As a consultant, as far back as 2007, when businesses used to come to me in need of redevelopment, I would tell them that the best thing they could do was to “get WordPressed”.
I explained how they needed to take their dinosaur HTML site and have it converted into the most search friendly system I knew of, and that’s how this particular website was born.
It’s a specialized niche site, to fit the growing industry of converting sites into WordPress, and that’s how the domain name came to be chosen.
Yesterday however, attorneys for the WordPress Foundation sent me an email, saying that we are in violation of the WordPress copyright by using WordPress in the domain name. ;(
On the one hand, I realize that a company does have the right to protect themselves from misuse of their trademarked name or logo, but on the other hand, I’m surprised that they have nothing better to do with their time than go after supporters like us, who provide services based on their product.
Here’s a copy of the letter in its entirety:
Re: Trademark Infringement By
Dear Mr. Hendison:
I write on behalf of the WordPress Foundation to ask that you stop all use of the domain and transfer it to WordPress and that you also remove the WordPress Logo from your site. As you know, our client is one of the world’s most famous providers of blogging and website support services and offers these services under its famous WORDPRESS trademarks. It has used its WORDPRESS trademarks for many years and this trademark is the subject of many trademark registrations throughout the world including the United States.
As I am sure you can understand, in business a company’s brand is its reputation with customers. For this reason it is critical that a company have the ability to control how its brand is presented to the public. Further, the company has set out its domain name policy on the WordPress.org website as follows: “For various reasons related to our WordPress trademark, we ask if you’re going to start a site about WordPress or related to it that you not use “WordPress” in the domain name.” http://wordpress.org/about/domains/
Your use of the domain name(the “Subject Domain”) and your use of the WordPress Logo is without the permission of WordPress and removes its brand reputation from its control since visitors to your website will wrongly believe that the site is controlled by, or at least approved by WordPress when this is not the case.
In order for the company to maintain control of its reputation, we ask that you transfer thedomain to WordPress and remove all uses of the logo from your website. Should you care to discuss this matter please don’t hesitate to call or email me. I await your reply.
Very truly yours,
Steven M. Levy, Esq.
FairWinds Partners, LLC
1632 Wisconsin Avenue, NW
Washington, D.C. 20007
United States
+1-202-341-3722
steve.levy@fairwindspartners.com
Now I really don’t have the time or money to get into some legal battle that I would probably end up losing in the long run, so I said I would come up with a new domain, and would remove their logo (as obfuscated as it is) from our header.
Our communication back-and-forth has been very cordial, and Mr. Levy said that they could give me a reasonable amount of time to make the switch, get the new site indexed, etc. but I can’t find a domain name I like yet this morning.
We’ve established a pretty good business here, and we’ve got some good search rankings, decent backlinks, and a loyal base of returning customers who know us by name. Changing domain names is really going to require some thought, and this morning I set out to get one.
My first thought was to follow the suggestions that WordPress makes here and use a WP instead of their name, but when I tried to buy GetWP.com I found that it was already taken. I was surprised at that, so I tried to visit the site, but when I did, I got redirected to a subdomain of WP.com, called get.wp.com – Huh? Could it be?
Yep – I looked up the registrant information, and found that the domain I want – GetWP.com – is already owned by the folks at WordPress – The same people telling me to use WP!
Registrant: Automattic, Inc. 60 29th Street #343 San Francisco, California 94110-4929 United States
I really like the name GetWP.com, and feel it would be a fair substitution – after all, they’re not even USING it! So I wrote the lawyer back just now, asking if maybe they’ll consider giving me getwp.com, but I’m not going to hold my breath.
Anyway, I thought I’d share – After they refuse, have you got any ideas for me for another good domain name?
