tech-company, legal, business-registration, domain-nameIf anyone has already experienced this situation, any kind of suggestions/guidance would be more than appreciated.
The question:
Scenario: My company (MyCompany Ltd) is currently registered under my name. I intend to sell a product called “MyProduct”.
The domain name “MyProduct.com” is already taken and they are selling a product, also named “MyProduct” or a variation of that name (“MyProductDeluxe”). They have not claimed the trademark though, nor have they registered a company under that name.
Their “MyProduct/MyProductDeluxe” was created before my company officially existed.
Would I have any legal grounds to (re)claim the name for myself?
I’ve found myself in the same situation. My company name is Sentry Security Solutions, LLC. and provides clients with security guarding services to businesses and individuals. However, there is an alarm company with the same name in a different state. Because the company is out-of-state, my state didn’t inform me of that when I registered the business name.
So I had to purchase the .co domain instead of the .com domain.
From my knowledge, the only true guaranteed way to obtain a domain name is to be the only trademark holder with that name. If you successfully obtain a trademark for your company name, then you have the legal grounds to defend your trademark.
HOWEVER, trademarks are very hard to get and likewise to defend. For example if your business name is already taken, or a similar name is already trademarked, good luck winning a trademark. Also in the event you do get a trademark, the other party could argue that their name has been in existence prior to yours… thus at that point, it really doesn’t matter if you get a trademark or not.
I would recommend researching at USPTO.gov. They have a helpful video on their site explaining how to develop a strong company or brand-name.
I’m not a legal expert, but that is my experience. Hope it helps.
ICANN has a resolution process for domain name conflicts like this. They (used to) charge $1,000 for the process, and generally rule against obvious cyber-squatters. However, they usually also rule on a first-come, first-serve basis if the older website is functioning and is a legitimate web presence for a suitably-named company. The Nissan vs. Nissan case mentioned elsewhere is a good example.
If the existing product is well known I wouldn’t depend on the .com / .co separation. Most web users are very lazy and won’t get that distinction (or even the spelling) right. Get something very different.
As a reverse-example here, many years ago a company called Universal Tube & Rollform Equipment registered utube.com. Then somebody else decided to build a video-streaming service. Cue explosion of utube.com’s webserver and inbox. They had to change their domain name.
Having a trademark on some name/word doesn’t entitle you to that web domain, unfortunately.
In fact, one form of “domaining” (squatting on domains and reselling them for a premium) is to scan the US Patent and Trademark office’s website, and see what names get filed. For all those that pass, but whose web domains haven’t been taken, the buyer purchases them and waits until the filer of the trademark comes asking for the domain. By then, the owner of the domain can charge as much as he or she can such that the trademark owner will pay.
I don’t like this system, but… what can one do?
Having said that, my advice would be to not stick with your current name. Keep thinking of other ones that haven’t been taken yet with respect to web domains. People tend to look for “.com” top level domains than “.org” or “.net” or even “.co.” Furthermore, when potential customers search for your product, they’re going to visit the “.com” page first. Why give the “.com” owner the traffic?
If they have an actual product and they got the domain first, then there is nothing you can do, end of story. Thus far all the answers have been correct, although a bit long winded. The thing that they all seem to skip over is that this one of the things you should have checked when you were brainstorming company and product names.
If this would be about a company name I would just advice you to change your company name if their was any way still to do that. On the other hand, with a product that's often not worth it and instead just use your company site (so myproduct.mycompany.com or mycompany.com/myproduct). This is perfectly acceptabel, provided that you wish to market your product as MyCompany MyProduct. To just give an example, take Apple, quite a big player, so you would expect ipad.com to be the homepage of the iPad right? Not so much, it's apple.com/ipad. On the other hand, with a product like IntelliJ (a developer product) most people won't be able to tell you that JetBrains is the company making it. So for them owning jetbrains.com is far more crucial.
For a proper, reliable technical answer, you need an IP lawyer. I can only offer you some pragmatic thoughts from my own experience.
First, unless you have very deep pockets, you can’t be sure you can claim and defend a piece of name space, however it’s expressed (company names, trademarks, domains and so on). Whatever the legal principles, if someone with a lesser claim comes running at you with expensive lawyers, you’re likely to concede.
Second, the fact that name claims are a minefield can sometimes work for you too. If you do have some kind of claim to a disputed name, you may be able to beg, beguile or bully someone else into withdrawing (rare), co-operating on getting confused visitors re-routed (possible), or accepting your existence (likely). Laying down correspondence, if your rival claimants are small, could either help you later on, or if you get an aggressive response, could help you make informed choices at this stage when change is cheap.
Third, spend some time looking at what other people have done. I love Buffer, found at www.bufferapp.com, not at buffer.com where Oliner Fibre’s heat sealing buffers are on display. Twitter own their namesake domain, but got by just fine on twttr.com when setting out. Prefixes like get and try, suffixes like -ly, you’ll find lots of tactics to share a name.
So your question probably shouldn’t be, “how do I claim the name I like?” but “what name could be magical when encountering new prospective customers?” If there is a magical name, then find a domain that uses it in a way that isn’t lost to the audience, and use that. But if there isn’t, or if that name is already occupied by an established rival, swallow your pride and find a name that’s good enough.
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