Hello all, I just started an online e-cig business. For example lets say my company name is cigcigcig (one word) and my domain is cigcigcig.com. I was contacted today by another company with the same name as mine cig cig cig (3 words) and the domain name cig-cig-cig.com. These people say they started their business 8 months ago and want to buy my domain name. I don't want to sell my domain because 1. I really like the name and 2. I already invested in having a nice logo made and our facebook has a ton of likes. My question is: If I decide not to sell can this other company legally take my name or make me stop using it? I feel I took the necessary steps. The domain was available and I checked to see if the name was copyrighted. Everything looked good, so I ran with it. This just puts a downer on an otherwise exciting start we had.
My initial thoughts on this is: you could always threaten back with a counter attack for 'domain hijacking', even where a domain is trademarked and you can provide sufficient proof that you had no prior knowledge of the trademark, and/or your site/plans have no resemblance to that company you could well be all good to go, especially if the name is a generic one.
Even better then, just write back and state very clearly you have no intentions of selling and if they contact you again you will pursue them for harassment and/or domain hijacking. Basically tell them "do one"!!
Thanks for your help. So you're saying even though they were established 7 months before me, I should be ok?
7 months is not exactly a long time, in any case trademarked or not. Also in the event a trademark is registered check what dates that would start from, and some might argue with me and say a trade is a trade mark infringement, but I would beg to differ. I have read cases where the domain holder argued the case that because the company (the one who wants the domain from you) is fairly new the public in general would not or may not be familiar with them to have known that the domain name you hold is trademarked. I would still go down the route of hijacking and/or not known of that company beforehand and/or no resemblance to yours
1. You are speaking about a trademark and thus copyright has nothing to do with this. In addition, since copyright is established as soon as the creative work is put in tangible form, there is no way for you to have searched it as you claim because the person simply need to have written it down and it does not even need to be made public (so it could be impossible to know about it). Anyway, since it is a trademark issue and not as copyright issue that point is moot anyway. 2. A trademark can be legally established by from being the first to use a mark in commerce. One can have either a common law trademark or a registered trademark. A common law trademark which is established by being the first to use the mark in commerce associated with certain goods or services is perfectly valid and enforceable. 3. The mark cigcigcig is pretty generic for both of you and may or may not even be allowed to be trademarked. Since it is only an example and not the actual term, this point is unclear. 4. If they started using their term "word word word" 8 months ago and then you came and tried to use in the same exact field "wordwordword" you are probably going want to pick a new name. You are basically using their same name but with 2 spaces removed. You are not in a good position if they have used their mark in commerce. Some of the advice you are getting in this thread is total crap by people who do not have a clue what they are talking about.
UpInVapor, UpInVapor.com are the names I'm using. Up in Vapor, up-in-vapor.com are the names the other company used first. Based on this, do you think it is in my best interest to sell them my domain and and change my company name. I'd really hate to do that as I worked hard to promote my business and I'm getting new customers every day under this name. Please let me know if you see anyway around this.
Selling domain names bearing trademarks to its mark holder is risky because they can use that as grounds for "cybersquatting" against you, especially if they can demonstrate trademark use before your registration. Registration isn't required for a trademark to exist.
I would delete the actual names from this thread (edit your post). It is hard to say. If they were in fact using those in commerce first, putting aside the domain names, they would seem to have a common law right to use the names. I would want to know more detail about exactly when and where they were selling under that name versus you. I would want to know more about the two businesses. Is one of you is an affiliate while the other is actually a business selling the item. It seems odd that they didn't buy the domain if they wanted it, but since yours is really just a version of theirs without the spaces, it would seem pretty confusing in the marketplace. You could certainly argue your position. You could also negotiate with them and try to come to some agreement so all your work was not lost. If they had not actively been selling for 8 months but just having a site with the name does not count as use in commerce.... they actually need to make sales and in multiple states to have a strong defensible mark. Actually, as I read your first post more carefully, you are asking if don't sell it could they take it or stop you from using it. The answer is yes. As for selling it to them, Dave Zan is right, but since they approached you first to sell the domain I think you are in a pretty good position. If you did decide to sell it, I would probably respond with something stating that you think you bought and have used the name in good faith, that you have no desire to sell the domain name due to your investments in promotion, but that you would consider any offer made and leave it to them to make you an appropriate offer.
I had no intention on selling. They approached me and asked to buy the domain. My question is am I better off giving them what they want and selling it to them or is there any way I can keep my domain and business name?
Given your circumstances, namely your site's content similar to theirs, keeping the domain name isn't likely an option. If they're offering to buy that from you for $1,500 or less than the cost of filing an administrative dispute, IMHO that's not such a bad idea. But of course, it's your call.