Very similar domain name.

[fischermx]

Hi,

I don't know if this question fits here, so, I'm sorry if it doesn't.
Many years ago, like 7, I registered a domain name for my local computer retail store. It happens to be "invented" by my wife, it is a spanish name composed of two words, put together it is for sure an invented word, I remember when I registered not even one result returned in Altavista and Yahoo (I think Google did not even existed by that time).
Lucky me (?), it happened that a year later an american company registered the same composed name. Since the root of both words are very similar, it resulted in a name which differs only by one letter from my version.
I didn't worried and forgot the issue, since I didn't know what size that company would be. Until a couple of years ago, I discovered the brand in big retail stores!
The question is :
Is the registration date of the domain name enough to protect me if the big company now try to get my name accusing me of cybersquatting?

[yosemite]

I am not an expert on this, but my understanding of cybersquatting indicates that it's not usually cybersquatting if:

The person who registered the name had a real use for the name (which apparently you did with your local computer store).

And, the date that you registered it is a big factor. You've had this domain name for years and years, used it for all this time, right?

It seems to me (in my non-expert opinion), that you're on solid ground here. #1: You had the domain way before them, and #2: are using it for your own business (once again, way before them). Just because they are bigger, doesn't mean that they have all the rights. You bought the name for yourself, in good faith. There was no attempt to "squat" on someone else's domain—you had your own use for it and the other company either didn't exist or was so small that you were unaware of its existence.

In my own case, I own a domain name that happens to also be the name of a thriving business. I use the domain name for a family site (the domain is of a family name). I know the guy that owns the business would love my .com version of the domain (he has the .net and .org versions), but he's not going to get it. I bought it first, I have a legitimate use for it (family name) and first come, first served. That's how it works.

Of course there are some examples of abuse (big guys forcing little guys to give up their domains), but there are also examples of the little guy keeping his site. For example, back in 2000 the guy who used to own "Sting.com" won a lawsuit [news.com.com] filed by the rock star Sting, because the courts decided that the first guy had a legitimate reason for owning the domain. I see now that the singer Sting owns the domain—I don't know how that all happened, but I presume he had to buy it. He didn't just get to take it because he's more famous. (Though of course I haven't heard any recent news so I don't know for sure.)

[peewhy]

The date of registration relating to your domain only records ...the date of registration. The other company may have a record showing date of conception relating to their trade name.

Have they made contact with you?

[fischermx]

Nope, they have not contacted me at all.
But recently someone registered myspanisheddomain+pc.com, omg! I received the mark alarm from #*$!
So, cybersquatting ...who? me? <lol>, may be was a cybersqua-misspell?

I reviewed the trademark office, it seems they registered the trademark the same year as their domain, i.e. a year later than me.

[peewhy]

Your caution is a good thing but your fears may be unfounded. Ensure your site has no similarities to the other company. Double check that not even a sentance is the same. Do not give them any grounds to accuse you of passing off.

Hopefully all will be well.

[yosemite]

Here's a very informative article [murdoch.edu.au] about cybersquatting. After reading this article, I feel more convinced than ever that you do not fit the definition. (Not that I thought you did before.)

An excerpt from the article: (bolding mine)

However, it is important to note that there is nothing wrong with the practice of reserving a domain name. Frequently, cybersquatters register words or phrases they hope will some day be sought after by new companies or new business divisions. A trademark is not infringed by a domain name unless the trademark existed at the time of domain name registration. This kind of cybersquatting is speculative and legitimate.

And you didn't even intend to get a domain name that was similar to this other company (they didn't exist at the time) so you weren't "speculating" that the name would be similar to anyone else's company down the road. You had no intent of doing anything other than getting a domain name for your own business. But even if you had registered the domain in the hopes that one day someone else would want to buy it from you (but no one had registered a trademark at the time you bought the domain), according to this article, you wouldn't be doing anything wrong. But you weren't even doing doing that. You are pretty far off from being a cybersquatter, IMO.

Also, the article goes on to say that qualities of cybersquatting involve the suspected cybersquatter attempting to sell the domain name to the trademark owner's company, which you have not done.

[ScadSense]

If the other side has a registered trademark, and you don't, then they may have some advantage. If you are operating a trade (i.e. a store) and you want to protect your trade name or symbol - your trade-mark - then do it. There are over 40 different international trademark classes, and you can obtain one, while the similarly-named siteowner can obtain in a different class code (say, metal bolts versus a computer retail store). If you want, go after a category that they cannot challenge you in first, then go after ones that they may claim rights to. Yes, it *can* matter who used it first, but see the last line of the next paragraph...

If you think you are only worried about cyber-squatting, you're not looking at the bigger picture. Try and register your trademark in your own country as soon as possible, in at least one trademark category. Then, wait and see if anyone protests (most go unprotested) before it is issued to you. If you don't protect your business name, then you run the risk that another business will get a trademark, and then get nasty in the legal system... which can favor the side with the most cash to spend. Spend under a thousand now, or spend tens of thousands later to defend.

You don't ever HAVE to file for a trademark to have the legal right to use a name or symbol, but registering it can give you added protection if it is contested in court. International use makes it even more complicated.

As for personal use, yes, cases can succeed, such as sting.com and nissan.com (think it's only a car company? Read up on Mr. Nissan's site - he's paid dearly to keep it).