QUESTION
Can a company sue me for a domain name and win if it has their trademarked word in it?
Asked on Mar 19th, 2015 on Intellectual Property - Maryland
More details to this question:
The company that's suing me is trademarked as Company. They provide advice on financial, health, economics, politics, etc topics via e-newsletters. Their website is companysomething.com. My company is trademarked as Company XYZ and it's an online store selling investment-grade products at companyxyz.com. They are suing me because they claim that what my online store is too close to what they do, and that there is confusion. They want me to cancel the trademark, and transfer the ownership of companyxyz.com domain name to them. I have recently changed the name of the business and got a new domain name which my old website companyxyz.com currently redirects to. Can they have the companyxyz.com domain name transferred to them via a court ruling? They are in MD, I am in WY.
1 ANSWER
If they can show that the two names are confusingly similar, and they can show that you have no legitimate interest in the domain and have adopted and are using the domain in bad faith, they can have the domain transferred to them. That is a separate issue from whether or not trademark infringement exists. You have not provided enough information about your business and theirs and what the two names are, so that no specific evaluation can be made; however, what you are asking goes beyond what can be handled via this site so I suggest that you contact a trademark attorney who also handles domain name disputes.
Answered on Mar 20th, 2015 at 12:10 PM