I bought a .com, developed it and someone took the .net/.org - ?

Back in Nov of '06 I purchased a .com, not thinking it would amount to more than a way to pass me extra time

Since then, the site (two of them actually) has been steadily climbing and I'm getting 25,000+ uniques per day.

I looked up my-same-domain-name.com and noticed that someone picked up on my sites success and registered both the .org and .net (of both my domains)

That certain someone happens to be a competitor of mine and is using the domains to host content similar to my own; again, he is my competitor. For clarity sake both sites are graphics related.

Anyway, I was wondering if I have legal claim to the org and net version of my domains.

My competitor registered the domains back in May of 07. I should also point out that the domains are made-up-words, making them even more unique; think "ebay", or "google".

Thanks for any advice...

btw, this person is in the dominican republic...

 

You might have a case for a bad faith registration and could claim a common law trademark - however, with the person not living in the US, I would suggest trying to get a Federally Registered trademark - which would make it easier to recover the domains. I would get in touch with a local intellectual property rights attorney to go over your options as long as you are prepared to spend at least several thousand dollars in legal fees, trademark filing, and dispute. Make sure you pay for a trademark search before you go to the trouble of filing for a Federal Registration. Figure two to three hundred dollars for this is you order it without using an attorney. It's not likely that you will recover these fees from an out of country party, so only you can decide if the domain is worth protecting.

 

I would say, you could only take affective legal action in the event you had a registered trademark or patent on that name. Otherwise it falls in the public domain territory.

Boulder

 

There is very little you can do that would be worth the money due to the location of the person. My advice would be to contact the owner and ask them if they would like to sell the domain... This may work if the sites are not making much income for the person.

 

do you have a trademark on the name?

if not theirs nothing you can do.

Mab y get affiliate with him???

 

Maybe, but at a push. Would be hard.

 

Exactly, that's probably why he registered them in the first place... Knowing that you'd want them, and he could charge a pretty penny...

 

Register a trademark before he does and then send a cease and desist order.

 

At this point, registering the trademark is not likely to gain any legal or UDRP ground in this situation. It would protect you in the future, but it won't have any weight in this situation. The reason is that the other site registered the domains prior to the trademark registration. That means it is fair game, unless you can prove that you had common-law rights to the mark before he registered.

Common-law status is more than merely being the first to use a mark in trade. Often without registration, the mark must have gained some fame, meaning when people think of it they think of a specific product. The fact that there was only seven months in between the registrations might mean to some that you didn't have time to become famous. The extent of this fame is not defined and often interpretted differently. Having a made-up word actually would help (assuming that you made up the word). Being first to use it would also help. However, if you were not the first to use it in this context, rather you used it before this particular person, then common law status would probably not be recognized.

If you were to persue this, you have three options, court, UDRP, or try to buy. As others pointed out, the location of this person could make it very difficult to take this to court. UDRP will cost at least $1,000 dollars just to try (and possibly more). Given the information that you have stated, my guess is you don't have much of a shot in court or UDRP. Every case is different and based on its own merits and since you don't list the sites or the actual term, any opinion expressed here is an educated guess at best. Even by a lawyer, which I am not.

 

LOL tell face-book that, they were registered years before the almighty facebook and they just lost their domain today.

 

Wrong conclusion from the facts.

Face-book.com was registered for the first time in 2004. That is one year before facebook.com filed for registration of their first US trademark. However, facebook.com had registered a European trade mark in 2003 (over a year before face-book.com was registered). Add to that, facebook.com had been operating as a social networking site (though not in its current form) nearly since its inception, which was in 1997 (though that was by a different company AboutFace Corp.). That means that facebook.com had seven years to establish common-law rights to the mark before face-book.com was registered. That means even if they had not registered the trademark, they could have won on common-law rights that they held at the time. However, they did hold a European trademark prior to the other domain being registered.

Moreover, one thing that face-book.com did wrong was that the initial website looked to be a product sales page. Later (after the trademark was registered) the site was changed to be links to social networking sites. If you have a site that has a potentially infringing name, it is possible to get away with the domain if the services offered are not related. Generally speaking, if a domain is registered prior to another company having any claims to the mark (registered or common-law) then nothing can be done by the site holding the rights to the mark (as there is no bad faith). There have been cases where a domain that initially was untouchable became up for grab because they replaced the content of their site to match or compete with a site that now had rights to the mark. By changing the content to be very similar or competing one can (not always) end up creating retro-active bad faith. This is rare, so far.

Furthermore, facebook.com did not win the dispute on the merits of the case. The respondent (the owner of face-book.com) did not respond to the UDRP claim. When the respondent fails to make their case, they almost always lose. Take a look at the decision and you will see that the panel in this case specifically stated that the evidence supplied by facebook.com wsa weak. Since the respondent did not petition to keep the domain, the panel felt the only course was to award the domain to facebook.com.

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1193.html

 

whats your website?

what steps did you do to get that amount of visitors a day?

 

Domains are a first come first server issue that has yet to be fully defined in law, the case law for this defines that there has not been a winner in thes instances as the definition was that people went to a specific marketing statement.

IE peopel go to google.com not google.org and the marketign promotes google.com and thus the peoples choice is defined by the advertising.

How many times have u typed the name wrong, seen it waqs teh wrong site so retype and go to the right domain, this is the basis of teh argument.

So I think you would have an impossible task to win this.

 

Next time, you are going to make a site about which you are sure that you will take it to the peak, register all TLDs in advance, atleast .com, .net and .info.

Ppl are hungry for domains that can get them a bit of traffic.

 

This happens with popular sites. I don't think much can be done if you didn't register the trademark.

 

Even trademarks do not fully protect the issue of domains because of teh defined first come first served basis, you can only protect content under the TM.

 

umm, no. content is copyright law, TM is trademark law. If you have a trademark registered before someone registers your trademark and they use the domain in bad faith, you have a huge chance of winning the case.

 

I guess this is one as country specific as that would not apply under NZ law, trademark by definition here protects the product and or service but does not protect a domain name which here is defined as first come first served, and if I remember the origional internic policy this is the case in the US as well.

A lawyer can and may argue that the domain gives implication of infringment but unless the content agreed it would be a hard argument, do you have case law I can view to support the contrary for the US? as youve peeked my interest now.

Based on a trademark reolution for for teh name itself, here you cannot protect the name as such more specific design, colour etc as by definition teh english language cannot be trademarked. However if you had a unique name you would be able to argue a substantive case and thus your poitn would stand, but I was defining the common law rule based on general english language. Sorry should have clarified that first I suppose.

 

NCH, .net and .org domain registrations are under the control of ICANN. The ICANN uses the UDRP to resolve domain disputes outside of the courts. They have the authority (and control) to give a domain to a different person/company (remember, domains are leased not owned). The UDRP has specific rules about trademarks. It recognizes both registered and common-law trademarks. For more information on the process:
http://www.icann.org/udrp/udrp.htm

 

I have a .org site I developed five years ago and have been spending a lot of money promoting. When I first set up the site I put a tm after the name ("is a trademark of the") and otherwise did not register it. Several years ago some on registered the .com version and put up an ad site. They want like $5,000 to sell it and I didn't buy. The price has probably dropped since then. What's the least expensive way for me to get his domain?