Trademark Infringement / Anticybersquatting Consumer Protection Act

[hendricksonet]

What is the name of your state? Wisconsin

I started a business called FSBO Western Wisconsin as of May of 2005. We registered our company with the state by forming our LLC. We registered the domain name FSBOWesternWisconsin.com. A few days ago I found a local competitor had registered the domain name ForSaleByOwnerWesternWisconsin.com and had it forward to his website. I also found that the webmaster of the local competitor had posted on his webpages a link displaying the text 'FSBO Western Wisconsin' and when clicked it goes to the competitors webpage. I contacted him and his web hosting companies but haven't heard anything yet.

Is he in violation of trademark infringement by placing our company name on his webpage and linking it to a competitor webpage?
Is he in violation of the ("ACPA") Anti-Cybersquatting Consumer Protection Act by registering the domain name that is our company name?

Thank you,
Eric

 

[ReiterLaw]

You can't trademark descriptive terms within a trade name absent secondary meaning attaching to the name. Given that you've only had the name for 4-5 months, secondary meaning is highly unlikely to have attached. As such, I highly doubt you would win on a claim of exclusive right to the words FSBO, Western, or Wisconsin. I also think you would have a difficult time making an infringement claim based on a common law TM but I don't practice in Wisconsin and common law marks are governed by state law. As far as an ACPA claim, you will have to be able to show "bad faith intent" and the facts will govern that determination. You could look at making a UDRP claim, but I would recommend hiring an attorney versed in this area to assist you. Best of luck with your matter.