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  • #977762
    Apples1
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    Hey Guys

    Just seeking your opinions on a possible problem that may come up for me in the near future.

    I purchased a Domain Name Late last year which is just a .com. Lets says its xyz-zz.com. Now i haven’t launched my site on it yet as its taking me awhile to put all the content together and organise it, however i expect to have it finished in the next few weeks. The website is being created to house research and information on a specific topic and is not to be used for a business or to make any money.

    Now XYZ is an abbreviation for a large Financial Institution who have trademarked XYZ in every way possible. The Financial Institution XYZ recently purchased a Financial Corporation and i believe the abbreviatted name they will use for it after they rename it will be xyzzz.com. I know this as i noticed they registered that domain name a few weeks ago as well as the .org and .net for xyz-zz.

    What i want to know is if they come after xyz-zz.com are they likely to be able to take it from me? I’ve researched there previous Grabs at Domain Names and they have always been able to get them. Should i just expect it to be taken off me and give up on developing the site now rather then waste any time?

    Currently i have an under construction page on the site with a countdown timer to launch as well as the option for people to submit there email address for an update on launch. One of the director’s has already submitted his email address for updates :(

    EDIT: I’m also not using the domain for anything even closely related to what XYZ do

    #1101122
    Burgo
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    Why not register another domain name and keep the original, you could even offer it for sale say through a domain name broker.
    So instead of get involved in some hyperthetical legal battle, think outside the square and see if you can make enough to have your website paid for.
    Just a thought.

    #1101207
    Burgo
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    Why not register another domain name and keep the original, you could even offer it for sale say through a domain name broker.
    So instead of get involved in some hyperthetical legal battle, think outside the square and see if you can make enough to have your website paid for.
    Just a thought.

    #1101124
    JacquiPryor
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    If the financial organisation is particularly well-known, has built such a reputation that consumers will likely assume that your domain name/website (by name only) is somehow affiliated with the financial organisation – then, they may have room to argue that you are attempting to ‘pass off’ your goods/services as associated with them and cash in on their goodwill and reputation. Passing Off is a common law action, separate to the trademark matter.

    From the trademark perspective – you mention your domain won’t be used for anything remotely like what they do… Their trademark/s may be registered for a broader scope of goods/services than those ‘we’ as the public are familiar with – so, to determine a trademark infringement issue you would need to consider what their registrations cover, rather than simply what you know them to do.

    Domains and trademarks have some grey area around them – the trademark laws operating in Australia clearly say that to infringe a trademark you must be using a sign (i.e. a name or logo etc) as a trademark – ie you need to be using the name or domain as a brand, as a ‘sign’ that distinguishes your products/services from others. Use merely as a domain will not always constitute ‘use as a trademark’ for trademark infringement to be relevant.

    I would be more concerned about their belief that you are passing off your site to be affiliated with their business, or in some manner misleading the public into thinking you are somehow related etc. Each matter like this is case-by-case so without knowing more information it’s impossible to advise whether you are in any breach of their rights or whether they would likely succeed in obtaining the domain from you. Think about whether it’s worth the time/cost to find out… as you have not launched yet, it may be best to upload your site to a new domain. (You may still be able to email people with updates about your launch using the details already submitted?)

    The cost to the financial group to formally pursue either the domain name itself (through a particular policy set up to settle disputes about domains) or via other action could be costly – so, if the only thing you have to do with the name is the domain name, they might offer to buy it because that would be cheaper for them than pursuing other options.

    #1101208
    JacquiPryor
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    • Total posts: 2,344
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    If the financial organisation is particularly well-known, has built such a reputation that consumers will likely assume that your domain name/website (by name only) is somehow affiliated with the financial organisation – then, they may have room to argue that you are attempting to ‘pass off’ your goods/services as associated with them and cash in on their goodwill and reputation. Passing Off is a common law action, separate to the trademark matter.

    From the trademark perspective – you mention your domain won’t be used for anything remotely like what they do… Their trademark/s may be registered for a broader scope of goods/services than those ‘we’ as the public are familiar with – so, to determine a trademark infringement issue you would need to consider what their registrations cover, rather than simply what you know them to do.

    Domains and trademarks have some grey area around them – the trademark laws operating in Australia clearly say that to infringe a trademark you must be using a sign (i.e. a name or logo etc) as a trademark – ie you need to be using the name or domain as a brand, as a ‘sign’ that distinguishes your products/services from others. Use merely as a domain will not always constitute ‘use as a trademark’ for trademark infringement to be relevant.

    I would be more concerned about their belief that you are passing off your site to be affiliated with their business, or in some manner misleading the public into thinking you are somehow related etc. Each matter like this is case-by-case so without knowing more information it’s impossible to advise whether you are in any breach of their rights or whether they would likely succeed in obtaining the domain from you. Think about whether it’s worth the time/cost to find out… as you have not launched yet, it may be best to upload your site to a new domain. (You may still be able to email people with updates about your launch using the details already submitted?)

    The cost to the financial group to formally pursue either the domain name itself (through a particular policy set up to settle disputes about domains) or via other action could be costly – so, if the only thing you have to do with the name is the domain name, they might offer to buy it because that would be cheaper for them than pursuing other options.

    #1101126
    inveress
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    • Total posts: 108
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    You should be OK as long as you aren’t offering similar services to them through the domain (ie, if no-one could confuse you for them).

    Do NOT offer to sell them the domain — if they want to make an offer for it, that’s OK but if you offer to sell it, that’s going to be interpreted as cybersquatting and they’ll have a case against you.

    I’ve been in a similar situation twice before and both were resolved without any legal trouble. One company initially asked for the domain on trademark grounds, I refused, and they were then happy with an assurance that I wasn’t going to use the site for the same thing they used theirs for (selling clothing). The other offered to buy my domain but I again refused (it has sentimental value) and they went on their way. I was already using that domain for something obviously different from their business so they didn’t have any legal case.

    Best to read up about your rights. Companies WILL try to use big words to scare you into giving up your domain, so make sure you know whether they have a case or not.

    As has been suggested by others, the easiest way to avoid any trouble/stress is simply to develop your site under a different name. :)

    Good luck!

    Peter.

    #1101210
    inveress
    Member
    • Total posts: 108
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    You should be OK as long as you aren’t offering similar services to them through the domain (ie, if no-one could confuse you for them).

    Do NOT offer to sell them the domain — if they want to make an offer for it, that’s OK but if you offer to sell it, that’s going to be interpreted as cybersquatting and they’ll have a case against you.

    I’ve been in a similar situation twice before and both were resolved without any legal trouble. One company initially asked for the domain on trademark grounds, I refused, and they were then happy with an assurance that I wasn’t going to use the site for the same thing they used theirs for (selling clothing). The other offered to buy my domain but I again refused (it has sentimental value) and they went on their way. I was already using that domain for something obviously different from their business so they didn’t have any legal case.

    Best to read up about your rights. Companies WILL try to use big words to scare you into giving up your domain, so make sure you know whether they have a case or not.

    As has been suggested by others, the easiest way to avoid any trouble/stress is simply to develop your site under a different name. :)

    Good luck!

    Peter.

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