We are a established webhosting company. We are NOT based in USA. We are registered on our country.

We launched our company using this domain "company.net" our servers are dedicated in USA.

We have 2 years in this industry.


Our customers are from everywhere in the world.


Yesterday we got an email from a company in USA called "company.com" they want us to change our company name and release our domain because we are "violating USA TRADEMARK LAWS" "federal violation".

They say that they are getting emails of people asking for "hosting services" because people usually uses .com instead of .net and that is causing problems to them.


Im an ignorant of USA laws but:

1. Im not registered as company in USA.

2. My company is webhosting, their company is about softwares and consultancy for bussiness.

I must admit, according to whois information that theyir company is older than mine.


Ey folks, what do you think? Am i wrong?

consult a lawyer locally

But this problem is about USA laws! thanks for your post anyway....

'Company' is too general of a word and is common in the English language. Therefore, this name would not be approved for sole federal trademark status. Go to www.marksonline.com for a trademark search and you will find several trademarks for 'Company' because nobody can soley own a business name called 'Company'.

In other words.. keep your domain name.

err

the domain name is not company!! i used it to illustrate the forums readers! :)

LOL :D. I thought you had a great domain name on your hands.

The same rule still applies.. if the name is unique and/or trademarked or has a DBA registered than they would have the rights to that domain and/or business name.

Edit: I will add that if 'company' can show proof of any of the above prior to you registering your domain name.. the party that owns 'company' has a strong case against you.

Assuming "company.net" is not truly your company name but instead just an example may have a serious problem.

Under US federal trademarks there are 3 conditions you need to be aware of.

These only apply to distinct/memorable names. The name does not have to be trademarked bu it greatly helps the other party (and thus hurts you) if it is.

1) Direct infringement. Under infringement your mark is closely related to another mark that is registered or well know, the other mark is "protected" (trademarked or similar) and normally your mark is being used commercially.

2) Trademark Dilution. Under dilution the other mark must be famous (fame is not defined as world wide fame but rather it can be fame within an industry, location, etc...). Again, your mark must be similar to the existing name and in this case you normally need to be seeking some sort of profit as a result of confusion (i.e. your name takes away from the unique qualities of the other mark, harms their branding, reputation etc...).

3) Cyber Squatting. Under this, new, clause any name which is famous or simply distinct, you must have a name that is similar to the other name and you have to meet some type of bad faith (i.e. you registered the name with the intent to sell it, you knew their name and wanted to cash in on it, etc...).

That is a very brief glimpse into each area, you can find the exact listed requirements for each of these on the US patent & trademark office’s website (uspto.gov)

If you have indeed infringed in any of these ways you will want to retain a lawyer. Jurisdiction will clearly be a large issue here given your location but also the contract you agreed to when you purchased the name.

It is also important to remember a few key things. Domain disputes can be and often are settled in arbitration which costs far less, is far quicker and often a good bet although perhaps not for you. Far more importantly, it has been ruled that the tld .com or .net does not count as part of a mark. That is to say, the fact that you are .net does not mean you are a different name from the .com of that name, minor typos or different spellings of the same name are also not considered enough to make a unique name.

As for a lawyer, you may wish to look for one who is local to you and knows of US laws and internet law first. They will tell if if they can help you or if you must seek council within the US.

Originally posted by TedS
Under US federal trademarks there are 3 conditions you need to be aware of.Just to clarify, if his is a foreign corporation he BlackHawk doesn't need to win a US trademark case. But even if his name is trademarked in his own country, he'd have to win an ICANN domain name dispute, and the fact that a name is trademarked in any country will come into play under ICANN's domain name dispute policy (UDRP).

Under the UDRP, the other company will have to prove three things: that the domain name is the same or "confusingly similar" to their trademark, that BlackHawk's company has no "rights or legitimate interests" in respect to the name, and that the name was registered in "bad faith."

The first point is probably a slam dunk for the other guys, but they need all three. If BlackHawk's actually been doing business under the name in question, he can probably establish legitimate interest, and assuming that everything else he said here is accurate and that he didn't register the name to take advantage of the likely confusion between these two companies, he should have no problem with the "bad faith" element.

