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  1. #1
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    Canadian using our domain. How can we stop them?

    We have a very unique .com domain name for a unique site serving a unique purpose. Our site has been running for close to 3 years and serves the global market.

    We just discovered that a Canadian has registered the same domain name with .ca instead of .com and has launched a site serving the same purpose. They even use similar wording. It appears that they just launched their site.

    Our website is an actual LLC entity, registered here in the U.S.

    Do we have any legal protection from this person in Canada? And how can we stop them from using our name with a different domain extension? Do we now need to worry about other countries using our exact company name?

    Any advice and help would be greatly appreciated.

    Ron

  2. #2
    Programming Team silver trophybronze trophy
    Mittineague's Avatar
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    AFAIK, if your domain name is the same as your registered trademarked company name then you have a chance of being able to get them to desist (eg. sitepoint.com). But if the domain is just a "generic" name then simply owning the domain doesn't give you exclusivity to it. that's why many larger companies buy up other domains (and usually redirect them to the "real" site) using the same name but ending with .net .org .com etc. not to use them per se but to keep others from having them. Some companies even buy up similar one-off spelling typo versions of the name.

  3. #3
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    We do own the .net and .org of the domain name, which is not a "generic" name but a very unique name. We also own different permutations of the name (ie. with hyphens) ... but how far do we need to go to protect our name & business? We obviously didn't register the name for .ca (ie. Canada), or any other country for that matter. That can get a bit crazy, not to mention expensive.

    So, I was just curious to know if we're protected and/or can pursue legal action if they're located in Canada.

    Also, where can I find a cease & desist letter?

    Thanks,
    Ron

  4. #4
    SitePoint Evangelist
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    Quote Originally Posted by RonSanSolo View Post
    but how far do we need to go to protect our name & business?
    As far as you can afford to.

    Given it's a .ca domain name, you will really need to speak with a legal expert
    based there. .Ca has a dispute resolution policy, but the details can get quite
    sticky given your situation without qualified help.

    Talk to Zak Muscovitch.

  5. #5
    SitePoint Evangelist
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    Quote Originally Posted by RonSanSolo View Post
    Do we now need to worry about other countries using our exact company name?
    Yes you do. In my country I can start a company with similar name as another company in a different city.

    If you're a true global company you should have the means to protect your trademark internationally. And if you don't have that significance, why should you dictate what happens in the different local markets?

    There is a common trademark office for the EU countries, other than that I guess you'll have to do it country by country.

    Just my opinion. I Am Not A Lawyer etc.
    George Skee
    Follow me at GeorgeSkee.com

  6. #6
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    Mittineague's Avatar
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    Yes, what's important isn't whether or not the name is unique, but if it's a registered trademark.

  7. #7
    Follow: @AlexDawsonUK silver trophybronze trophy AlexDawson's Avatar
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    Even if you did have a trademark for the name, by not buying up the international domains may be seen as failing to protect your trademark (if it applies worldwide) and you could possibly loose it because of this. Note: not a laywer either.

  8. #8
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    Thanks for your feedback, however disheartening it may be. Our site has a global scope, but we are not a global company. Far from it. As it is, we thought we covered ourselves with all the different domain names that we did register. It's a bit infuriating to have missed one or two domain names, only to have someone pick one up and rip us off.

    Dave, thanks for Zak's info. I'll look into him.

    Ron

  9. #9
    Follow: @AlexDawsonUK silver trophybronze trophy AlexDawson's Avatar
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    RonSanSolo, Unfortunately even if you did pick up most of the extensions available to you, it would not cover them all. There are hundreds of domain extensions and the vast majority require you living in that nation to be able to register the extension. Protecting your domain name is a very sticky deal these days.

  10. #10
    SitePoint Addict Poiesis01's Avatar
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    Quote Originally Posted by AlexDawson View Post
    RonSanSolo, Unfortunately even if you did pick up most of the extensions available to you, it would not cover them all. There are hundreds of domain extensions and the vast majority require you living in that nation to be able to register the extension. Protecting your domain name is a very sticky deal these days.
    Yeah, it's close to impossible buying all TLDs and then the hyphenated versions of them as well, but I do believe that in this case, where the .ca is imitating the established company's name, website and service, that they have a case. If they're using the same name for a different type of website or service; then it's more difficult but in this case approaching the company that sells the .ca TLD might be fruitful.

    RonSanSolo, you will keep us informed of developments?

  11. #11
    SitePoint Wizard TheRedDevil's Avatar
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    From what you have said so far, the chance for you to get the domain from the Canadian company is close to null.

    The only chance you could have is if you have a registered US trademark and US and CA work together on the trademarks. However if CA run their own trademarks, you have no chance at all to get the domain.

    With that said, I can start a company using your name in Norway for example if you have not registered your trademark here and your brand is not globally known like Coca Cola and Dell. However registering the trademark in every country is not really a feasible so if want to go that route, register it in the countries that would pose the biggest threath to you.

  12. #12
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    Thanks everybody. I do appreciate your input.

    They say that imitation is the sincerest form of flattery. But, it's hard to feel flattered. I have no problem if someone wants to imitate the concept of our site, but to take our actual domain name ... ouch. Lesson well learned.

    I'll try to keep you updated...

    Thanks again!
    Ron

  13. #13
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    Quote Originally Posted by RonSanSolo View Post
    Thanks for your feedback, however disheartening it may be. Our site has a global scope, but we are not a global company. Far from it. As it is, we thought we covered ourselves with all the different domain names that we did register. It's a bit infuriating to have missed one or two domain names, only to have someone pick one up and rip us off.

    Dave, thanks for Zak's info. I'll look into him.

    Ron
    Hi Ron. Thanks for recommening me, David. Ron, please feel free to email me zak at muscovitch.com, or phone 416-924-5084.

  14. #14
    SitePoint Evangelist
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    You're welcome, Zak. You're the only one I know based there who does these
    things for a living, anyway.


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