A question about unfair competition, domain name

I think my colleague discussed the correct issues, but I don't think I would agree that in this context using that domain is actionable in any way. Let's be clear, it is a domain in this context and NOT a trademark. Why? Because it is just a generic description of what the site relates to. No one can lay claim to that as a trademark therefore no cybersquatting can occur in that context. The fact that your site relates to say available studio apartments in Boston, would mean you have a bona fide good faith use for the domain and one that bears no mark in it. Now regards to the trade name issue. Merely registering a name with the state does not procure any trademark rights to it. If you register a very generic name as your example, then you run the risk that even though no one can come in and also register the same name in the same state that name may certainly be employed in any number of ways such as in a domain so that other competitors are free to also describe the goods and services they too offer. So, in other words, this company MAY have claims if they can show unfair competition practices like if for example you were clearly misleading the market into believing that the two businesses were related. This might be shown for example if you also used the same trade dress, marketing copy, logo, web layout, etc. But no one can stop you from using generic terms that identify your goods and services descriptively in text and your use of this domain in that context and in my opinion would not get you there. That said, this other company does not have to like it and they would still be free to make problems for you. So anytime you do something like this you can still set yourself up for a legal battle irrespective of whether the other side actually has a very good legal position. Again, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with. Best regards, Frank Natoli-Lapin, LLC

There’s not much to add to Attorney Natoli’s very generous response. I will note that it’s a very rare circumstance when a court applies state unfair competition law to confer on a company the exclusive right to use a generic phrase to name its company or to brand its products or services. State or federal trademark law normally preempts that analysis. One such circumstance, however, would occur if the owner of “Main Street Pizza” asked a court to prevent another company from opening another “Main Street Pizza” restaurant on small town Main Street. The rationale for preventing that from occurring would not come from trademark law [the phrase cannot serve as a trademark] but rather the “unfair” component of state unfair competition law. Specifically, it would simply be unfair for the second restaurant to cause consumer confusion, to benefit from that confusion, and to harm the existing restaurant by doing business under the same name. One court in California came to this conclusion – which was the right result even though its analysis wrongly imported trademark law [you can read the case via the link below]. In any event, the registration and use of a domain name for a website does not implicate state unfair competition law. Because state law applies, speak with your own Massachusetts-licensed intellectual property attorney for his or her take on the matter. Good luck.

The issue is "trade confusion". That is you are trying to confuse consumers looking for a competitor's website so as to steer that business to your website. When you use similar sounding names, that's called trolling or cyber-squatting. Even if you engage in the same trade as your competitor and your new domain is active and signing up clients or customers, there's a good chance you might get sued under the trademark law. See 15 U.S.C. S.1125(d) . See also Virtual Works v Volkswagen, et al, 238 F.3d 264 (4th Cir. 2001). Link here: https://law.resource.org/pub/us/case/reporter/F... I suggest you consult with an Intellectual Property attorney before moving forward with your plans. Though the use of similar sounding names and even common words may be technically permissible, the hypothetical you posted here, for instance, tells me its your intent to interfere with your competition and create trade confusion. Furthermore, the domain name holder, that is your competitor, may bring an action before WIPO and ask that the domain name be cancelled or transferred due specifically to the trade confusion you're creating.