Legal Question in Technology Law in Massachusetts
Domain vs. 'Real' business name
I own a small business (magazine). We registered our exact name as a dot net but the dot com was taken by another company. We are non-competing businesses. I noticed recently (after two years) his website has a banner with my business name as its identifier, thereby creating even more confusion. Question #1- I want the dot com domain, I cannot make a huge payment for the name so should I simply ask for it? Am I entitled to it? He had the domain first, I incorporated the business name. Question #2) How can I get him to take my business name off his website? We are both incorporated in the Comm. of Massachusetts. Thanks!
1 Answer from Attorneys
Re: Domain vs. 'Real' business name
Your question is essentially grounded in trademark law. The short answer in trademark law is "first in use, first in right." That is, if you were the first to use the trademark (that is, the name) in commerce, then you obtained the trademark rights to it. This is the short answer and may other factors may be involved, such as Federal Registration of the mark. While incorporation may provide evidence of use, it does not, in itself provide rights to a trademark.
With regard to the domain name, you would need to file a UDRP claim (arbitration) with one of the approved claim agencies.
The UDRP decision would be decided under Paragraph 4 (a) of the ICANN Uniform Domain Name Dispute Resolution Policy. In order to succeed you must provide sufficient evidence of the following elements:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which you have rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent's domain name has been registered and is being used in bad faith.
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