Brian O'Donnell's e-mail handle is "grillmaster." His family's hardware store was the Weber grill national dealer of the year in 1996. In addition to courting customers with a spiffy Weber grill showroom, the business annually sells about $1 million worth of Weber-related products online.
The guy may love Weber grills, but Weber-Stephen Co., the Tiffany of barbecues, doesn't like him. Earlier this year the company sued him in federal court in Chicago and filed a claim before the World Intellectual Property Organization in Geneva that could have smothered his lucrative e-commerce operation.
The bone of contention is that www.webergrill.com is O'Donnell's Web site, and Weber-Stephen wanted it for itself.
It's another in the hundreds of cases in which a big company is fighting someone who has registered its corporate brand as a domain name on the Internet. In the vast majority of cases, the big guy wins. But not this time.
Last month Weber withdrew the lawsuit in the wake of a WIPO arbitrator's denial of Weber's complaint. "[Weber] argued that we were cybersquatters, which we're not," says the 38-year-old O'Donnell, whose father opened their store in the well-to- do Lincoln Park neighborhood of Chicago in 1941. "We just used the URL as a different way to market the product - like putting up a sign in our window saying, 'Weber grills.'"
O'Donnell's victory shows that the door is still open for small businesses to use a big brand name to sell online. And his success is a reminder that the Web can still live up to its early reputation for empowering the little guy.
So why did O'Donnell's store, Armitage Ace Hardware (dossier), win where others have failed?
For one, most losers are in fact cybersquatters. They register a URL in the hope of profiting by selling it to a trademark holder. "Our sole intention from the start has been to sell Weber grills and accessories," says O'Donnell. It also didn't hurt that Weber-Stephen isn't selling any of its products online and that it knew about O'Donnell's efforts early on.
In fact, O'Donnell's domain name was even listed in co-op ads for Weber retail outlets, and the company actually helped to pay for these ads.
Weber-Stephen executives decline to comment on the case, but other companies aren't disturbed by O'Donnell's marketing savvy. Along with registering the Weber name in 1996, Armitage registered www.colemanoutdoors.com and has enjoyed a brisk business selling Coleman lanterns and sleeping bags online, as well as in his store. The same is true for Combi strollers, which he sells at the URL www.combistrollers.com. Executives of Combi and Coleman praise Armitage's online commerce operation.
The dispute hasn't cooled O'Donnell's passion for Weber grills. He and his family would practically walk over burning coals to keep selling them. And although other companies sell Weber grills online, he's established a beachhead in the market.
Such online activity is a logical progression to the $30,000 he spent four years ago to build a new 1,500-square-foot Weber showroom, becoming the biggest Weber dealer in the Chicago metropolitan area. At the time, Weber-Stephen executives enthusiastically talked up O'Donnell's "store within a store" execution to other Weber dealers.
The big company appeared less excited when Armitage went online, though it has never made an overt move to sell its grills via the Internet out of fear of riling its established brick-and-mortar dealers. Its Web site, www.weberbbq.com, is purely informational.
For four years Weber-Stephen kept its objections to itself, O'Donnell says, but then earlier this year it told him that it wanted the name. O'Donnell admits he would consider selling the domain name if he liked the offer, but he no longer feels any pressure to cut a deal. "We've got four years of people visiting the site," he says. "You just can't replace that."
Dale Buss is a freelance writer.
