.com or .net (it can panic or not?)

[Ozzman]

My question is actually a scenario. So let's take an example to make my concern more clearer.


Microsoft Corporation is the leading software vendor in the world. If some company which might be dealing in clothes & accesories (different products than Microsoft) registers a domain as www.microsoft.net OR www.microsoft.org OR any other. Can it become panic for Microsoft Corporation to be considered seriously??

And how this new but duplicate domain (www.microsoft.net OR www.microsoft.org) can affect Microsoft Corporation

Please elaborate.

Thanks for your attention.

[wige]

Generally speaking, at least as far as the US, companies that are in different industries can share the same name. For example, ABC Pens and ABC Widgets. However, in the case of companies that may be considered household names like Microsoft, Xerox, etc., you might run into problems using the same name.

As far as the domain name, when you have a domain that is the company's own name, you can run into search problems because branded searches will return both companies. Since users typically click the first result, the larger established company is likely to get the bulk of clicks unless it is immediately obvious that that is the wrong company, and the customer knows that there are two companies with that name.

[Orion]

There wouldn't be any real issue as any TM name is provisioned in the ICANN make up so that anyone registering it would have to give up the domain immediately to the TM holder. Easier with a ® trade mark too..

On the worried side etc. the worry (fear) comes from what will these people do to our good name, are they profiting from using our name etc. There are quite a few court cases over the last 12 years or so where people have done just that, registered a similar domain name or different extension to some large companies names, and have had to hand over the domain, profits and pay fines and court costs on top of it all.

[rickanderson]

Originally Posted by Ozzman

My question is actually a scenario. So let's take an example to make my concern more clearer.


Microsoft Corporation is the leading software vendor in the world. If some company which might be dealing in clothes & accesories (different products than Microsoft) registers a domain as www.microsoft.net OR www.microsoft.org OR any other. Can it become panic for Microsoft Corporation to be considered seriously??

And how this new but duplicate domain (www.microsoft.net OR www.microsoft.org) can affect Microsoft Corporation

Please elaborate.

Thanks for your attention.

Hi Ozz

Does it matter that none of those domains are actually available since every microsoft extention under the sun is not available?

Rick

[OroLatina]

A few months ago I was having lunch with our trademark/copywrite attorney and he mentioned a similar case he where he had just won. A company, XXX Travel was promoting vacations for people in the "Lifestyle". As it turns out, his client, XXX, provides these very same services and he was able to prove that the intent of XXX Travel was to siphon off traffic / business from XXX'a travel business. The trademark infringer was forced to surrender the domain name to XXX. I was not provided any other details surrounding the case. Given this, and other materials that I have read, cybersquatting is not looked fondly upon and legal outlets, while still in their unrefined infancy, are coming available and if you should register a competing domain to an established brand, it is possible you could be subjecting yourself to an expensive amount of litigation, especially if you have even remotely similar services.
In the case you give with Microsoft, they have an enormous legal budget and can file a suit whether or not they really have a leg to stand on. If lets say you were able to register that domain name, microsoft.net and were NOT in the software (or even Information Technology) business...lets say you were selling a new type of toilet paper; they would STILL file suit as they MUST always be able to show that they aggressively protect their trademark (a requirement of the trademark office). This means that you would have to respond to their suit. This typically involves a minimum of a 5-10,000 dollar (or more) retainer for a lawyer to defend you/your company. This is less than a drop in the ocean for Microsoft; but for most other folks, this could be a tremendous financial burden. If you chose to not respond to the suit by the designated date, they could win a default judgement against you (which could include the surrendering of your domain as well as monetary penalties).
We at OroLatina.com believe strongly in protecting our own trademarks (OroLatina and OroLatina.com) and respecting those of others. Without this sytem in place, anyone could represent themselves as (or close to) anyone else they would want.
In short, avoid legal entanglements, especially with the big players in the markets and create your own, unique name and brand identity for whatever service you choose to provide within the market place.

Cheers,

[rickanderson]

Hi Oro

Theres one important distinction. In your friends case he won due to the 'confusingly similiar' nature of the business. In the case of the toilet paper there is nothing confusing about it....one involves a new technology of micro fibers making it the softest toilet tissue on earth...Micro Soft, and the other is engaged in non scatalogical affairs. They're completely different industries...so I give the edge to the tissue manufacturer.

