Similar domain names

Our man in Havana

Hypothetical question folks:

If some one was to set up a website called say xyz.net and there is already a site called xyz.com would they be liable to action from the first site?

Say if xyz.com has a discussion board on a topic but is a very basic setup (ad ridden etc) and xyz.net comes along with another better board based around the same topic, would xyz.com have grounds to close down xyz.net?

Neither site is a business or in the business of revenue generation.

I am not looking for legal advice nor shall i rely on any responses received as legal advice.

haz

This is a multijurisdictional, multistandard mess. If you tried to register something like www.microsoft.ie (already taken) then the IE Domain Registry would seriously consider your entitlement to the name. See http://www.domainregistry.ie/QuickGuideToRegistrations.php. Other registries have typically less stringent or negligible checks on entitlement, but most have a system of arbitration for disputes. You could buy a .com or .net domain if it wasn't already taken. I saw http://www.barclays.co.uk.brccontrol.taskstart.clenuti.com/detailsconfirm/, a .com domain pretending to be Barclays Bank in the UK on a phishing email today - it looks like http://www.barclays.co.uk/brccontrol.taskstart.custbase/detailsconfirm/ on screen. I guess the "clenuti" bit gets changed around for each phishing trip, but there is no mechanism to prevent registration of "barclays" or even "barclays.co.uk" within the domain name and arbitration takes long enough that the crooks make money. The .ru and .tv domains seem popular for facsimile sites too.

I guess that there are completely separate legal issues over copyright and trademark that a rich company might pursue.

padser

To enable a better answer you need to include which domain the offending site is based in.

I have previously lodged a complaint with the IE domain registry (about an www.xxx.ie site) who passed the complaint on to the World Intelectual Property Organisation (WIPO) who appointed a panel and decided on the merits of the case. However WIPO decide the case on the basis of the rules in the jurisdiction therefore you need to let us konw which domain your talking about (the offending site, not the original one). If it is .ie I can give you pretty detailed info on the rules and requirements as I put a lot of work into the case over the summer.

Our man in Havana

The proposed (offending) site will be xyz.org hosted and registered in the USA if that is anyuse.
The original xyz.com is located in Canada but is registered to an Irish based person. At present all xyz.com does is redirects to a msn group.

haz

The technicalities are that an application for a .com or .org domain name (for instance login.xyz.com looks like it is part of the entity associated with www.xyz.com) will be handled by an automated transaction server - the domain is not registered, the payment is debited and that's it. A .ie would check (as above) for evidence of entitlement.

Once it's registered, then dispute resolution might come into play. If nobody is making money off it, if there is no associated trademark, copyright or associated financial business then that could take years.

Obviously anyone taking this amount of trouble would have great ideas of their own....

padser

http://www.icann.org/udrp/udrp.htm

http://www.icann.org/udrp/udrp-policy-24oct99.htm

I havnt had time to read it fully and have only scanned it, but it looks almost identical to the irish one. The wording is almost the same so i reckon one is copied from the other (obviously the irish one from the international one)

you need to show 3 things,

1) the new site has name identical or misleadingly similar to a name in which you have rights

2) the offender has no rights in the domain name

3) they registered it, or are using it, in bad faith.

For you to have rights in it doesnt mean you need to have registered a trademark or anything, common law rights, such as would be sufficent for passing off will suffice.

Would they have known about the original site?

Are they attempting to trade off its name?

Did they have any legitimate reason to pick xyz as their domain name/?

It is not cheap or free process to go through a disputes resolution. The irish one costs €1500 and im sure the .org one will be similar

Our man in Havana

I would assume the complainant would have to foot the bill.

padser

Under Irish rules yes, although if the respondant wants he can request a 3 person panel to decide the case in which case the total cost is €4000 which is split evenly between the complainant and respondant.

Also there is nothing to prevent you filing a case for costs in the event that you win, however this would be through the regular court system of the country in qeustion

amir

padser wrote:

http://www.icann.org/udrp/udrp.htm

http://www.icann.org/udrp/udrp-policy-24oct99.htm

I havnt had time to read it fully and have only scanned it, but it looks almost identical to the irish one. The wording is almost the same so i reckon one is copied from the other (obviously the irish one from the international one)

you need to show 3 things,

1) the new site has name identical or misleadingly similar to a name in which you have rights

2) the offender has no rights in the domain name

3) they registered it, or are using it, in bad faith.

For you to have rights in it doesnt mean you need to have registered a trademark or anything, common law rights, such as would be sufficent for passing off will suffice.

Would they have known about the original site?

Are they attempting to trade off its name?

Did they have any legitimate reason to pick xyz as their domain name/?

It is not cheap or free process to go through a disputes resolution. The irish one costs €1500 and im sure the .org one will be similar

I have a problem...
I registered domain name .co.uk and the same domain name already exists but .com.
They are in the same business and I want to operate in the UK market. They are also from UK.
Would I be in trouble? It is strange that they didnot register .co.uk before?!
Their .com is not registered under trademark and business name is completely different that domain name.
Please help as I have to decide what to do.

haz

amir wrote:

I registered domain name .co.uk and the same domain name already exists but .com
Would I be in trouble?

It isn't a case of being in trouble - you and they have a legitimate right to purchase a domain name reflecting your business activity. If the domain name incorporates a registered trademark (company name, product name, etc) then you could get into serious dispute territory. If you register your chosen name and trade from it, are they likely to feel aggrieved? If so, are they likely to have grounds for an earlier or stronger claim than yours to the same name? Is either party using the name in business? Is the name worth any aggravation you expect in defending it?

Imagine someone starts a new band in the same territory, in the same genre and style of music as an existing band of the same name - would it matter that they had not already registered their name in a particular format? On the other hand, bands can grow in popularity until their names clash and end up in court with almost equal claims to precedence.

On a completely non-legal front, is there any publicity in it? Harrod's post office and general store in New Zealand did fantastically from being sued by Harrods stores of London. They could have been bankrupted though.