Recently me and my friends decided to start on a project. We registered the domain last night, and find out today that someone has registered the .net of our domain, and is claiming rights to the name. Since we registered the .com first, do we get rights to the name?

Quote: Original post by GanonPhantom
Recently me and my friends decided to start on a project. We registered the domain last night, and find out today that someone has registered the .net of our domain, and is claiming rights to the name.

Since we registered the .com first, do we get rights to the name?

Domain names have nothing to do with rights to a name. You are each free to use your domain name (as long as neither infringes on any registered trademarks of the other), but whether each of you can use that same name as the name of your product is a matter of trademarks.

Say I register the domain name FooBar.com, and name my product FooBar, unless I have registered FooBar as a trademark, there is nothing to stop someone else registering FooBar as a trademark, and then taking me to court over trademark infringement.

If the other party already has a trademark on FooBar, then my registering the domain FooBar.com is most likely an infringement of their trademark.

*I am not a lawyer, and as such my opinion carries no weight in a court of law

Trademark is a very complicated area of law, much more so than swiftcoder presented.

It depends on the industry used, the uniqueness of the mark, how well known the mark is, and several other factors.

First, unique marks. Many companies have had problems using common generic words for their marks. For example, Microsoft has had to fight many legal battles to protect common words like "Windows" and "Word". "Visa" has spent millions of dollars in legal fees for it's choice of name.

Industry is very important: Apple computers is a different industry than Apple record labels... at least it was until Apple computer decided to get into music, and suddenly faced some major lawsuits for trademark infringement.

Confusion with existing marks is important. Will your character "UltraMan" be easily confused with the well known "Superman" or the video game character "MegaMan"?


How much risk are you willing to take? Do you feel that your mark is distinctive, in a completely different industry than the others, and not confusing? What is the cost of changing your mark if it is challenged?


Your lowest risk option is to pick a different name. Keeping the same name is an unnecessary risk, but based on the factors above it might be such a low risk that you just keep the name.

There is a fairly decent online resource that can probably help you determine some of the risks and issues that may arise:

ICANN

ICANN is responsible for the policies and dispute resolution methods companies and registrants use when conflicts arise when they don't want to spend the money on court costs. Yes, it has a lot to do with trademark, but there are other issues that arise as well-- ICANN acknowledges that registrants have rights as well, so typically they will only hand over or cancel domains if there's a showing of bad faith or cybersquatting. To assert a trademark right to the domain name, court action would almost certainly be required, and that can get costly.

BitLaw has an article that covers this as well.