Trademark Domain Name Dispute

[jon_]

I believe that a competitor registered a domain domain name that is confusingly similar to our company's trade name. Right now he is using it to redirect visitors from that domain name to his competing site. What should I do?

Jon

 

[Michael Wechsler]

Originally posted by jon
I believe that a competitor registered a domain domain name that is confusingly similar to our company's trade name. Right now he is using it to redirect visitors from that domain name to his competing site. What should I do?

First you should ask whether this act might constitute trademark infringement. Have you registered a trademark for your company? If not, is it unique? For example, JoNoMo Flowers, Inc. is a more unique than Flower Store, Inc. and someone's use of the "JoNoMo" name would be more likely to constitute trademark infringment than the generic "Flower Store" corporate name.

It sounds like there might be some element of "bad faith" -- your competitor using a name similar to your company to divert your customers to him. You may want to check out our trademark section here or have a brief consultation with a lawyer. With regard to domain names, you are far more likely to be successful in seizing them if they are actually put in use by the infringer (or tarnisher) of your mark. This means that the domain name redirects a visitor rather than producing a dead link you will probably have a better chance of winning in arbitration with WIPO.

 

[jon_]

OK. I'll do that when the trademark stuff is back online. But don't I have the right to challenge registrations like that? I remember people could do that and then registrars like Network Solutions would put the name on hold or confiscate it or something like that. Thanks, Jon

 

[Michael Wechsler]

Originally posted by jon
I remember people could do that and then registrars like Network Solutions would put the name on hold or confiscate it or something like that. Thanks, Jon

Actually, if memory serves correct, disputes are now governed by WIPO, but you'll see the terms in the terms and conditions of your registrar (or in this instance the registrar of the infringer). Check there first but it is likely to be WIPO resolution. I think it is $1500 to challenge up to 3 (or perhaps it is 5) domain names against the same defendant. Unfortunately it's only worthwhile if it may cost you in money and best to challenge all the wrongfully registered domains that you believe this person may have. Note also that if you win it doesn't meant that the other person has to pay for the cost of arbitration with WIPO. Good luck!

 

[Michael Wechsler]

Additional information - take a look at WIPO's site, specifically this URL -- http://arbiter.wipo.int/domains/fees/index.html. I think it makes sense to do a WHOIS search to determine all the domain names that the squatter is trying to use because for your $1,500 you can resolve up to 5 domains with the same defendant at one time.