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Competitor Domain name confusingly similar to my Registered Trademark
Anonymous3 views4 answers
Technical Details:
My US Registered Trademark Info:
IC 028. US 022 023 038 050
First Use in Commerce: June 2005
Filing Date: May 2006
Published for Opposition: December 2006
Registration Date: February 2007
For the sake of this public forum, actual domain names and business names are fictitious.
My trademark is Omega Lances. My business is Omega Lances LLC and we manufacture and sell Omega Lances.
7 days before the Registration Date, but well after the Filing Date, a competitor registers OmegaSuperLances.com, selling similar products. They claim Omega Super Lances is a division of their main company, Selling Stuff Inc.
Customers now ask if I own Omega Super Lances, which is how I'm aware of this issue. Do I have a cause of action here? Will a UDRP dispute work for this? Thanks
Domain name law and trademark are separate -- though they do overlap.
In all "likelihood of confusion" disputes over a domain name the threshold question is who owns the senior rights to use the trademark that's being used as the disputed domain name.
In your case, you need to learn the date the other company first began publicly using "Omega Super Lances" as the trade name for one of its divisions. If that date pre-dates the date you first began using "Omega Lances" then the registration by the other company of omegasuperlances.com was not in "bad faith" -- bad faith being an element that YOU must prove in order to force the company to transfer the domain name to you. To learn the date the other company first publicly began using "Omega Super Lances" you need to do some legal sleuthing on the web, in trade journals, trade show flyers, etc. The reason you have to do this legwork is because there is no mechanism in a UDRP proceeding to demand documents from the other side [unlike a federal lawsuit under the Anticybersquatting Consumer Protection Act ("ACPA")].
Note: If this evidentiary cache of information shows that the other company beat you to the market with its "Omega Super Lances" trade name then it rightfully owns the registration of that name as a domain name. If that cache shows that you began your use of "Omega Lances" first then you need to speak with a trademark lawyer to discuss your options. Your trademark rights in that name certainly "relate back" to your registration application filing date of May 2006 but they may, instead, relate all the way back to your date of first use of that name in commerce. Whether they do or not depends on how persuasive the evidence is that you actually began to use that name as a mark in June 2005.
Disputes over who owns the senior rights to a trademark being used as a domain name are very fact intensive. Which, so long as you have a shot at winning, is why filing an ACPA action instead of initiating a UDRP proceeding is a good idea. In a ACPA action you can demand from the other side that it provide documentary evidence of its first use date. An ACPA is also more expensive, intimidating, and riskier for the one who holds the domain name registration because, if it loses, it can be ordered to pay a substantial amount of money in damages [so just filing a factually-supported ACPA action is sometimes enough to persuades the other side to just turn over the domain name].
I suggest that you do your homework and then speak with a trademark attorney. You should NOT speak with the other side before then. Good luck.
Curtis Lamar Harrington JrTax LawyerLong Beach, CA ·
2 or 3 small points and they may be obscured by your disguize:
1. Why did you put a noun into your mark? (You don't see Ford trademarking "Ford Automobiles" or Exxon marking "Exxon Gasoline". Tossing the noun in normally weakens a position. It helps someone who adopts it since the descriptive part is part of the mark.
2. You used term "omega" a common term, but it is hoped that your adjectival name is more like "exxon/xerox" in lacking otherwise popularity and less like "ace/knight/jester" and other dictionary names.
3. Keep in mind that money spent to defend your trademark is usually not deductible but capitalizable as part of the basis of the trademark registration. This means that for every dollar you spend on the trademark action, it may cost $1.50 (a dollar earned cost 50 cents in tax, and that dollar earned and spent on defending your trademark thus cost you $1.50
4. Keep in mind that if your mark registered in Feb 2007, that it does not become incontestible until Feb 2012. This means that the user can go out and seek and buy goodwill (and business) from others and tack his time on. Thus, he may be able to establish rights that you may not know about at this time. In this case, he might even attack your trademark filing.
5. Do you have commercial liability insurance with an ADVERTISING RIDER? This has been one way to defray or eliminate the costs of defending, along with permitting the IRC section 162 deductibility of the insurance. You should look at getting insurance for future.
You may want to have someone look at your mark to opine on its value as well as the other aspects mentioned you explore whether its worth it or not based upon its value.
I would just add two things to Mr. Ballard's comments.
You said they did not register the name until last month, and they did not incorporate until some time after you registered. This is not definitive. They could have been operating in some other fashion before, using that name.
Now you are likely under the facts you gave to be the first user, but many companies use trade names without ever bothering to register them. I worked for a company that never bothered to register its trade name in any way, for 40 years, only doing so when someone registered a confusingly similar domain name.
So look beyond the registration dates.
Showing you had earlier use will not be enough to show bad faith either.
You will have to show that they knew of your use and that they intended to get your customers.
I agree that an ACPA action would be a good approach. But the key issue here is whether the First Use In Commerce of your competitor occurred before your claimed June 2005 first use. You should not assume merely because of dates of incorporation and/or business organizational changes of your competitor that its first use did not occur prior to June 2005. It is quite possible that your competitor is the senior user. Further, you should not assume that registration by your competitor was in bad faith---this may be quite difficult to prove in these circumstances. At bottom--you cannot rely on the general advice that you receive from lawyers on this site to make decisions on this matter---you need to retain trademark/IP counsel ASAP.
