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I registered a .com domain in 2014, 2 months later someone else registered .org. Though my website was not up, I was curating content with name on a content curation platform. The .org owners later developed their website and have gone ahead to organise events in different countries. We are countries apart, last year I registered the name as a limited liability company. My site is up now. We all have women as our focus. Could there be legal issues? Thanks.

  • Why would there be? – closetnoc Sep 5 '16 at 16:33
  • Thanks @closetnoc they have contacted my web developers claiming they have copyright to the name. – Doviva Sep 8 '16 at 9:04
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What you are talking about is a trademark and not a copyright. I am assuming U.S. law since that is what I am familiar with. Please also know that I am not an attorney.

You are also talking about removal of a domain as a result of a trademark infringement. This is not an easy thing for anyone to do.

From: https://archive.icann.org/en/udrp/udrp-policy-24oct99.htm

a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The best way to prove that you are in violation of Paragraph 4(a)(iii) is for the complainant to make a legal claim. Trademark claims can be filed in state or federal courts, however, because this is a federal law, most state cases are kicked up to the federal level.

From: https://www.law.cornell.edu/uscode/text/15/1114

15 U.S. Code § 1114 Paragraph 2(D)(v)

(v) A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.

This makes any claim with a registrar or ICANN of a trademark infringement a double-edged sword. If such a claim is filed and your domain name is revoked or suspended, you have the legal right to sue. The reason why this is important to know is that anyone who knows what they are doing will not seek to have the domain name revoked without establishing a legal claim.

There are several things to consider.

One is their phone call. Making a phone call is NOT a legal claim or enforceable within a court of law. Nor is talking to a developer. This is simply someone spouting off. You want to force an enforceable legal claim. A put-up or shut-up scenario. This works to your advantage.

Next time they call, have them talk to a company principle. This would be the CEO, or other company officer or even the legal department if you have one. Second, require that they put their claim in writing. If they are serious, they will at least write you a letter. They have to. It is a minimum requirement. Otherwise, you have called them out and they may prove to be simply a punk with a loud mouth. Without an enforceable legal claim, and that begins with proper notice being a traceable instrument such as a letter and not a phone call, then their threats mean nothing.

You have to understand that people make these claims a lot. All day every day. They call you on the phone and threaten you. Anyone who is serious, will never do this. They would simply write a letter and send it delivery receipt required. That is your legal notice and the most effective and lowest hanging fruit for anyone who knows what they are doing.

From: https://www.law.cornell.edu/uscode/text/15/1125

15 U.S. Code § 1125 Paragraph (a)(d)(2)(A)(ii)(II)(aa)

(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and

You will notice that the postal address and e-mail address is required.

There are quite a few criteria that have to be met before they have a claim against your domain name.

See my answer here: Can company "Elephant" legally take the domain "elephant.chat" away from the company "ElephantChat"?

I will list some of them quickly:

  • The use of the trademark is not subject to age protection.
  • You must have knowingly registered the domain name in violation of a trademark.
  • The trademark use is not protected by free speech (fair use).
  • The trademark is not a common word, phrase, common name, or saying.
  • The trademark is local versus global.
  • The trademark creates confusion and losses (must be provable).

To sum it up.

A phone call is not a legal notice. If you want to stop this action, obtain the complainants name, company name, address and phone number when they call. Send a delivery receipt required letter requiring legal notice in writing of their trademark claim. That claim must include the specific infringement and the companies legal counsel.

Keep a log of your activities on this matter and file a copy of all correspondence on the matter.

If nothing happens, you are in the clear. If your domain name is revoked or suspended without a proper notice and opportunity to resolve the issue, the registrar and complainant is on the hook. You can file a suit.

Again, these claims happen a lot. It is a scare tactic often by those who are ignorant of the requirements of the law or a punk. They may have a legal claim, however, they must to inform you of the particulars of the claim before they can do anything else. Realistically, for this to happen the claimant will need an attorney. It is not required. However, without it, they open themselves up to huge liabilities very quickly. Most attorneys will prefer not to file a complaint without trying to resolve this matter first through an agreement.

  • Thank you so much @closetnoc for taking the time to explain this with such detailed information. I really appreciate this and I am so glad I found this forum. Thank you. – Doviva Sep 8 '16 at 23:10
  • @Doviva Anytime! We are here for you. Cheers!! – closetnoc Sep 9 '16 at 1:59

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