|Can a copyright owner 'take' my domain name?|
I bought a domain a long time ago...
I bought a .com domain a long time ago, 2006 to be exact. Let's call this domain acme.com
In 2009, 'acme technology inc' decides to jump onto the internet, and settles for acmeinc.com
Later on in 2009, they get more serious about their web interests and are interested in acme.com
My question is: do I have any worry that this domain could be removed, revoked, taken away from me in any fashion whatsoever? OR, am I free to do as I please with this domain name..? OR, am I completely off base and have no idea what I'm talking about?
Had a similar experience and hired a copyright attorney as things got heated. If you owned the domain prior to their successful primary copyright registration you're fine. acme technology inc can threaten all day long but you're fine.
|If you owned the domain prior to their successful primary copyright registration you're fine. |
That isn't always the case...but it would be a tough fight for them.
Would you be interested in selling the domain to them? They'll probably low-ball you anyway thinking they can take it from you but if the site is small to begin with you might want to consider that option instead of a legal battle.
Is it their copyright or a trademark I need to worry about..? I checked over at uspto.gov's TESS trademark search [tess2.uspto.gov] for acme and there's no record of it yet that I can see..
Thanks for your swift reply by the way!
|you might want to consider that option instead of a legal battle. |
The logistics of this just seem off... say you registered xyzabc123.com (a completely random domain name) back in 2006. You grew it into a fairly popular forum with about 3,000 members... nothing you'd want to throw away, but not enough to warrant registering a trademark/copyright to either.
Then acme inc drys its ears a few years later and copyrights/trademarks xyzabc123! Are you simply forced to hand over your domain name at that point in time..? If so I think I'm in the wrong business.. :p
Also note.. I live in another country than Acme Inc.
|Also note.. I live in another country than Acme Inc. |
That will certainly make things even more in your favour. I had a similar scenario in the late 90s when a US company tried to claim a name from me in the UK.
I assurred them I had no intention of using their trademarked name for B&M sales in the US and told them I would give them the first opportunity to buy it if I ever decided to sell. A couple of years ago they bought it from me for a reasonable price...nothing big, we were both happy.
Thanks for all the great, informative replies guys. I don't give this place enough credit!
So can anyone confirm or deny that it is possible for an 'innocent' domain registration to be hijacked or stolen by a copyright holder?
I am in no way trying to represent their company, steal their business, or even compete with them. I just thought that acme.com sounded catchy.. and I could use it some day.
Every case is different so no one can give you blanket reassurance. For instance, if the name is a made-up word or a clever mis-spelling or something like that then the fact that it was in use already could count against you. If it has been used for years as a trademark (even if not registered) that could count against you. However, the fact that you are in no way misrepresenting the site (as being connected to the company) counts in your favour.
One piece of advice... use a registrar that is based in a country other than that of acme inc. The fact that you live in another country may not be relevant if your registrar is faced with a court order!
|if the name is a made-up word or a clever mis-spelling or something like that |
Yet in some countries those supposedly "made-up" words may actually exist in their language.
|So can anyone confirm or deny that it is possible for an 'innocent' domain registration to be hijacked or stolen by a copyright holder? |
We don't give that type of legal advice here because it's impossible to do so however you do appear to have a prior "trading" history.
I'll give you an example...my main trading business name I have been using for 25+ years. I bought the .com and .co.uk extensions in the early 90s, the .biz, .info, .mobi and a few other TLDs over the ensuing years.
There is a very large public corporation that actually uses my name followed by two other words plus corporation. Their company is actively traded on the stock markets using MY name!
They use a four letter acronym for their sites, I occasionally get phone calls from people looking for them since they are that dumb they think my contact info is the other company's details.
The point I a making is that my trading company name existed a long time before theirs, in UK law that counts for a helluva lot.
|use a registrar that is based in a country other than that of acme inc |
That's an interesting suggestion. I actually use a German registrar that does all its financials through Switzerland. Are you intimating that such a registrar would be better placed to defend any action as opposed to a US-based registrar of a .com for example?
|Are you intimating that such a registrar would be better placed to defend any action as opposed to a US-based registrar of a .com for example? |
It's purely an issue of practicality for a registrar. If a judge in their own country issues a court order they will obey it. However, if a judge in another country issues such an order it can safely be ignored in most cases.
