Starting with the same name as established business

For what it's worth, does anybody have relevant expertise/experience to share?

Here're the facts:

1. I've owned "domain.com" for 10+ years. I used the domain on/off.
2. About 8 years ago, another business opened with the same name as "domain". They are a brick-n-mortar retail shop in the apparel industry.
3. The "domain" trademark is currently not registered by anyone.
4. I want to use the "domain.com" for an e-commerce site to sell a wide range of products, including (possibly) apparel.
5. We're in two different countries/jurisdictions.

Question:

(Leaving aside any branding concerns), am I facing any legal liabilities now or in the future? If so, how to prevent them or deal with them?

This is gonna depend on local legislation. If you own the domain before the trademark was established, then only a lawyer can tell you how this will go down.

Might use it to your advantage, since the domain predates the store brand, you can sell it for $$$$.

Thanks, @bartosimpsonio!

I know that I need to ask a lawyer, but there must be legal precedences and/or people who dealt with similar situations...

The other business is in FL, US. I'm in Europe.

Nobody registered any trademark (them nor me).

Yes, the domain predates the store brand. They approached me some time ago with the intention to buy, but didn't follow up on my asking price.

Not a lawyer but have experience in filing trademarks both in the US and internationally. This could go down a lot of different ways. If the company in FL were to take you to court, would you have the time and money to fight it? Bigger companies can often strong-arm there way through these situations because they have more money for lawyers than you do. Would you be prepared for a long fight in the courts that could take a year or longer? This can be very stressful and costly for an individual.

Since your domain predates the store, you probably have full rights to own the domain itself. But using the domain for a similar product/service as the company FL might be a no-go. Trademark applications can be blocked for 'potential for causing brand confusion' if you operate in or near the same industry as said company in FL. So if you haven't filed yet, and they have, you might screwed already. If this happens, you'd be cybersquatting on a domain with only one potential buyer and you probably couldn't use it for it's intended use.

Also, you say they haven't filed any kind of trademark. How do you know this? Did you search WIPO (Madrid) and USPTO (TESS)? The application process can take 10-15 months in the US and it might be in the system already. If they are a big company, I would bet the house they've already filed and it might be 'in the system' as they say. Only way to find out is to hire a trademark attorney to do the research for you. TM attorneys in the US usually use one of three services for doing 'deep and comprehensive' searches on trademarks worldwide: Thomson Compumark, Corsearch, and TrademarkNow.

Good luck.

Also, you stated the domain trademark has not been filed. This is unlikely to happen unless you file it. A company that files for a trademark has to show use within a certain period of receiving the domain. This keeps companies from squatting on TMs they 'might' use down the road. So I'm pretty sure nobody is going to be able to file for the domain tm because it would be impossible for them to prove usage. Still though, they could file for the name itself as used in a business sense, which again would probably make your domain useless to everyone but them. Again though, tough to say with the limited info we have.

If it's a small retail shop in FL and they haven't filed for a TM yet, you could probably file and beat them to punch and then force them to change their name. This happens a lot in the business world.

Thanks for your reply @waterworks!

It's not a big company, just a small retail shop. When they approached me about buying the domain from me, I asked for a reasonable sum (several thousands of dollars), but they didn't follow up... not even attempted to negotiate. So, I am guessing, they don't have much money.

I searched one of the freely available TM databases online (don't remember which one).

My best guess is they will send a cease and desist letter, threatening a law suit, but won't follow through...

... unless (which is why I'm trying to collect some opinions), they do have a case and I stand to lose.

Probably, this would be of help


but I do agree.. it's different everywhere nd you should contact a lawyer for this

waterworks said:

you could probably file and beat them to punch and then force them to change their name. This happens a lot in the business world.

Click to expand...

That's exactly what I am considering to do. What are the risks of them filing, first?

Thanks, @Gogol good link.

(I know I need a lawyer for this and I don't expect legal advice, obviously. But, I also know that there are people who are/were in a similar situation and are willing to share their experience.)

sub001 said:

Thanks, @Gogol good link.

(I know I need a lawyer for this and I don't expect legal advice, obviously. But, I also know that there are people who are/were in a similar situation and are willing to share their experience.)

Click to expand...

I went through the post and it seems unlikely that they can do something to you because of that "reverse domain name hijacking" thingy.

If they are a small retail shop, and they haven't filed yet, I would say you are golden. They can't send a cease-and-desist if they don't own any trademarks for the name. Just file the TM if you plan to use it and be done with it already.

Cool, thanks all!

Best to consult a lawyer. Depending on if or where their trademark is filed you may have an issue.