For my newest project, I landed a great domain name. The problem is, I wasn't able to get the .com, but instead all the other extensions. The name is five letters and is not a pre-existing brand or even a word in the dictionary. The plan is to turn this into a type of social media site, and I'm worried of potential legal issues I could run into down the road with the .com domain owner. As of right now, the .com (which was first registered about a year before my extensions) is just a parked sedo type page. Should I be worried that if this project takes off this guy could give me trouble in the future? Since he registered first, does he have legal entitlements that I don't have? What can I do to protect this name right now? Trademark it? Thanks!
I would guess the first person to set up a fully working website would have all the entitlements to the name.
Registering a domain gives you no trademark rights. Usage of a mark gives you rights to that type of usage, not exclusive rights to the mark (some exceptions on famous marks). If you use this domain to sell jewelry, then you would establish usage in the jewelry classification. The .com could still be used for something else. Also realize that trademarks are not just established by domain usage. If there is other prior usage (say a mail order or brick and mortar that sells jewelry) but don't have a website, they still may have rights to claim infringement if your usage conflicts with their prior usage. Since infringement does not have to be exact (similar, phonetic, and even foreign spellings can be infringement) you need to check for any possible prior usage that could be conflicting. A good trademark search will run a few hundred dollars. Trademarks do not need to be registered to establish rights to a mark. You cannot obtain a trademark without usage, although you can file for an intent to use which establishes a basis for a usage start date. Since the .com existed prior to your usage you wouldn't have cause to take the domain unless they started to piggyback on your usage. If you are going to file for a federal registration yourself, make absolutely sure you know what you are doing and what they want. If you make a mistake, your application will be rejected and you will have to file (and pay) again. A trademark attorney would cost around $1,000.
Unchilled: With all due respect to Jonathan, the first person to register a domain name with a working web site doesn’t necessarily have any trademark rights in the domain name. Mjewel is correct in that trademarks must identify a source of goods and services. Not all domain names do that. The first step for any trademark attorney analyzing your situation would be to do a trademark availability search in those geographic regions where you are going to be primarily engaged in business. Certainly, U.S. trademark availability search would be at least part of the occasion. I can’t say enough how important it is to make sure you check trademark clearance before you start investing time and money in a domain name which may have problems down the line. We represent a lot of clients who come to us after they’ve launched a very successful business only to find out that someone has superior trademark rights. When that trademark is registered with the USPTO, there is potential liability up to $100,000.00 plus attorneys’ fees. Assuming that there are no prior existing trademark rights within the international class of goods and services (your market), you should then register your domain name as an intent to use trademark even before you get the website developed, you will have put your marker down for trademark rights once you are actually doing business in commerce. Many people get confused about the difference between domain names and trademarks. Registering a domain name does not establish trademark rights. Moreover, just because a trademark is available does not mean that it doesn’t infringe someone else’s trademark. Also know that trademarks protect words phonetically against possible consumer confusion. This means that different spellings and words which sound like the domain you have chosen might also be problematic. Enrico Schaefer, Attorney Traverse Legal, PLC TraverseLegal.com 231-932-0411 (office) 231-313-0564 (cell) 231-932-0636 (fax)