question Can a domain name be considered as a trademark ?

[dotNames]

I would like your inputs about an article I have readen that a domain name can qualify as a trademark when it is used in connection with a website that offer services to the public.

I am actually in conflict with a really big company owning a big portfolio of sub companies in the same business area as mine.
Let say, I own the domain name superservice.com and use it for years for my small business.
This big competitor owns Super.com and Service.com. As a payment descriptor they use "Super*Service.com".
For months now, I am receiving complaints from their customers believing I am the one charging their credit cards. Some of them, really stubborn, also threated me with legal actions.
I decided to contact this company and kindly ask them to change their payment descriptor. They simply answered it was impossible.
I then proposed them to acquire my domain name, as long as it could also complete theirs, and they came back with a very indecent offer. Like a peanut.
I tried again to make them understand it was still impacting negatively my small business but the only answer I received was, as long as I don't have any registered Trademark, I can either accept their offer or go f##k myself.

What are specialists here think about this?

 

[dotNames]

Everything's a matter of opportunity. PRAY.

Why pray? Don't understand your answer.
Actually, I am the one hurt by their practices....

 

[DediRock]

Without a registered trademark, it's tough to defend your domain, especially against a larger company. A trademark lawyer could help you understand your legal options.

 

[Helmuts]

Hi, the trademark exists only if it is registered.

Yes, there are many trademarks for domain names. See yourself https://tmsearch.uspto.gov/search/search-information (US patent and trademark office).. Note: all the countries have their own patent and trademark departments.



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Now, if people believe you are charging the card > take this seriously.

My 1st bet would be > someone have set up Stripe or other payment gateway and have setup your domain in the "Descriptor shown on customer statements"

A screenshot from my Stripe account for my hosting company (company "No Stress Ltd", registered trademark in the UK "HostMaria", domain: hostmaria.com):


I think, stripe's support email was [email protected] > start with them. Ask them if anyone has put in your domain name in their business details section, in particular in "Descriptor shown on customer statements".

And if this is a case of another company using your domain name and it shows in statements > it is you who can consider starting taking legal action.

.. I would also ask the help of the upset user > he/she will provide more details on the payment > this will allow you to chase down the payment gateway, and with this = that company.

Does this help?

 

[topcatchy]

Hi, the trademark exists only if it is registered.

Yes, there are many trademarks for domain names. See yourself https://tmsearch.uspto.gov/search/search-information (US patent and trademark office).. Note: all the countries have their own patent and trademark

Nice Mr. Helmuts, I use trademarks411. It's a good website. Highly recommend ; )

 

[Helmuts]

Nice Mr. Helmuts, I use trademarks411. It's a good website. Highly recommend ; )

Seems to be a decent service. I always register our trademarks myself - put in your time, get consultations if needed (had to do this when registering a TM for Domain Summit), fill in all the forms, pay a small fee and it is done..

 

[steveatvillas]

I would like your inputs about an article I have readen that a domain name can qualify as a trademark when it is used in connection with a website that offer services to the public.

I am actually in conflict with a really big company owning a big portfolio of sub companies in the same business area as mine.
Let say, I own the domain name superservice.com and use it for years for my small business.
This big competitor owns Super.com and Service.com. As a payment descriptor they use "Super*Service.com".
For months now, I am receiving complaints from their customers believing I am the one charging their credit cards. Some of them, really stubborn, also threated me with legal actions.
I decided to contact this company and kindly ask them to change their payment descriptor. They simply answered it was impossible.
I then proposed them to acquire my domain name, as long as it could also complete theirs, and they came back with a very indecent offer. Like a peanut.
I tried again to make them understand it was still impacting negatively my small business but the only answer I received was, as long as I don't have any registered Trademark, I can either accept their offer or go f##k myself.

What are specialists here think about this?

Helmuts is completely correct.

If you do NOT register a trademark ®, in this case a "word" mark, you do not have a leg to stand on and you will be defeated either in a UDRP dispute (if you are lucky), or in a legal court case (yikes! expensive), if you are infringing on a prior, established Trademark (TM) or a Registered Trademark ®, or another name that a "reasonable person" will likely confuse with "a prior claim" or long-standing brand name. You might have a chance if you add the Trademark symbol ™ to the name, AND publish it in the public domain predating the REGISTERED trademark ®...but not likely.

But the "fun" does not stop there. Not only does the REGISTERED trademark ® take prior precedence over all other future claims, but the legitimate ® owner is compelled to DEFEND the legal right of prior ownership over any potential infringers. The Intellectual Property (IP) laws, both nationally and internationally, are quite clear on this, so Caveat Emptor....and be well educated, legally advised, and careful....and you may need deep pockets if the claimant has a cadre of lawyers.

Hope this helps....

All the best, Steve

PS: I've reg'd a few ®'s in my time, it is a laborious (calculate at least a year) and potentially expensive process. That said, if one is successful, it adds great value to a domain name.

PPS: Way back in the mists of time, when Adam Dicker created DNF, the legal Big Kahuna for this sort of thing was John Berryhill. If I am not mistaken, he is still a member of DNF today.

PPPS: CAVEAT: I am NOT an IP lawyer, I am a self-practitioner albeit successful, albeit I also know when I am NOT gonna win. My comments are my own. Contact jberryhill on DNF if you want to know more.