Also, you really don't need a lawyer in this day and age for basic legal matters. The time spent doing the legwork, the studying, filing, arbitration (cause it's not going to court) would be a worthwhile academic exercise for most anybody.

Regards
Rick

[DrTandem1]

You can't trademark a URL, however a URL can have a trademarked name within it. Also, beyond trademarks, domain names such as Madonna have been confiscated. As for similar or confusing domain names that have completely different meanings, products and or services, you just may need a lawyer:

Nissan Computer Corporation

[OroLatina]

I do agree with you, but as I stated, to protect their trademark, they can (and would) file suit. Its not always who is standing on the right side of the law, but who can afford the lengthy and costly legal process. My recommendation was merely to avoid such a pitfall. A good example of this is with Donal Trump. It is my understanding that he put a plumbing company out of business / forced them to change their name that was using the Trump name. While we have a great legal system in the United States, justice is unfortunately very expensive. Even a frivalous lawsuit still requires the time, energy and effort (and money) to properly respond; with or without a lawyer. With respect to your comment about doing legal legwork yourself, it is certanly plausible, but it is completely based on what you are trying to do. In our case, with repect to trademarks and other corporate assets and affairs, it would be foolish to go to battle without a good attorney. We live in a litigious society and most people have neither the time nor inclination to properly educate themselves to defend or pursue their own suits. I leave it to the lawyers so I can focus on those things I know.

cheers

OroLatina

[datetopia]

There are also robots searching for new domains or just website content that contain certain copyrighted names.

We received large amounts of automated emails as soon as a hosting customer's website got visible in search engines: The sites were selling some generic versions for certain medicines. The pages specified what are the replacements for. Emails were sent directly to data center abuse administrators and we had to temporary close the websites and have the owners remove those words, mainly not for the copyright issues (as complaints did not present any solid arguments and replies were not answered) but to stop the amount of messages received by the abuse departments - messages were received for various websites, terms and occurrences in similar format.

[jrb@w3f.com]

Interesting thing happened to my friend.

He used to have a web site: nascarflags.com and got really nasty lawyer
letters telling him that he was trampoling on their trademarked name.

Since all he sold on the site was Nascar Flags, with trademark recognition
all over the site, his only resolution was to go out of business and not sell
their products any more. Nascars loss too.

Shows you what happens when your pockets are not as deep.

Yes, it was all explained over and over and they still insisted.

[rickanderson]

Originally Posted by jrb@w3f.com

Interesting thing happened to my friend.his only resolution was to go out of business"
Shows you what happens when your pockets are not as deep.

Hi jrb.

It's a myth that you have to have deep pockets to go toe to toe with the big guys. If your friend had me as a friend he would still be in business. I love taking on lawyers....its a real rush. Right now I'm suing the largest Bank In Canada just for a joke and just for something to do. The 25 grand I stand to make is a bit of an incentive as well.

I find David and Goliath stories to be quite inspirational actually. The real trick lies in the ability to walk over the rice paper without leaving any prints.

Regards
Rick

[OroLatina]

Well, while you cant trademark a URL, you can trademark a name - ie: we own OroLatina.com (and OroLatina), just like Amazon.com (and Amazon) are trademarked by their company. It would not be possible for someone to trademark Amazon.net and it is questionable if it could even be marketed without a legal assault from Amazon.com, no matter what their business.

[wige]

It seems to me that sports teams, leagues and organizations are among the most, zealous, in their protection of names and logos. In reality, they charge a lot of money in licensing for those names, so if they allow a company to use the name for free, they could lose the licensing fees that they already collect.

As an example, I used to develop open source software as a hobby. Most of the software I wrote was built on a specific company's platform. I knew I couldn't just write that company's name on the site in any way without a licensing agreement, but I sent them a short note asking about the correct wording, and they gave me a free licensing agreement so that I could properly promote the products (since they were freeware, I could not have promoted the software if I had to pay licensing). They even provided logos for use on the site, helped me write the appropriate disclaimers, etc.

As a small business, if you are reselling a licensed product or developing a fan site where you are not profiting directly from the name of the company, but rather profiting from the sale of product that is already licensed, or if you are attempting to develop a fan site about a sport or team and will profit only from advertising on the site, you may be able to do so with the cooperation of the league/team. In many cases they will give you permission to use the copyrighted name, provided you incorporate certain disclaimers into the site. You can also check the team or league's web site for a web-media kit that contains the needed disclaimers as well as media and promotional content that you can use on your site after filling out and returning a license agreement.