So while I'd agree that he'd have a hard time winning a trademark of the name from the USPTO, his odds of keeping the name in a UDRP dispute are much better -- though it's impossible to speak with complete confidence without knowing more details about the domain names in question, the companies, their services and how they've marketed, at which point each can establish prior use, etc.

Originally posted by JayC
Just to clarify, if his is a foreign corporation he BlackHawk doesn't need to win a US trademark case. But even if his name is trademarked in his own country, he'd have to win an ICANN domain name dispute, and the fact that a name is trademarked in any country will come into play under ICANN's domain name dispute policy (UDRP).

<a few things snipped>

So while I'd agree that he'd have a hard time winning a trademark of the name from the USPTO, his odds of keeping the name in a UDRP dispute are much better -- though it's impossible to speak with complete confidence without knowing more details about the domain names in question, the companies, their services and how they've marketed, at which point each can establish prior use, etc.

Right. He doesn't need a local lawyer. If anything, he needs someone familiar with ICANN and UDRP procedures.

If it were me, I wouldn't answer them. You might accidentally say something that might hurt you in a UDRP case later. I would do nothing until they do something through ICANN. (Though, I did once give a worthless domain name to a large internet company everyone has heard of. Being worthless, I didn't feel like playing. Your name is obviously not worthless to you.)

If you have an affiliate program, maybe they'd like to join. :)

LOL - if you change where your server is hosted at, they really cant do ANYTHING to u unless they have lots of $$$

if companyX.com sells hosting
and
companyY.net is a search engine, i have no problem..


BUT <--(notice how big it is)

if companyX.com and companyY.net are in the same business, id be pretty pissed.

justm y 2 cents...

It appears that they are attempting to "bully" you out of a VERY valuable, generic name. Take the name Apple for example. There are several companies that use the generic name for their businesses, ie; apple computers, apple orthodontics, etc.

Originally posted by brn2h8
It appears that they are attempting to "bully" you out of a VERY valuable, generic name. Take the name Apple for example. There are several companies that use the generic name for their businesses, ie; apple computers, apple orthodontics, etc.


Originally posted by blackhawk
the domain name is not company!! i used it to illustrate the forums readers!

It is not very easy to take your domain name off you. Look @ the unix.com case for example.

I wouldn't lose any sleep

This is a suggestion for finding a trademark lawyer in the US who can represent your interests properly:

Go to www.elance.com and look under Legal Services for someone who specializes in trademark law. For under $100 you will get a reliable opinion regarding your options and how to proceed. Just make sure you choose a provider who is a practicing attorney and has a good rating. Their rates vary from $50 to $90 per hour and most will give you a free initial consultation.

The other company may be bluffing thinking that you will roll over easilly because you are based abroad. When they see that you are prepared to take them on and that you have proper legal representation in the US, they may think it over.

Company is a singel word, one can not have a trademark on that.
Same thing happend a year ago i think it was.

A famous artist, springsteen or was it Sting?
Cant remember, wanted their name.com

However, the name was to common, so one cannot own the TM on it.

Same here, company is used on daily basis, feel no worry.

I work as a legal lawyer in Sweden for .se domains, but I know alot about .com . net and .org

Company wasn't the word, it was an example.

And, there have been some pretty bad UDRP decisions regarding generic terms. (See banco.com, spanish for bank, for example.) The situation should be taken seriously, but (speaking for me only) I wouldn't provide a response at all until they make a serious move.

Originally posted by CallMeJ
Company wasn't the word, it was an example.
[...]
I wouldn't provide a response at all until they make a serious move. Yeah, I wouldn't rush to reply to them; they're the ones who have to take the next step. If I did say anything all all, I'd point them to the UDRP (http://www.icann.org/dndr/udrp/policy.htm) and point out, as I did in my first message, that under the terms of that policy the name has not been registered or used in bad faith, and that BlackHawk has legitimate interests in the domain name. Under the UDRP, if the name was in use before the complaint was filed in connection with a bona fide business or service, or the organization has been commonly known by the domain name (even if there's no official trademark), a right to use the name exists. (There are also circumstances regarding noncommercial fair use, but that clearly wouldn't apply here).

And just one more time, because people keep missing the point: we don't know what the domain name in question is. The word in the domain name is not "company," company.com and company.net were only examples used in the first post.