developing a .COM of somebody elses .ORG?

[pyroism]

If someone has a big website developed on a .org, and their name is NOT trademarked (searched uspto.gov) and I have the .com version, would it be okay to build a competitive site on it? I heard that if you're simply using a name for your business, then it's a "common law" trademark... how does that come into play?

Thanks!

 

[nWo]

I don't see why not, you will pick up all the hit's from there site.

 

[DNQuest.com]

Do they have a claim for a common law TM? The easy way to find out is to google them and look at the results.

 

[pyroism]

I'm not sure, what should i look for in the google results? They don't have "TM" next to their logo, or anywhere on their page.

According to the USPTO, here:
http://www.uspto.gov/web/offices/tac/tmfaq.htm#Search005

"Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration."

So maybe my question should also ask, if it's not okay to use the .com of a popular .org, because of TM infringement, would it be any better to redirect the traffic to a competing site on a different domain??

 

[DNQuest.com]

why should you look? because you asked a question and I'm trying to help. Searching on Google will help you in determining if there is or could be a common law TM. Just because there is no "TM" next to the name does not mean they can't be protected.

 

[jhansen]

why should you look? because you asked a question and I'm trying to help. Searching on Google will help you in determining if there is or could be a common law TM. Just because there is no "TM" next to the name does not mean they can't be protected.

He said

I'm not sure, what should i look for in the google results?

Not "I'm not sure, why should I look in google results?"

 

[pyroism]

thanks jhansen, i meant to ask what i should be looking for.

 

[DNQuest.com]

I apologize, my bad I misread that sentence.

Google the name and see the results, research the company. See if they have a history, see how long they have been in business. Try to see how popular they are in the results and if they are well known. Maybe you will get hits from foums or online articles.

Even though we may not know a company or a product, they could be well known within certain circles. With domains, there is a determination of rights or greater rights to a domain.

If there are hundreds of hits by different sources on the net as opposed to 2 or 3, by searching on Google, that can gauge if they could argue for TM protection.

 

[pyroism]

Thanks for the good info DNQuest! Their .org site has a few hundred links in google and seems to get a fair amount of traffic (alexa in 4000 range). Theirs was registered in '05, but the .com reg'd in '01.

So it seems like they could possibly build a common law TM case if they wanted to take the .com, based on the fact they've been using the name for about two years and built up a popular site.

But this seems unfair in a sense that if i wanted to use a .com that's registered, i could go build up a site on a different TLD, and even trademark it, and then I could either 1) prevent the .com guy from ever using his domain in my industry and 2) possibly build a TM case against him to take the name. Is this true? It all comes down to a WIPO decision, so I'll dig around to see if there's any presidents for something like this.

 

[Brett Lewis]

I don't see why not, you will pick up all the hit's from there site.

Common law trademark rights are trademark rights accrued through using a term or phrase in commerce as a brand or identifier of source in connection with the offering of goods or services. They are protectable under the federal Lanham Act and ACPA. The reason why not to create a competing Web site on the .com version of an established .org domain is that the TLDs have no trademark significance, whatsoever. Targeting an existing trademarked -- whether registered or common law -- Web site with the intent to confuse or divert users from the trademarked site can constitue cybersquatting, which is punnishable under the law by fines of up to $100,000.

Of course, every situation is distinct and turns on its own set of facts, but knowingly registering a domain name to attract Web traffic from a trademarked site could land you in trouble.

 

[ChrissyBoi]

Or you could always pull the classic trademark defence and make the .com a 'parody' site - poke fun at the original, or poke fun at whatever the name is relevant to.

there are two common defenses to Trademark infringement which are viable, 'parody' or 'fair use'.

You can research both terms as a form of defense to find existing case law and precedents and study the language of both - This will give you a good idea of what the courts consider to be cases of acceptable 'fair use' and 'parody', and conversely what they consider to be unacceptable.

Then you position your sights accordingly.

Here's a starting point
http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm

but there are many many more. Find some good court decisions, there's tons of them around nowadays.

Good luck.

 

[pyroism]

excellent info guys, thanks!