[qh4dotcom]

That's why it's a good idea to register all extensions of your domain. Godaddy even encourages it when you're paying for registering a new domain.

[Clarrie]

Originally Posted by qh4dotcom

That's why it's a good idea to register all extensions of your domain. Godaddy even encourages it when you're paying for registering a new domain.

Why wouldn't they? More registration fees! Makes sense both ways - bit like insurance - you pay, you protect yourself.

[Clarrie]

Originally Posted by jrb@w3f.com

Interesting thing happened to my friend.

He used to have a web site: nascarflags.com and got really nasty lawyer
letters telling him that he was trampoling on their trademarked name.

Since all he sold on the site was Nascar Flags, with trademark recognition
all over the site, his only resolution was to go out of business and not sell
their products any more. Nascars loss too.

Shows you what happens when your pockets are not as deep.

Yes, it was all explained over and over and they still insisted.

You also need to bear in mind that trademark laws vary around the world - in the US you can trademark a lot more things that you can in the UK and some European countries, plus there's also EU wide trademark law.

Interpretation, enforcement and legitimate defences also differ: in the UK Nascar Flags wouldn't be able to stop your friend using the Nascar trademark on his site (although they could force him to relinquish the domain name), as if you are engaged in selling a branded product, you have an automatic right to use the trademark to promote the products - its an implied condition of the sale, and should they trademark owner subsequently try and stop its use, they are actually in breach of competition law.

[Clarrie]

Originally Posted by OroLatina

I do agree with you, but as I stated, to protect their trademark, they can (and would) file suit. Its not always who is standing on the right side of the law, but who can afford the lengthy and costly legal process. My recommendation was merely to avoid such a pitfall. A good example of this is with Donal Trump. It is my understanding that he put a plumbing company out of business / forced them to change their name that was using the Trump name. While we have a great legal system in the United States, justice is unfortunately very expensive. Even a frivalous lawsuit still requires the time, energy and effort (and money) to properly respond; with or without a lawyer. With respect to your comment about doing legal legwork yourself, it is certanly plausible, but it is completely based on what you are trying to do. In our case, with repect to trademarks and other corporate assets and affairs, it would be foolish to go to battle without a good attorney. We live in a litigious society and most people have neither the time nor inclination to properly educate themselves to defend or pursue their own suits. I leave it to the lawyers so I can focus on those things I know.

cheers

OroLatina

Re Donal Trump - there was a landmark case in the UK a few years ago. The case was of a man called Forte who ran a small teashop in Winchester as The Forte Tearooms. He was taken to court by Trust House Forte who owned the trademark "Forte" and at the time owned chains of hotels and restaurants. Their argument was that Mr Forte shouldn't be allowed to use the Forte trademark for his competing restaurant.

The case eventually went to the House of Lords (that's the equivalent of the Supreme Court in the US), who ruled that an individual always has the right to trade under his or her own name, regardless of whether the name is trademarked or not.

Mr Forte and his Tearoom are still there - I stop in for coffee from time to time. My token anti-corporate statement!

[vijay mohan]

hello friends i am new in this forum and would like to ask a thing that what is the difference in saving your extension in .com or .net.

[rickanderson]

Originally Posted by vijay mohan

hello friends i am new in this forum and would like to ask a thing that what is the difference in saving your extension in .com or .net.

Hi Vijay

A .com is a holiday by the sea and a .net is making mud pies in the slum.

Regards
Rick

[rickanderson]

[quote=Clarrie;352679]The case eventually went to the House of Lords (that's the equivalent of the Supreme Court in the US), who ruled that an individual always has the right to trade under his or her own name, regardless of whether the name is trademarked or not[/quote]

Hi Clarrie:

That makes me very happy since thats the way it should be. Our name in a sense is the core of our being; have that stripped away all heck breaks loose. The question asked by the HOL is what is naturally just? ... and the Brits are way too clever to deny a person fair play and decency as evidenced by their complete dedication to the principles of fundamental justice.



Regards
Rick

[cz]

the Brits are way too clever to deny a person fair play and decency as evidenced by their complete dedication to the principles of fundamental justice.

Do I sense a hint of tongue in cheek humor rickanderson?