 

[Helmuts]

But the "fun" does not stop there. Not only does the REGISTERED trademark ® take prior precedence over all other future claims, but the legitimate ® owner is compelled to DEFEND the legal right of prior ownership over any potential infringers. The Intellectual Property (IP) laws, both nationally and internationally, are quite clear on this, so Caveat Emptor....and be well educated, legally advised, and careful....and you may need deep pockets if the claimant has a cadre of lawyers.

hummm.. really interesting and valuable.. have to admit that I have never thought about this..

.. great reminder that this is the time to reevaluate the defense walls ... professional insurance, memberships that include some protection from legal fees ao.

@steveatvillas - Steve, how would you protect your company (if you had a rather small though operational company) from potential legal fees? tx

 

[steveatvillas]

hummm.. really interesting and valuable.. have to admit that I have never thought about this..

.. great reminder that this is the time to reevaluate the defense walls ... professional insurance, memberships that include some protection from legal fees ao.

@steveatvillas - Steve, how would you protect your company (if you had a rather small though operational company) from potential legal fees? tx

Hi Helmuts, et al,

First off, let's make the distinction between a common law "Trademark" (™) and a "Registered Trademark" (®).

Just because you have reg'd a domain does not give you any trademark protection, at all unless your domain name has been in the public and is clearly recognized as yours "by any reasonable person." Hard to prove. Dig? That is, quite simply, a fool's errand and ignorance of Intellectual Property (IP) legal conventions adopted worldwide is no excuse.

Anyone can declare the common law variety simply by including the "TM" on logos, company names, strap lines, etc. Effectively one is declaring to the world that she/he is trading under this business name with artwork and strap lines (like "Maidstone's or Latvia's Best Hosting Service") if one has them. It is essential that the "TM" be included on every public instance: Every page of a website, business letterhead, invoices, etc. It is also incumbent upon you to make a time-stamped screenshot of the website pages. Take care that you are NOT trying to go in the back door by TMing an existing brand name (or anything even close that a reasonable person might confuse for the original) or reverse hijacking someone else's domain. Don't be dumb (stoopit) enough to reg a hyphenated domain of a well known brand, and, for goodness' sake, do a WHOIS search . Bad juju, devious, and it's gonna get really expensive, really quickly.

@dotNames take note: If someone is causing consumer confusion with your legitimate domain name, you have a case, if you have precedence...save all correspondence and prepare for a UDRP or another fight...just make sure you are correct. Date of publication/public presence is also very important...first in takes precedent.

The Registered Trademark (®), on the other hand, is government review and approval for one's name alone (called a word mark) is valid in the jurisdiction in which it is filed. With the ®, one can select up to three "classes" or descriptors. The appropriate Trademark Office (called Intellectual Property "IP" in the legal world) will do a lengthy search of all marks to make sure that there is no "Prior Art" registered. (Trick) Logos should be registered in black and white, otherwise the specific colors are going to be part of the logo. (Trick) Stay away from word marks with specific fonts, because the font will also be part of the mark, so keep the font generic and state as much in your application, nothing fancy or artsy-custom designed. KISS! This takes quite a while, and lots of hoops to jump through.

Also, if you don't defend your TM or ® then, after a time, you have, by law, given tacit approval of the infringement...you will lose your protection.

I always start with the European ®, because it covers an entity in every country in the European Union. Not so sure about the UK, post Brexit.

Helmuts, I'll answer your question in a following post.

Best, Steve

CAVEAT: I am NOT an IP lawyer, I am a self-practitioner albeit successful. My comments are my own. Contact jberryhill on DNF if you want to know more.

 

[steveatvillas]

hummm.. really interesting and valuable.. have to admit that I have never thought about this..

.. great reminder that this is the time to reevaluate the defense walls ... professional insurance, memberships that include some protection from legal fees ao.

@steveatvillas - Steve, how would you protect your company (if you had a rather small though operational company) from potential legal fees? tx

Helmuts:

Interesting question. Quick answer: The best defense is a good offense.

Longer answer...I have been in your shoes before, I had a paper and ink real estate magazine publishing business before the bloody Internet wiped me out in 2004. Damned Internet!!!

Nevertheless...

Because I was well-versed in IP protection, I first used the "TM" symbol on everything public, and then bootstrapped that into a European ®, and thence into the US. I literally "papered the walls" in everything I did with the TM, the copyright © (to protect everything I had published in the public domain) and the ®. I also had to defend my mark against a local real estate developer who who copied my logo exactly in naming an apartment complex. My advertising clients called me asking me if the complex was mine (reasonable person confusion.) I shut those deadbeat morons down in a heartbeat. They had to change the name, throw away tons of promo materials, etc. because I did my due diligence at the beginning by protecting my good name and goodwill, not when it was too late.

If you want a solid defense, start with the EU ®, and build from there. As in my previous post, dunno if the UK is still under EU IP protection. Damned BREXIT!!!

En fin, if someone wants to trade attempting to use your well-fought-for goodwill, name, logo, etc., You're gonna have to fight back. Expend the energy now...CYA (Cover Your Ass)

Hope this helps...

Steve

PS: I don't know if this completely answers your question (vis my opening statement). Better to spend a little dosh to protect yourself now, than spend much more to have to do it later.

CAVEAT: I am NOT an IP lawyer, I am a self-practitioner albeit successful. My comments are my own. Contact jberryhill on DNF if you want to know more.