Similiar Company Name Has Rights?

[Frontline]

Hey guys,

I recently got an email from a California company who operate under a company name "XXXXXX Networks" and owns the corresponding .com. I have another domain that has the same name except without the "s" at the end. I checked the free trademark searches engines and they dont appear to have a trademark on the company name or domain name. Their only claim is that it goes against their rights since they are registered under a similiar name in California. The name is simply parked at a landing page and their site isn't even developed.

My question is does simply registering a company name in a state give you any sort of leverage in a Wipo case if you have no other trademarks on the name? I would think that there are so many similiar company names registered in the different states that they could not have any sort of leverage on me.

 

[jberryhill]

I checked the free trademark searches engines and they dont appear to have a trademark on the company name or domain name.

Whether or not they have enforcible trademark rights in the name is an entirely independent question of whether or not they have registered any trademarks.

How long have they been doing business under that name? Do they use it as a mark in connection with their goods and services? Is there evidence of consumer recognition of a distinctive association between that mark and their goods and services? Is the name capable of acquiring distinctiveness, or is it inherently distinctive? How long have you had the domain name? What sort of results come up on the landing page?

The list of potentially relevant facts for a determination is much longer than "I have a domain without an 's' on the end."