domain name is one deal and your company name is a totally separate deal. These issues should should be dealt with under their own merits and not as a bundle.
Is your business incorporated?

I would also wonder if the other company is infringing on your trade mark under common law since you have been operating under that name for some time. A trade mark does not have to be registered it just makes things clearer in the case of a dispute.

goldenbug
10-10-2012, 07:02 PM
Thanks Puckerhuddle. I am willing to change names based on certain conditions. However, I am firm on my price of $7500.00. I have a great name I can change to and there are no similar names in the area. He did start his business in 2000 and I in 2007. However there is little commonality in what we do. I may lose some business but I doubt much, if he agrees to some of my stipulations.

I have advised him that I am not willing to change names because I have to. I believe I have A Common Law right to the name. I am changing it out of good will and cooperation. And besides, the $7500 will help with my son's education expenses! LOL

puckerhuddle
10-10-2012, 08:09 PM
Best of luck. Glad to have you on here.

Domain
10-12-2012, 08:57 AM
personally i stick to my guns. What about time and frustration, the time you have put into this name, the inconvenience of changing your name and possibly losing some clients.. If it were me, I would of countered the $5000 by raising the asking price from $7500 to $8500 and if they counter lower I raise it to $9500.. I think you are on solid ground. If you need a good lawyer let me know.. regards

DropWizard.com
10-14-2012, 03:11 PM
A lot of the law on this would revolve around whether or not you are in the same trading area. For instance if you are in Toronto and he is in Alberta you could have local common law rights to the name and he would have canadian wide rights except toronto.

The words superior and exterior are generic and can't be restricted EXCEPT by agreement so they have no leverage there.

This is the type of case that could run into tens of thousands in court so I can't see him moving forward in that direction. But the caution I see is that at some point it becomes cheaper to rebrand his company than continuing and paying through the nose. Even if he has to re-trademark something.

$7500 and a co-existance deal that recognizes the other domains you own (without restricting your right to resell them) sounds reasonably good considering the lack of value the domain would have otherwise.

c_j
10-16-2012, 12:54 AM
Whois goes back to June 2008, and Archive.org shows a developed site as far back as Oct 2008 for superiorexterior.ca (http://superiorexterior.ca). See it at: http://web.archive.org/web/20081002040701/http://superiorexterior.ca/

The trademark vs. web presence thing is definitely a little dodgy since you are only 16km away from each other: google map link (http://maps.google.ca/maps?f=d&source=s_d&saddr=Stoney+Creek,+ON&daddr=Burlington,+ON&hl=en&geocode=FVKYkwIdeZM_-ymjzpjrh5gsiDFEPbuQhrBlJg%3B&aq=0&oq=burlington&sll=43.227218,-79.719559&sspn=0.096687,0.264187&vpsrc=0&t=h&mra=ls&ie=UTF8&z=12)

The timeline (as reported) is as follows:
2000 SEC starts in business
2007 SEE starts in business
2008 SEE registers "superiorexterior.ca"
2009 SEC filed and formalized the trademark "SUPERIOR EXTERIOR" for cleaning (including eavestroughs), washing, painting & staining of buildings
2011 SEC advertised and registered the trademark "SUPERIOR EXTERIOR"

In the trade mark application, SEC claims that the trademark has been used for the different services starting between 2000 and 2004.

I don't know jack about trademark law, so I'll just present these facts and say that what I know about these matters is that it comes down to money: If SEC has a lot more cash to blow on lawyers than SEE, then take the cash and change the name. If it's the other way around, then maybe SEE should lawyer-up and go after it's portion of the trademark (cleaning of eavestroughs).
DISCLAIMER: I AM NOT A LAWYER; DO NOT LISTEN TO ME.