Well according to the "House of Lords".... I believe I'll change my last name to Mr. Microsoft or Mr. Google!

[DrTandem1]

Originally Posted by vijay mohan

hello friends i am new in this forum and would like to ask a thing that what is the difference in saving your extension in .com or .net.

I'm assuming you are asking the difference between having a top level domain of .com or .net for a website. In other words, what's the difference between widgets. com or widgets.net. Dot com domains are usually preferred for e-commerce sites. "Com" stands for commercial and "net" stands for network. However, you can use either for e-commerce. Many people look to .net or other top level domains when they discover that the .com version is not available.

The reason dot com is preferred as it is the most heavily used. People will type ".com" by habit. Also, the keyboard shortcut of crtl/enter (pressing the control key while hitting the enter key) populates "http://www" in front of whatever you have entered in the browser's address window and ".com" after whatever you have entered in that window.

Some top level domains are not available to you as a private citizen such as .gov, .mil and .edu to mention a few. Many prefer .org (organization) for political or non-profit sites.

You can use whichever (.com or .net) that you want. However, if the .com version is already taken, you may want to try being a bit more creative to obtain a d.com domain name. The reason being for the above mentioned reasons, plus the confusion factor. Some who obtain the .com version of their domain name also register the .net, .org and other top level domains of the same name to prevent others from copycat sites.

[Clarrie]

Originally Posted by cz

Do I sense a hint of tongue in cheek humor rickanderson?

Well according to the "House of Lords".... I believe I'll change my last name to Mr. Microsoft or Mr. Google!

Ahh, those Lords of the Law are smarter than that - they also made clear that it applied only in cases of birth name, and the individual must be sole trader - no companies, and no convenient "deed poll" changes!

[DrTandem1]

You can't trademark a person's name in the US.

[sparky]

Going back to Microsoft. I remember reading a guy name Mike Rowe name his site Mikerowesoft.com and got it taken away due to a law suit. I not sure on this next point so please tell me if I'm not correct. But I believe it all comes down to who had the name and site up first and who has it trademarked. If Mike Rowe put his site up in lets say 1989 and Microsoft put theres up in 1990 then Microsoft could not do anything since Mike Rowe was using the name first. This also comes into if Microsoft Trademarks there name before Mike Rowe does.

There has been cases also like the Sears one a long time back where a guy used SearsRepair and Sears Co. tried to make him remove it. But due to Sears was his real name there wasn't anything that they could do. like the Mike Rowe case if his last name was "Soft" there would not be anything Microsoft could do.


But going back to the .com and .net concern I myself would not worry about it unless you also want to get every domain thats maybe spelled a little different link Mike Rowe did with Microsoft. I would only worry about it if I had a need to.
But I would Trademark the name if the URL follows the name.

[DrTandem1]

If Mike Row, and I don't even know whether that story is true, had simply named his site MikeRow.com, he would not have any troubles with Microsoft. The word "soft" has nothing to do with Mike Row the person and it wouldn't matter who had the site up first. It is too similar a business name. If Mike Row was in the software business, he should try Row's Software or Mike's Software, not MikeRowSoft.

Who has a domain first has little to do with it. If the name is trademarked and the name being used by another party is too similar to the trademarked version, then there's going to be a dispute and the trademark holder will win.

[sparky]

I found an article on the Mike Rowe case
CNN.com - Microsoft to take over MikeRoweSoft.com - Jan. 26, 2004

I'm not sure if we are on the same page. I was stating if Mikes last name was "Soft" making his real name Mike Rowe Soft then Microsoft could not have done anything because one can not be stopped from using their own name. I think you may have said the same thing but the word Soft has everything to do with it case it was not his real name.

I'm not going to get into a debate on the point of who has there site up first for yes I feel it is the deciding factor and this is why. If Mike Rowe had his site up Before Microsoft then Microsoft would not have a leg to stand on saying he is only using the name to get traffic. I do see where Mike Rowe would be able to say this to Microsoft since his site was up before Microsoft.

In short, if I had registered a domain called AmazonBooks.com and was in business for 2 years before Amazon came along and registered Amazon.com, Amazon could make me remove it? I find this hard to swallow as I was in business first, I had the domain first. That is what I was trying to point out in a nutshell. The same would go if someone registered an Amazonbooks.net, I could make them remove it as I was in business first and they would be infringing on me.