I had the same thing happen to me with one of my cash advance lead gen sites. I added up what that site had made for me each year for the last 3 years. Then, I averaged the percent increase that was occurring each year over those 3 years. Then I totaled up what the site could “potentially” earn for me over the next 5 years given the data I had just accumulated. Next, I put all this “data” into a neat excel file. Last, I had my father (an attorney) reply back to the cease and desist letter with my excel file included telling them that I would be happy to “hand over” MY domain to them…they would just have to pay me what the site was going to potentially earn over the next 5 years.
I was completely prepared to accept their money and move on to a new site but never heard from them again.
If I were you, I would look to see if they have the word “WordPress” trademarked. If they don’t, you’re in the clear. If they do, you should at least try to get some money out of it before you just hand it over.
Stay strong and good luck!
-Robert Ferguson
I would talk to a lawyer, free consultation type of call to see if they actually have a leg to stand on. It seems like a domain like that shouldn’t be available to purchase if it infringed on their copy write. If you were using their logo or misrepresenting yourself as “WordPress” of course they could go after you, and of course no one wants a costly and timely legal battle like you said, but otherwise, unless they purchase the domain from you at whatever price you set I wonder if their objection would hold up in Court?
Thanks for the input CharloteSEO, and yes they have it trademarked. They still havent answered whether they’ll trade me getwp.com and the more I think about this, the more it ticks me off.
@ron, I don’t have the money or energy for a legal battle, and I don’t even care all that much, but I don’t want to totally screw myself either, so I mentioned this to a lawyer yesterday over a casual conversation. He actually was in an unrelated field of law, but he sent me an email last night referring me to someone else, so I sent that lawyer link to this post.
Well, I got a reply, and it turns out that he needs a $700 retainer just to tell me an opinion on whether or not it’s something he even thinks is worth pursuing! Nice, huh?
Do no under any circumstances transfer your domain to these horrible people. Fairwinds Partners has a long history of attempting to steal domains from owners with legitimate interests in them.
Look up information on ICANN and the UDRP dispute resolution procedure. Do not simply transfer this domain to them and certainly not without compensation.
It’s up to them to prove that you are using this domain in bad faith and attempting to mislead wordpress users.
Remove the logo and include a disclaimer that you are not affiliated with wordpress.
I did a quick whois search and it appears that you have had this domain since 2009. That’s more than enough time for them to have contacted you if they had any objection to your use of their name. There are literally hundreds of domains with wordpress in it and to target you is nothing more than an attempt by the law firm to justify their existence. I guarantee you that they are not willing to pay $1500 to pursue a UDRP complaint for your website. You are no threat to WordPress and further it would be a nearly impossible case for them to prove. You are marketing yourself as a freelance provider encouraging adoption of their platform!
Don’t give in to their tactics!
I hope your story will end up positively! Well yes it is very dangerous to have brand name in the domain while some companies just don’t care the others fight bloodily to protect trademark and brand name. Wish you luck!
read up on the process and defenses at Chillingeffects.org or the Electronic Frontier Foundation. There is no reason for you to give up your domain.
Yes,it is make me beleivable,because how can be a logo that is already copyright reserved one used by another websites.this is gets us some problem.but your story and this problem is all considered by you.don’t worry.Everything can take positive.
This is shocking, really. I would never of thought wordpress would have done this. I have a domain with “apple” in it, and nothing has happened in the 5 years I’ve owned it.
Unbelievable that wordpress has created such chaos. It is shocking to know that a logo which has already been in use is being adopted by another company. Hope you come out of this soon.
I believe that people should know about this. This is preposterous. Anyway, I sincerely hope that there’s a better platform than WordPress out there.
Nothing better than WP as far as I’m concerned…
I’ve just got the same email from Mr Levy. I wouldn’t have a problem changing to a new domain name but asking me to transfer the exsiting domain to WordPress on the strength of this email is just daft. I’ve had it for 3 years which is plenty of time for WP to contact me and make an offer. And I can’t find any evidence that they are working on behalf of WordPress or the WordPressFoundation – so I think I shal file this with the emails I get for my impending impotence.