I have registered and developed a Domain name a little while ago. The Domain name I have developed is a variant of one that I discovered on a Domain Auction site after the fact. My question is if someone buys the Domain off of the auction site and discovers mine will I have to forfiet it to them? The original name was registered before mine however I have developed my name and the other in question is just sitting on an auction site.

What are the normal methods for resolving these type of issues? I have registered my domain name with the IRS and my State since it is also the name of my company however I fear that I may have to give it up if someone decides to buy the original thus losing money and time due to creating a new business name and all the other needed things. I dont want to pay the amount they are asking for the original name because it is ridiculous.

I will not post my domain name or the original due to the owner of the original I believe frequents this site also. I will give you an example however.
These are not the names in question just an example.

Factorx.com (original)
Factor-x.com (variant)

Any help or advice as to what I can or should do would be greatly appreciated.

Thanks

X-treme

[This is not a legal opinion!]

My understanding of this is, if you own it, you own it. There are many instances of domain names that include a hyphen as the only difference between them; and I've yet to see any reports of litigation over it.

Independent of the domain name itself, issues might arise legally if you were infringing upon someone's copyrights, trademarks, or service marks, perhaps; but even that generally revolves around matters of the products themselves being similar or in some way related, and a claimant for punitive damages for infringement must often show some manner of monetary or other loss or injury as a result of that infringement.

There are, however, exceptions. Exxon (and its predecessors) have been fighting it out with a certain cereal company for years, for instance, about who owns that damned obnoxious tiger.

The smartest thing to do, here, is consult an attorney who specializes in copyright and trademark issues.

It is (if anything) a trademark issue. Research to see whether the other domain name is tradmarked. If not, you are are in good shape. Really the best advice *is* to consult an attorney. Preventive law is generally cheaper than if a problem happens and you get dragged into court and have to defend the name. Still, domain name laws are a toughie.

Just a side note, but yes, BC, put back the old signature.

Yes, definitely a trademark issue.

I'm not a lawyer, so don't take this as legal advice. But if the domain is a derivative of your business name, I wouldn't think you could get into too much trouble, if anything, whoever owns the other domain may get into trouble.

I'm also not familiar with US law (if that's where you're from). Can two businesses registered in different states have the same/similar name? Or is it a federal issue?

For further reading on this, I'd suggest goint to the U.S. Patent and Trademark Office FAQ at...

http://www.uspto.gov/web/offices/tac/doc/basic/

Thanks for the info I will be contacting my lawyer this week. As to my options. BTW I am a US citizen. Thanks for the help!!!

X-treme

Trademark/Service Mark issue. Do follow the advice that others have posted here but I'd like to add one peice of advice that we got from our attorney concerning trademarks. Keep everything cosistent as far as your mark whenever you use it and put the TM or SM after every instance of your mark. Don't use the R with the circle around it unless it is federally registered. It is not neccesary to federally register your mark in order to use th SM or TM. When you use the SM or TM symbols you are claiming common law trade mark rights Also check with you local trademark office for your state, they may be able to register your mark with the state. It cost us $325 to federally register(pending) but only $50 to register with the state of Alaska.

Here are some links below that have to do with your right to the domain name. Keep in mind the following information only pertains to a Domain Dispute Resolution. You can still be sued for your domain name. If that happens it all comes down to who has superior rights to the mark.

In order for someone to dispute your domain name and force a transfer they have to prove three elements are present. http://www.icann.org/udrp/udrp-policy-24oct99.htm

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In your defense, if it comes to that, you only have to prove one of the elements to keep the name from being transfered according to the ICANN UDRP. The burden of proof is with the Complaint.

http://www.icann.org/udrp/udrp.htm
http://www.icann.org/udrp/udrp-policy-24oct99.htm

Thank you very much ODE. That info could prove very useful in this situation. If I would have known about the other name I wouldnt have used it for my company however I have already processed and setup the business using it before I came across the other on the auction site.I guess I should have checked this out a little more carefully. If I venture into anything else in the future I will definitely do all my homework the next time to avoid this.


Thanks again to you all for the great help and advice!! I really appreciate it.

