As most domainers know there is an ongoing dispute between AOL’s Advertsing.com in its claim of right against Ad.com and Advertise.com.
In a case that strikes us a being very similar, a federal jury has decided in favor of New Jersey based Ad Magic ruling that its corporate name and Web sites, admagic.com, admagic-inc.com, admagicadvertising.com, and admagic.org, do not infringe upon the trademark rights of California based Advertising Magic Inc.
Ad Magic brought suit against Advertising Magic in 2006, seeking a declaratory judgment, following the receipt of a cease and desist letter which also threatened that it would bring a lawsuit for $450,000 if the domains were not turned over.
Advertising Magic even filed a UDRP against AdMagic in 2007 but the panel could not render a decision because of the then pending federal case.
Court records show both Ad Magic and Advertising Magic operated without knowledge of each other for roughly eight years.
Rosalind Boukis, president of Advertising Magic is quoted as saying:
“I’m completely disappointed by what happened,” says . “I don’t think the jury understood what was going on. I thought our trademark was protected. They can say that we’re not competitors because they’re in New Jersey, but we absolutely play in the same space on the Internet.” some of Advertising Magic’s clients have confused the two companies. “We’re called Ad Magic by a lot of people,” says Boukis.
Wow does this sound familiar.
This is exactly what AOL argued about its own Advertising.com being referred to as Ad.com.
If this federal court didn’t buy the argument, AOL’s claim against ad.com just got a lot weaker.
Hi Mike, it’s a quite different case because of the distinctive part of the mark and domains “Magic”. I don’t know the facts other than what you report, particularly whether they were in the precise same business or not. Of course a jury could have got it wrong… subject to appeal anyway. Then again, 8 years of co-existence is a long time to wait to complain. I’ve got a similar threat I’m litigating against, identical marks co-existing for ten years, obviously I like my client’s chances…
One of the determining factors is length of time they both were in commerce without any actual confusion–the normal length is 18 months. 8 years is well beyond a reasonable period of time.
Then how about ad.com and advertising.com?
From what I see, there is no claim against Ad.com (why do these two keep getting lumped together?)…there definitely isn’t a UDRP involved in either Ad.com or Advertise.com. It looks like Advertise.com is a case of trademark infringement and Ad.com…well, there is no case there. AOL is just commonly refered to Ad.com in the market place. If someone started going around the advertising industry calling themselves “ad.com” and causing confusion then it might be another story….maybe.
I think AOL is just protecting the brand equity they’ve built and invested in. Look ahead 10 years, and TheDomains.com is an even bigger website that everyone knows about, and you’re running consulting services and conferences…then all of a sudden the guy that owns TheDomain.com opens up a similar shop…would you brush it off?