Does the same doman name with dashes infringe?

[Paul Anthony]

Hi. I'm hoping someone can shed some light here. I have a very specific multi-word domain name with a developed and profitable site. Recently, someone registed the exact doman name, but with dashes between the words. They have created a very similar site, very similar content, but not exact copy. The question is: do I have any recourse? P.S. interestingly, the only exact copy of content I can find is a few sentences from my site in their metatag description. Thanks!

 

[vc]

Not unless you have a trademark!

 

[Green Moon]

Not unless you have a trademark!

While technically true as written, that answer is entirely circular.

A trademark can be established by use. If your domain name is distinctive (not merely descriptive) you MAY have established trademark rights simply by using the name. Registration will always be preferable for establishing a trademark, but it is not a prerequisite.

Let's say you have a well-established website called PinkGiraffe.com that sells ladies golf accessories. Presuming that you can prove your use, someone could not come along and start a website Pink-Giraffe.com to sell ladies golf accessories or perhaps even women's sporting goods in general. However, they could probably use the website name Pink-Giraffe.com to sell children's books. If you can establish that the name PinkGiraffe was a famous mark, you might even be able to keep them from using the hyphenated version at all.

Note that the domain name needs to be one that you can use as a mark and is not merely descriptive. If you have a site OnlyGolf.com that sells golf accessories and someone comes along and registers Only-Golf.com, you are going to have no basis to complain.

 

[Paul Anthony]

Green Moon, thanks for the informative post. I understand no basis if the name is just descriptive (like your OnlyGolf.com/Only-Golf.com example), but what if it is descriptive and also extremely specific, like MetalNumber5LightweightGolfCulbs.com and along comes Metal-Number-5-Lightweight-Golf-Culbs.com?

 

[Green Moon]

It is still descriptive, even more so by getting more specific, so my answer would be the same. In your example, you could not keep someone from using Metal-Number-5-Lightweight-Golf-Culbs.com

 

[johname]

MetalNumber5LightweightGolfCulbs.com

And someone reg:

Metal-Number-5-Lightweight-Golf-Culbs.com

They would be in their right to own it in my opinion.


If it was:

MetalNumber5LightweightcallawayGolfCulbs.com

It would be a problem