X-treme

Glad I could be of some help. :)
Also keep in mind that you can have the same name/trademark as another company as long as you don't have the same type of business. Look at the name Arrow. I can't begin to tell you how many companies use Arrow in their name.

You can find more information on domain name disputes at http://www.iBusinessLawyer.com/cyberlinks/domain.htm. As other folks have said, however, neither this page nor any other can substitute for consultation with a lawyer.

Okay heres one thats related.

I registered a domain name that is the same name as a PC game, I am planning on using it as a "fan site".

The company that produces the game as far as I can tell does not use domain names of the games that it sells. Instead it uses directory names, i.e. gameproducer.com/game_name/

So, I have now found out that they have a trademark apparently on the game name, so where does that leave me, does it mean that should they come a calling I'd have to give it to them, or do they have to pay me for what I have paid for the domain plus any earnings that I may earn from the fan site that I produce?

The way that I look at it, they had the opportunity to register the domain name, it would have cost them all of 10.00 to do at some registrars, they apparently declined to register the name, so I thought I'd take it and make it into a great fan site.

Im now wondering what road thats going to lead down.

Thanks,
Bbox

Brainbox,

That's really for a court of law to decide. Nothing is stopping them from suing you.

You are safe from ICANN UDRP if you can prove the following things

taken from http://arbiter.wipo.int/domains/guide/index.html#d


Paragraph 4(c) of the ICANN Policy states that any of the following circumstances, in particular but without limitation, if found by the Administrative Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the domain name registrant’s rights or legitimate interests to the domain name for the purposes of Paragraph 4(a)(ii) of the Policy:





(i) before any notice to the domain name registrant of the dispute, the registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or

(iii) the domain name registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Yeeeeeeeee-hah... sure sounds like lawyer-time to me.

Is the "word" in question trademarked with the USPTO and held by someone other than yourself?
If so, there may be grounds for legal action.

Would you consider trademarking this "word" for yourself?
If so, you have a legal right to utilize it befitting the trademark.

The day has come that trademarking favorite DN's is a must to keep the sharks away.

BTW: Resold trademarked domains are very much in demand, so your $325.00 investment won't be lost.

[Edited by 70MM on 12-05-2000 at 12:29 AM]

Originally posted by etLux
Yeeeeeeeee-hah... sure sounds like lawyer-time to me.


I'd have to agree. Don't guess, wonder, or hope. It won't do you any good. If they have tradmarked the name, then there could be problems. It can get really confusing (as someone said, you can have the word Arrow in your name, and it doesn't nesccessarily mean you've violated any trademarks). I'd say though since the site will relate to the game (who's name *is* trademarked), you should talk to someone.

[not a lawyer, not a legal opinon]

I have read that you can use the name of a trademarked brand or product so long as you us the TM or SM symbol and say somewhere the name of thr brand/product is a trademark of the specific company.

As to domain names, I agree with what is said above. Since names are too much related to branding speak to a lawyer who's a specialist in trademark law.

I think I saw something on trademark issues

Where's Lionel Hutz when you need him most? Not only could he solve this legal dilemma but he's an expert shoe repairman too!

Originally posted by Chicken
Originally posted by etLux
Yeeeeeeeee-hah... sure sounds like lawyer-time to me.
I'd have to agree. Don't guess, wonder, or hope... you should talk to someone.

With both the Noble Plucker and myself screaming at you on this, I do hope you'll pay attention. This is no matter for the advice of dilettantes and amateurs like those of us replying; nor for wishful thinking or head-in-the-sand behavior on your part.

Please see a professional! If push comes to pummel, you can bet the other guy will -- or already has.

Yes,
My first action was to remove the domain from our website, it used to point to our gaming website that had news, reviews etc. It now points nowhere. The next step will be to seek coucil with our attorney, I honestly hate to bother him, hes not only my attorney, hes my step brother. But I will call him when I get into town today and give him the particulars and see what he states.

Thanks,
Bbox

Originally posted by brainbox
. . . , hes not only my attorney, hes my step brother. But I will call him when I get into town today and give him the particulars and see what he states.

Thanks,
Bbox

Not bad at all. You know with as much money as our attorney cost, $125 Hour, I could have put my brother-in-law through law school. :)