Thread: Can I lose My Domain Name ?

Hello,

I have a Incorporated company in New Jersey called "XYZ Corp." and have a registered DBA "BlueWidgets.com". I run my business online and my domain name is "BlueWidgets.com", same as my DBA.

There is another company Incorporated in New York called "Blue Widgets Worldwide" and their domain name is "Blue-Widgets.com"

They are not happy the I have the better domain and had called me once saying why I am using "BlueWidgets.com" when my company name is "XYZ Corp"

Can they do anything about this? Am I wrong in anyway ?
They don't have a trademark on "Blue Widgets" so do they have any right calling me?

Should I think about filling for a Trade Mark on "BlueWidgets.com" to protect myself in the future?

I hope someone gets a chance to reply to this.

Thank You in advance.

Jimmy

Without a valid trademark they can't do much; in the future if they did trademark the name it could be used to obtain your domain name. You can try and trademark it yourself HOWEVER, you might not even be able to trademark it due to the name itself. I would try and trademark it yourself and if you can't, they can't and can't attempt to legally assume your domain name.

Thanks alot LegalGuy for your response.

But on what basis can they try to take my domain name !
Just because they are incorporated as "Blue Widgets Worldwide" they have right to the domain "BlueWidgets.com" ?

By saying this "You can try and trademark it yourself HOWEVER, you might not even be able to trademark it due to the name itself." Do you mean since their company name is "Blue Widgets Worldwide" and "Blue Widgets" is in the their company name, I might not be able to TradeMark it?

and in that case if I change my company name from "XYZ corp" to "BlueWidgets.com Inc." and since I already have the domain "BlueWidgets.com" will I have more right over them !

No, an LLC or INC does not give rights to any specific domain name. I mean that due to the nature of the name it's just to broad to be trademarked.

You have to start by figuring out who, if anyone, has trademark rights to the term. Trademark rights in the phrase/name can arise under common law absent registration. In other words, even if they never register their name, your usage of the domain name can be an infringement. A professionally done trademark search can help you sort this out. Who ever first used the term in commerce will get trademark rights regardless of an attempt to register it. In the event you have TM rights, you should engage a professional to register the term with the USPTO. That will give you extra rights in the event of a lawsuit down the line.

And yes...you can loose you domain name. Actually it happens every day. ICANN through a binding arbitration process can take away your domain name and give it to the other guy. A number of factors go into tgat decision, includiong whether or not you are running a legitiomate sight or just trying to bank off of the good will generated by the other guy.

Either way, reach out to a professional to review your rights. If you feel that there is a real value to your usage of that specific domain name, don't do it yourself.

Nice job grabbing that great domain, I can see how they would be upset but that same sort of thing happened with my however I was on the other end of things. There is noting I can do to get the domain name from them.

It will be important to maintain the ownership of that domain! Don't let it expire even one hour, they will probably grab it!

DISCLAIMER. Not meant as legal advice. I'm not an attorney. Please do your own research to confirm my opinions.

Depending on what country you are in. In the USA there is Prior Usage and Common law. Basically, if you are doing it before a trademark exists you can keep doing it. Even if they have a trademark it won't stop you. Same if you have a trademark now it won't stop them.

Also some states will allow you to get a State Wide Trademark. Often about half the price. Only protects you with in your state. However I am guessing a State Trademark would help in a UDRP case against you if someone tried to do that using another trademark to take your domain name.

I don't see an issue either way with a mark or no mark.

Also... If you have different businesses you both can have trademarks for each business if they are different enough. So a trademark doesn't say hey you can't use this name, it means you can't use this name for my same business unless you had been doing so before I applied for my mark.

Trademarks will prevent someone else from expanding in to your business. So if you sell widgets and they sell fidgets and you now trademark your name for widgets they can't now change to sell widgets later... unless they were already selling widgets which then Prior Usage comes in to play.

But in your case for your question, if they get a trademark and you have different businesses it will prevent you from doing what they do. But they can not use it (if you are both in the USA) to take your domain name away since you had it before they applied for a trademark... How can you register a domain name in bad faith against a trademark that didn't exist.

Don't get me wrong, people still try to take away domain names stating you registered your domain name because you "knew" or had prior notification they planned to register for a trademark. That has happened and people have lost their domain names.

My advice, spend the $275 and get a Federal Trademark. Had I done this I would have saved THOUSANDS in legal expenses defending a fraud case to take my domain name.

But the answer should be no. They can't take it legally if the case is legit unless you do something directly to infringe on their trademark later which is different from what you sell or offer now.

Nothing stops anyone from suing anyone. So they can still drive you in to high legal expenses if they feel like it trademark or no trademark.

I can relate with their frustration for not choosing the better domain name. It is likely that their customers will end up finding your website. It was a bad choice on their part not to buy both domain names.

On a different note, depending how valuable the domain name is to your company, one could always consider selling the domain. Again, this would all depend on how much traffic your site gets, repeat users, etc....just an idea.

There are some situations where "reclaiming a domain Name registered by another" is possible. You may have unknowingly registered domain name which is a trade mark of other company. In most cases, there is little that can be done because the other party has equal right to use that name.

In some circumstances, however, it is possible to contest a registered domain name based upon superior rights to that name. Such a contest can be made through the courts or through InterNIC's domain name dispute policy.

I would contact a lawyer asap.