I own the .COM of a registered business name

[rcristel]

Lets say I own the following domain names:
"StateName"Tackle.com (registered back on 8/2002)
*Where StateName could be any of the 50 states

I just received the following message from the owner

-------------------------------------------------------------------------------

"Dear sirs.
'stateName'tackle.com is my registered 'state name' State business name. Please check with your legal counsel reference any possible infringements prior to launching your web site.

Thank you,
Al XXXXXXX
'state name' Tackle .com"

--------------------------------------------------------------------------------

question 1:
How can I check if he really owns the 'state name'Tackle.com business name. I would think his business name is only 'state name' Tackle Inc./LLC. but I would like to find out for sure...

question 2:
Can he legally take the name from me?

Question 3:
What are my limitations when (and if) I build a web site for this domain?

I would probably consider selling it for a reasonable amount of money, but would rather partner with him to sell tackle...

Any opinions out there as to what my response should be to this guy?

Thanks...
-Ralph

 

[GiantDomains]

Beware of TM's, not entities.

Hopefully you can get legal advice on this.

Good Luck.

 

[edisaacson]

You can check to see if someone has a registered business name through the Secretary of State's office for a particular state. Most of them are available online now.

Even if they do not have a trademark application/registration, they may have common law rights to a particluar mark. The easiest way to avoid getting into an issue with them is to not offer the same goods/services on the website that they sell in their store (I assume it is a storefront).

 

[jberryhill]

So, you are saying that the domain name is like... MarylandTackle.com, or FloridaTackle.com, or something like that?

There are a couple of things that could be meant by a "business name" - do you mean a state TM registration? A corporate name? A fictitious name filing? etc.

State coporate codes often go out of their way to say that merely requiring distinct names for corporations is a filing convenience for the Secretary of State, and does not provide any sort of presumptive right.

As far as the UDRP is concerned, then I'd guess this question is a plant, since the facts don't come much closer than the following case. Note the Complainant's corporate name and the domain name.

http://www.arbforum.com/domains/decisions/98246.htm
PARTIES

The Complainant is Maine Bait Company,
[...]
The Respondent is Robin Brooks a/k/a Maine Bait
[...]
The domain name at issue is <mainebait.com>, registered with Network Solutions.
[...]
This is a case about the harvest and sale of bloodworms on the tidal flats of Maine. Complainant and Respondent are apparently competing in this industry.

While the Complaint, Response and Reply show some evidence of "bad faith" on the part of the Respondent, as that term is used in the ICANN Policies and Rules, the simple fact is that the Complainant has made no showing of a registered mark – and therefore probably does not hold a registered trade or service mark – and has made no showing that the name “Maine Bait” is a common law mark. Forgetting for a moment the elements necessary to show the existence of a common law mark, this panel cannot imagine that under any circumstances a mark would issue or could be created at common law in the term or phrase “Maine Bait.” If there ever was a generic term, “Maine Bait” qualifies. Like “southern charm” or “Washington gridlock,” it is a phrase that is as common as, well, as “dirt.”

 

[rcristel]

"Beware of TM's, not entities."
I checked, and no TM's exist...

"You can check to see if someone has a registered business name through the Secretary of State's office for a particular state. Most of them are available online now."
I found the online site but the business name was not found...


"So, you are saying that the domain name is like... MarylandTackle.com, or FloridaTackle.com, or something like that?"
Exactly... and the person contacting me claims to own the business name "Maryland Tackle"

He says that he owns "Maryland Tackle .Com" but I am assuming that he means "Maryland Tackle". I did a search for all variations and found no business name...

What if he registered the name after I purchased the URL?
If he registered the name last week, and I purchased the domain name last August???

 

[namedropper]

Tell him that the domain a generic descriptive name, but that he should send any documentation of his claimed legal rights to the name via mail to an address you provide for your legal representative to verify.

Most people who are just trying to scare you off give up when asked to try to prove their allegations. If he isn't scared off and sends what he thinks shows his rights to the name, then you can see exactly what his argument will be.