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  1. #1
    SitePoint Zealot TheOtherOne's Avatar
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    Do I have any rights to the .net and .org of my domain name?

    I started a website about four years ago (lets say example.com) and it has gotten popular enough to where others are trying to play off my name. I never bothered to register the .net or .org version and within the last year someone else snatched them up. I also noticed recently that someone registered wwwexample.com. It's pretty obvious they are just trying to grab a little misdirected traffic because of my sites popularity.

    Without a trademark, am I just tough out of luck for not registering them first?

    That also brings up another question I've had: Could someone else trademark example and then sue me to snatch my .com? I know I probably shouldn't be worrying but I'm actually making my living solely off this site now, so I get paranoid sometimes.

  2. #2
    SitePoint Wizard silver trophy
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    Issue #1 - Your claim: While not having a registered trademark does hurt your case you can claim you a common law mark which means your name is established within your industry and has created a sufficient secondary meaning. Courts and ICANN both recognize the validity of these claims but since you have to establish when your name was first used, when it became active and when you had really established a known name it is a less powerful act and has more restrictions for infringement claims.

    Issue #2 - Competing trademarks. In the name game first come is almost always first served. If someone registers a trademark for your name in the same industry and class tomorrow you could continue using it freely and would even have the right to claim their trademark when it was first filled (no one will inform you, it's your job to keep an eye out). The only problem would come if you tried to sell the site as the new owner may have problems. Your best way to avoid this is to cough up the $325 fee and register your own trademark today for increased protection now and in the future -- if this is already an issue then your decision should be clear.
    - Ted S

  3. #3
    SitePoint Wizard gold trophysilver trophybronze trophy dc dalton's Avatar
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    Yeah I have to agree ..... no trademark and you havent got a hope. IF the site in question was a famous name or something like that you might have SOME luck. We just went thru this for Lee Ritenour and managed to get the .com back but again thats a celebrity name..

    Personally I would RUN to the trademark office (or post office) Monday and get your name trademarked before they do and come after you (ya never know)

  4. #4
    SitePoint Wizard silver trophy
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    Not having a registered trademark doesn't mean you are out of luck or out of hope, not by a long shot. Common law marks are used all the time in domain disputes... see:

    A complaining party can establish that it has rights in a trademark or service mark by establishing that an entity such as the PTO has approved its mark, or, alternatively, that it has established rights as a common law mark. Ordinarily, to satisfy the requirements of Rule 4(a)(1), the complaining party must have trademark rights before the domain name in dispute was registered. Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (under ICANN rules, a trademark must predate the domain name).
    - http://www.esqwire.com/bag.shtml

    http://guidingrights.blogcollective....11/202911.html

    http://www.dglaw.com/resource/janFeb2000_04.shtml

    http://www.twobirds.com/english/publ...eWinterson.cfm
    - Ted S

  5. #5
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    First question: Yes and no. Most likely no. You don't have tm, and you must have a "common trademark".. Probably kind of popularity you are talking about is far from giving you such rights. Also if that keyword is generic or descriptive even a tm may not give you any rights to take those names from them.
    Not worth it in any case.

    Second question: No, but system is a little bit corrupt. If they become a widely known world trademark they can steal your domain.

  6. #6
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    .com trademark issue.

    In my scenario, I have a .NET domain registered. I have a legitimate business that has been running for 2 years, and a US Trademark on the name that is live.

    However, there is a business in Germany that has the .com . I looked it up in Germany and they have a trademark in that country and the business is legit. Is there a way I can get that domain? Do .com's take preference for Americans if we have them as a registered trademark?

    Thanks

  7. #7
    SitePoint Wizard trampt's Avatar
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    Quote Originally Posted by pok3y
    In my scenario, I have a .NET domain registered. I have a legitimate business that has been running for 2 years, and a US Trademark on the name that is live.

    However, there is a business in Germany that has the .com . I looked it up in Germany and they have a trademark in that country and the business is legit. Is there a way I can get that domain? Do .com's take preference for Americans if we have them as a registered trademark?

    Thanks
    No you are completely out of luck. Since the same name can be trademarked in different industries and countries it would be up to who registered the name first. Your only hope is that you are both in the same industry, your trademark was registered first, and you have a lot of money to spend trying to get it back.

    That's why if I have an idea I think will be popular I will register all the extensions. For example I own:

    totre.com, totre.net, totre.org
    trampt.com, trampt.net, trampt.org

    The yearly cost for reg fees is hundreds, if not thousands, less than possible legal battles to get them from someone trying to make money off my brand.

  8. #8
    SitePoint Zealot TheOtherOne's Avatar
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    Thanks for all the information. I found the trademark application online. It looks like it is simple enough.

    http://www.uspto.gov/teas/eTEASpageA.htm

  9. #9
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    Applying for the trademark now isn't going to help you get the names, and someone else applying for the trademark isn't going to allow them to snatch your name.


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