Possession of a TLD domain name by a company that has registered the same name in United States Patent and Trademark Office

[silvercover]

I have a question and a concern about starting my new business with a TLD domain name similar to a .com domain and registered by another person.

I own a TLD domain similar to the .com extension registered by another company in the United States Patent and Trademark Office.

I have to mention that both sites are active in the same field and there are no other copyright infringements such as similarity in Logo or UI.

My scope of activity is national and nationwide and will not be international

My domain: xyz.es

Other domain: xyz.com

Regarding the above issue, if I start a business with this TLD domain, can a foreign company owning a similar .com domain take over my TLD domain by suing me in ICANN or any other judicial authority?

 

[Zigner]

Maybe...

 

[Ohiogal]

This is not a site for Spain. So if you are in Spain, you need to check with an attorney there.

 

[quincy]

Domain names generally are not protected as trademarks. However, if consumer confusion arises over the use of another’s trademark in a domain name, the holder of the trademark could challenge its use. One result of this challenge could be the wresting away of the domain name from the judged infringer.

The likelihood of such a challenge is a question mark and would require greater research into the uses of the name/domain. For that, you will want to locate an IP professional in your area who can personally examine all relevant facts.

A link to the World Intellectual Property Organization (WIPO) and domain name disputes:

https://www.wipo.int/export/sites/www/amc/en/docs/guide-en-web.pdf

 

[adjusterjack]

Regarding the above issue, if I start a business with this TLD domain, can a foreign company owning a similar .com domain take over my TLD domain by suing me in ICANN or any other judicial authority?

First you say "similar."

Then you give examples where the word "domain" is identical in both examples.

Which is it? Similar or identical.

No help here if you can't, or won't, reveal the exact names that are at issue.

As for "can" you be sued. Of course you can. How much money can you set aside with which to hire an attorney to defend you against the almost inevitable lawsuit? 10,000? 20,000? 50,000?

You need to think about that stuff when you want to use a business name "similar" to an existing business, especially the same kind of business.

 

[quincy]

First you say "similar."

Then you give examples where the word "domain" is identical in both examples.

Which is it? Similar or identical.

No help here if you can't, or won't, reveal the exact names that are at issue.

The real names are not necessary. Any analysis must be done by an IP professional located in silvercover’s area of the world.

Because it appears that silvercover is located outside the U.S., even a same name trademark might not infringe on the trademark rights of someone in the U.S., especially if neither company has overlapping markets.

 

[zddoodah]

In the abstract, it's possible. Only someone with knowledge of the full details can provide a more complete opinion.

 

[quincy]

If silvercover has only registered his trademark in Spain and the U.S. company of the same name has only registered their trademark in the U.S., there is a good chance that they can peacefully coexist, even with similar domain names. The “.es” and “.com” will direct users to different locations on the internet.

If either company wishes to expand their market into the country of the other, however, they (probably) will need to use a different trademark in that country or risk infringing on the other’s established mark.

 

[FlyingRon]

He's not even in Spain. He's in the middle east. The domain is registered in Spain for unstated reasons.

There are two issues here. One is the collision of trademarks. The other is the domain rules. While these have some overlap they are distinct.

The domain rules say that it's permissible to use a domain if you have a bona fide use, that is it matches your entity name or a trademark you are legitimately using. If you are just squatting on a name hoping to derive value from it (specifically from someone who does have such an entity or mark), then you risk losing it through an arbitration process which unfortunately isn't much ruled by any sane rule of law.

Now the domain could be used as a mark and it could be used in support of your mark. In that case, your usual trademark issues arise. Just because the marks are registered in different companies don't give you a pass. There are international trademark agreements, the most applicable one coincidentally is called the Madrid Protocol, that specifies how a mark in one country is protected/enforced in others. It's best to consult an IP attorney in your country and any country you have a business presence in.

 

[quincy]

The Middle East, huh? Curious.

I agree that the specifics will need to be personally reviewed by an IP professional in whatever part of the world silvercover is planning to operate his business.

The fact that his proposed company hopes to use the name of an existing, registered U.S. company could create problems easily avoided by selecting a trademark that is not already in use by anyone. There is a wealth of words and a nearly infinite number of word combinations that can be used to identify one’s new business. There is rarely if ever a good reason to choose a name that already has established rights.

 

[Zigner]

But I just like the sound of Diskknee.

 

[silvercover]

First you say "similar."

Then you give examples where the word "domain" is identical in both examples.

Which is it? Similar or identical.

No help here if you can't, or won't, reveal the exact names that are at issue.

As for "can" you be sued. Of course you can. How much money can you set aside with which to hire an attorney to defend you against the almost inevitable lawsuit? 10,000? 20,000? 50,000?

You need to think about that stuff when you want to use a business name "similar" to an existing business, especially the same kind of business.

The domain name is identical as I mentioned in example.

 

[quincy]

But I just like the sound of Diskknee.

Tempting fate, the users of Diskknee are. Haha.

DisGear lost their small Florida print business in a Disney copyright infringement suit. Of course, the fact that DisGear ignored infringement notices and their DisGear logo was of gears in the shape of a Mickey Mouse head didn’t help their case.

 

[quincy]

The domain name is identical as I mentioned in example.

Identical names for your business but different top level domains (e.g., “.com” is different from “.es”). Country codes serve as TLDs.