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Can Owner of Similar Pre-Existing Domain w/ No Website Take Mine?

Located in Legal Discussion, started by Jazee, Oct 6, 2016

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  1. Jazee

    Jazee New Member

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    Let's say I'm starting a new (hypothetical) business (in the U.S.) named Geezak Aerial Tours, and the following things are true:

    (1) There is no registered trademark that has anything to do with "Geezak"
    (2) An Internet search does not turn up any active websites or businesses with "Geezak" in the name

    BUT

    (3) There is a domain name registered (with no active website on it) called geezakaerial.com

    If I register the domain name geezakaerialS.com (with an S on the end) would the owner of geezakaerial.com (which was registered before I started my business) ever be able to make a viable legal claim to take over my domain in any of the following cases?

    (a) They had no business license under that name or business activity or website

    (b) They had a business license under that name but had no significant business activity (no services provided or revenue collected) and no website

    (c) They had a business license and business activity under that name (before I started my business) but no website or registered a trademark for that name

    If I register the trademark and have business activity under that name, could I make a claim to their domain even though they registered it before I started my business but didn't have business activity under that name or a website on that domain? Can simply registering the domain be considered business activity? The WHOIS is private It seems maybe I need to find a search function that will search all U.S. STATE Business License databases because they could have a business license under that name in a state and just have not launched their website yet?
     
    Last edited: Oct 6, 2016
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  2. Kate

    Kate Domainosaurus Rex VIP ★★★★★★★★★★

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    Why would you do that ? Why not use a more distinctive domain instead ?
    Let's put the question differently, would you register geezakaerialS.com if geezakaerial.com didn't exist ?

    That would qualify as reverse domain hijacking. Unless they start doing stupid things with the domain, you can't really go after them because they registered the domain before, in good faith, and they could not have been willfully violating your brand since it didn't exist at the time.

    But they might have to be careful if they start using the domain later on. TM rights are accrued through usage. Just because they registered the name first, doesn't mean they can have the last word.

    If you file a TM, oppositions can be filed too.

    The other party could argue that you picked that particular domain to lock them out of the market or sabotage their future efforts. A lot depends on intent.
    If the name isn't distinctive enough and there is potential for confusion, I think it would be smarter to pick another name to avoid possible problems in the future. You don't buy a domain without a good reason.

    Disclaimer: I am not a lawyer and this is not legal advice.
     
  3. Kuffy

    Kuffy Name Stag VIP

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    I agree with Kate. Whatever the legalities, you risk losing traffic to the old domain.
     
  4. Jazee

    Jazee New Member

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    So I'm not sure I really got answers to the bulk of my questions (a, b, & c)? Is the answer to a, b and c essentially NO then? (you weren't very clear about that.) I'm 98% sure whomever registered the domain never used it nor started a business with the name. Why? Because it was registered 10 months ago (giving them plenty of time to put up a website) and expires in 2 months.

    - If there was any sort of website on the domain, I would chosen another name.

    - If there were any Google results after exhaustive searches for the name, I would have chosen another name.

    - If there was any sort of matching trademark, I would chosen another name.

    None of these are the case. So back to the topic which is about potential legal issues, not about the initial selection of the name.

    Regarding Kuffy's comment, I definitely see you point and had the same thoughts thinking, what if they renew the domain then several months later launch a website? This really shouldn't be a concern Kuffy, for two major reasons:

    (1) You can't buy all domains with your business name in it combined with every possible other word that may be put with it. There's just too many possibilities.geezakflight.com geezakair.com mygeezak.com, etc. etc. etc. Or amazonstore.com, amazongoods.com amazonsale.com. And frankly you can have a business with the same name as another as long as it's in another state in most cases.

    (2) If they launch a website long after me, my SEO profile will be SO much stronger, any search for my company name will bring up my site first well before theirs.

    I guess we will have to see in about 3 months if the domain gets renewed.
     
  5. Jazee

    Jazee New Member

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    I got a response from an attorney specializing in this sort of thing. He said:

    "Generally, merely registering a domain name without acquiring any common law trademark rights through use, or registration rights through national trademark registration, confers no intellectual property rights in a domain name or the words included therein. Also generally, acquiring a trademark or business registration corresponding to a domain name or similar, does not entitle the trademark owner or business registrant to a corresponding domain name if the domain name registration preceded same."

    So in other words both parties' domains are "safe" and it's just a matter of who can have the more dominant presence should they decide to operate similar businesses under similar business names and domain names. As I said before, I'm not going to abandon my name selection when there's no evidence anyone is operating under the same name and it's just a similar domain name registration that never got put to use.
     
    Last edited: Oct 6, 2016
  6. matrigaldo

    matrigaldo Domainer since 2007 VIP ★★★★★★★★★★

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    Try to contact them, and offer a reasonable amount to acquire it. It's waaaaay better than start a silent war even before to develop your own business. It's like start with an "handicap".
     
  7. Jazee

    Jazee New Member

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    I don't think that would be a wise strategy. Because if they have abandoned the domain and don't plan to renew it, it will just expire and I can get it at auction for $1 since the domain is unique enough I am sure no one else wants it. If I contacted the person before that, they would then know there is interest and renew the domain so they can hold out for the best price. At $14 a year it's not a big price to pay to 'see what happens'.

    You need to remember the domain is almost a year old and there's no active website on it, EVER (I checked the Internet Archive Wayback Machine.) So common sense says if they haven't used it by now, they probably are not planning to use it. If they DO renew it, THEN I would approach them about purchasing it.
     
    Last edited: Oct 6, 2016
  8. matrigaldo

    matrigaldo Domainer since 2007 VIP ★★★★★★★★★★

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    Weeeell, you can't be sure about that, if you're not in hurry with your business, then wait until the domain will be deleted and available again.

    But if you want to go online before that moment, i think offering him a lowball offer would be a solution.
    Have you checked if the owner email is linked to any other domain names? Just to understand if the owner is an investor, a hobbyist or just a random guy.
     
  9. Jazee

    Jazee New Member

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    It's a private registration.
     

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