Cybersquatting or Opportunity

just ran across something strange today

[old_expat]

A semi-competitor in my niche (both are content sites) operates a popular site my-site.com which was registered 7 years ago.

The site is a companion to a free published magazine "All About Mysite". The website shows no TM claim.

What is odd, is they have not registered the mysite.com [non hyphenated] version.

Would they have a case claiming cybersquatting if someone else registered mysite.com?

[davezan]

If you think about it, the real question is are you willing to risk it? :P

If they've especially maintained that site for the past couple of years, there's a big chance they can demonstrate trademark rights based on what the law allows.

[Niobe]

Hi. I am new and green. Please tell me which takes precedence under the law: a registered domain name or a registered trademark for the name. Or is it a matter of which came first? Or does it depend on what a person does with them or what. Thank you!

kimmie

[old_expat]

"If they've especially maintained that site for the past couple of years, there's a big chance they can demonstrate trademark rights based on what the law allows."

How can they demonstrate a TM when they don't claim one?

[old_expat]

"If you think about it, the real question is are you willing to risk it? :P"

What's the risk, $8, parking it as a redirect for type ins?

[cshel]

Should they decide to register a trademark, they can backdate the application to date of first use in business.

So, if they've been actively using the domain my-site.com in commerce for at least 2 years, and you register the non-hyphen version after their date of first use, and you're using it to compete with them or just to dilute their brand, they can (a) come after you for the domain and maybe (b) sue you for trademark infringement or unfair business practices or just for attorneys fees incurred in securing the injuction or other judgement against you.

Long story short... if they have the desire and the money to be recreationally litigious, you're giving them solid ground to stand upon.

You're probably okay if they do not have deep enough pockets to waste money on legal action, or you don't have deep enough pockets to bother with. However, if there is some serious personal animosity between you and the other guys, they might go into hock for the pleasure and satisfaction of giving you a hard time.

You'll have to evaluate your options based on the specifics of your situation. :)

[old_expat]

"Should they decide to register a trademark"

First, I *think* it will be pretty hard as the domain is 2 "sistercities" names [hyphenated].

The one I registered is 2 "sistercities" names [non-hyphenated].

The magazine is "Welcome to City1 & City2" and the *name* of the website is the same.

Another question, what if I were to [try to] register the city1city2.com as my TM?

"Long story short... if they have the desire and the money to be recreationally litigious, you're giving them solid ground to stand upon."

I seriously doubt if they have the desire .. and would suggest their ground is less than "solid".

"You're probably okay if they do not have deep enough pockets to waste money on legal action"

I don't think they do.

" or you don't have deep enough pockets to bother with."

Small change.

"However, if there is some serious personal animosity between you and the other guys"

Not *serious*, just a bit between me and their webmaster [who cheated me of several hundred $] .. not the owner of the domain or the website.

Also, I'm not in the US.

[cshel]

> "Should they decide to register a trademark"
>
>First, I *think* it will be pretty hard as the domain is 2 "sistercities" names [hyphenated].
>
>The one I registered is 2 "sistercities" names >[non-hyphenated].

If it's a location name, you're probably golden and there's nothing to worry about.

>Another question, what if I were to [try to] register >the city1city2.com as my TM?

You can try, but the best you're going to get is a supplemental register trademark... not a REALreal trademark. I mean, it's still something to wave around, but it just doesn't carry the same weight.

>"Long story short... if they have the desire and the >money to be recreationally litigious, you're giving >them solid ground to stand upon."
>
>I seriously doubt if they have the desire .. and would >suggest their ground is less than "solid".

The ground is as solid as their attorney is good :)
That being said, I didn't know originally that it was a location name situation... they probably can't make a case.

> "However, if there is some serious personal animosity > between you and the other guys"
>
>Not *serious*, just a bit between me and their >webmaster [who cheated me of several hundred $] .. not >the owner of the domain or the website.
>
>Also, I'm not in the US.

Eh, you're probably safe then. If I were in your shoes and had the burning desire to reg it and use it, I'd go ahead with the plan.

[luckychucky]

If it's truly descriptive and generic, there's not much ground to claim infringement. It's the difference between "Jiffy" brand peanut butter (very strong) and "Peanut_Butter_Is_Tasty" (very weak).

[old_expat]

"The ground is as solid as their attorney is good :)"

I'm not sure if attorneys get that good.:)

"That being said, I didn't know originally that it was a location name situation... they probably can't make a case."

Yes, I should have been more specific and my apologies for not having done so. I'm always worried about WW TOS .. plus I'm pretty lazy.

One good analogy might be if someone started a "Welcome to New York & Boston" magazine (which they probably couldn't TM), then archived their articles in a website titled "Welcome to New York & Boston" with newyork-boston (dot) com as the URL.

Then I came along and, being the slimy ^&%$#@* that I am, registered newyorkboston (dot) com