Trademark Possession of a TLD domain name by a company that has registered the same name in United States Pate

[Hamed]

Jurisdiction

Middle East

I have a question and a concern about starting my new business with a TLD domain name similar to a .com domain and registered by another person.

I own a TLD domain similar to the .com extension registered by another company in the United States Patent and Trademark Office.

I have to mention that both sites are active in the same field and there are no other copyright infringements such as similarity in Logo or UI.

My scope of activity is national and nationwide and will not be international

My domain: xyz.es

Other domain: xyz.com

Regarding the above issue, if I start a business with this TLD domain, can a foreign company owning a similar .com domain take over my TLD domain by suing me in ICANN or any other judicial authority?

 

[Zigner]

Maybe...

 

[adjusterjack]

if I start a business with this TLD domain, can a foreign company owning a similar .com domain take over my TLD domain by suing me in ICANN or any other judicial authority?

Can? Sure. Do you have a ton of money set aside for a defense fund?

 

[zddoodah]

In the abstract, it's possible. Only someone with knowledge of the full details can provide a more complete opinion.

 

[flyingron]

Well, you have two issues, trademark and domain.

Trademarks are well versed in the law, but while there are international agreements (coincidentally known as the Madrid Protocol) that apply to the US and Spain interacting, your country will likely be the first place to check. "Middle East" is neither a country nor a US state, so it's hard to advise you on anything. You should consult an attorney there. Of course, if you have trademark issues, the domain may be of limited utility to you.

The second issue is domain issues which are tangential to trademarks. Alas, the domain space is tighter than trademarking alone. It comes down to whether you have a legitimate use of the name (i.e., you have either a valid entity name or trademark of that name) or you are just squatting on it. Alas, the dispute procedure for domains doesn't follow any sane rule of law. It's handled by an arbitration process (unless the courts get involved based on some other IP issue).