Another company using name very similar to mine in the same industry

[dmetzcher]

We are an LLC founded in New Jersey on 5/1/04. Another company, in Australia, goes by a similar name.

I don't want to put the actual company names here, but here is an example of what I am talking about:
If my company name is Microsoft Solutions, theirs is MicrosoftHosting. The domains are similar too, with theirs being something like microsofthosting.com and ours being something like microsoftsolutions.com.

We are both in the same business - Web Hosting, domain registration, and Web design & development. I checked their domain name and it was registered in August of 2004, after my company had already been founded. My concern is that my Web site and service are similar in name to theirs. My domain name was registered on 7/17/02.

My question is this. Being that we are both in the same business, is there anything I can do, as long as I can prove that I have been around longer, to get them to both change their company name and stop using the domain name? I have not contacted them yet because I wanted to get some advice first. It looks like we are both small businesses at this point.

Any help that anyone could provide would be wonderful and much appreciated.

 

[divgradcurl]

My question is this. Being that we are both in the same business, is there anything I can do, as long as I can prove that I have been around longer, to get them to both change their company name and stop using the domain name? I have not contacted them yet because I wanted to get some advice first. It looks like we are both small businesses at this point.

You can ask them to give up the name, but it is unlikely that you could do anything to legally get them to change the name. Now, if you had obtained a federally-registered trademark prior to them obtaining the domain name, then you might have a case under anticybersquatting rules -- but without a registered trademark, you probably don't have much of a case. The problem is, even if you DID have a registered mark, as long as their mark was obtained and is being used without trying to infringe on your trademark, even the anticybersquatting rules wouldn't help you. Besides that, you are dealing with a company in Australia, which would make any litigation very difficult at best.

You could try and see about filing a complaint with ICANN, but the problem is a) you haven't establlished any rights to the name via applying for or obtaining a registered trademark, and, more importantly, b) unless you have some facts that suggest that the other company is trying to use your good name to drive traffic to their site, they haven't done anything wrong.

As a general rule, even having a federally-registered trademark does NOT entitle you to any domain names, unless the owners of the domain names are "cybersquatting.

 

[divgradcurl]

And one last thing -- even if somehow ICANN decides that they can exercise jurisdiction over their domain name and does something about, U.S. law has NO jurisdiction over what the Australian company calls themselves. You would need to try and obtain an Australian trademark and sue them in Australian court to get their company name changed.

Now, if you had a U.S. trademark, and they were trying to do business in the U.S., then you might have a case to get them to stop using the name in the U.S. -- but U.S. does not exercise jurisdiction over companies in cyberspace that aren't physically located and doing business in the U.S.

 

[dmetzcher]

Thank you for your reply. I appreciate you taking the time. I also posted this on lawguru.com and received a reply that was similar, but your reply made things even clearer. We are both small businesses and with them in another country, and my lack of a trademark, I think my time and money would be better spent right now trying to build the business rather than getting bogged down in a multijurisdictional legal battle that I have no real chance of winning. Frankly, given the industry we are in, the chances are very good that, statistically speaking, one of us will go out of business. I just have to make sure it isn't me.

Thanks again!