Like all suggestions in this forum, there is no guarantee attached but it may help.
Some very good comments and observations in this thread. Let me put in my two cents....for what its worth...
By way of background info, a copyright is a kind of intellectual property right over an original work, such as a book, a song, a photo, or a painting. A trademark, is a different kind of intellectual property right over the name of a brand, in connection with certain goods and/or services. An example of a copyright is the right that a writer has over his article on a web site. An example of a trademark, is the right of a company to prevent another company from using the same brand in connection with the same or confusingly similar goods or services.
When it comes to domain names, it is trademarks that come into play, rather than copyrights.
The basic rule when it comes to the interplay of domain names and trademarks, is that if the domain name is registered BEFORE the trademark is registered OR BEFORE the trademark has acquired "common law rights" (unregistered trademark rights that arise as a result of longstanding use and reputation), than the domain name owner could not possibly have registered it in bad faith because it is impossible for the domain registrant to have "targeted" the trademark owner, as the trademark did not even exist when the domain was first registered. Accordingly, this is, in many cases, a complete defense to an allegation of "cybersquatting".
Similarly, if you register a domain name when you are unaware of a trademark, or without any intention of unfairly taking advantage of a trademark owner, this can also give you a defense to an allegation of cybersquatting.
Nevertheless, if someone registers a domain name before someone else comes along and obtains a registered trademark, or before someone acquires common law trademark rights, the domain name owner can still get into trouble if they use the domain name in a manner that infringes upon the trademark owner's rights. For example, if you registered acme.com in 2000, and someone comes along in 2005 and stars an internet business under a similar name, and perhaps even gets a registered trademark, then although you were in the clear originally, time may have caught up to you, and the person with the registered tradmeark may have superior rights at that point...Of course, one can sometimes challenge the tradmeark owner on the basis that the trademark owner isnt the party that ought to have the trademark, because you were using the mark first...
It is always important to bear in mind however, that two companies can exist side by side, each using the same or similar name, without any infringement occuring, PROVIDED that each of the companies is not confusing the public by encroaching upon the other's sphere of business, i.e. by selling the same or similar goods and services. For example, there can be a MAXIMUM web hosting company, and a MAXIMUM coffee shop. The only exception is perhaps when the tradmeark is a famous one, like PEPSI or GOOGLE...no matter how these are used by someone else they would be confusing and therefore infringing, because these marks are so well known.
And by way of another trademark example - Apple!
In this case, it is the newcomer that effectively won the battle. Originally, Apple computers agreed to stay out of the music industry and thus were allowed to use a brand name that was already established (as a record label). I can't remember the details, but I think money did change hands.
I had a similar case last year, where a domain name I registered in good faith was challenged by someone who got a trademark for that name. I hired a topnotch intellectual property lawyer and the other guy backed off (I think he ran out of money for his lawyer).
When you get a trademark, though, there is a "strong" trademark (it's unique and final and put on the Principal registry) and a "weak" one (these are put on the Supplemental Register). The guy trademarked a term which was in wide use and very descriptive, and only got on the Supplemental Register. How he even got that far was beyond me. (His mark was so weak we could have easily objected but we missed the deadline.) But, unless he can prove over a number of years that the phrase would be associated with him and his services, he can not move up to the Principal Register. Fat chance - there was even a society named after his trademark that has been around for a decade or more. So if you do get bullied by someone, first find out how strong the mark is.
Also, the first step would have been for him to file a WIPO case where he has to prove my domain was registered in bad faith, among other things. And he couldn't do that since I used it in a promotion years before he filed! Filing a WIPO case would cost $2500 I think, and he would have had to pay all costs.
It was a stressful and expensive procedure (a couple of grand on my end), but it got my Irish up to be bullied like that. It helped that he thought I had the $25K to try to overturn his weak trademark in Federal Court... ;)
Heard before that the United States is a nation that paid attention to copyright, really was fact to admire!
You can consider that the area that will have copyright controversy transfers abroad!
My having the area of copyright controversy in China is turned by me to the United States, the Chinese government finds no way out with me!
You can transfer the area to other nations and believe that the American government also has no way!
Thanks for all the informative replies WebmasterWorld! I wasn't expecting more than one or two to be honest..!
Turns out he wasn't as interested in acme.com as he originally thought, and haven't heard from him since. But I thank you all again for the plethora of insight!