trademark domain-name
Gaining control over domain name being used by scammers
<p>The company I work for has a U.S. trademark on our name, and operates a site of [COMPANY].com</p>

<p>We're now aware of two instances where scammers are impersonating our company and have registered variants of our name: [COMPANY].me and [COMPANY]inc.com</p>

<p>What's the least expensive way to get these fake domains shut down or transferred to us? They do appear to be actual scammers, so I'm guessing it will be difficult if not impossible to track them down and serve them legally.</p>

<p>I looked up the Uniform Domain-Name Resolution Policy, but it appears it would potentially cost thousands for us to just submit the challenge?</p>

<h2>Trade Marks</h2>

<p>Company names are not <em>ipso facto</em> trademarks.</p>

<p>A trade mark identifies particular goods and/or services (not companies) and the protection that it gives is to allow it to identify those goods and/or services as yours. Trademarks can arise though usage at common law (<a href="https://en.wikipedia.org/wiki/Passing_off" rel="nofollow noreferrer">passing off</a>) or through registration and are jurisdiction and industry specific. </p>

<p>So a trade mark registered in the USA protects you in the USA and <em>nowhere else</em>. Similarly, a common law trade mark protects you in the geographic location where you operate and <em>nowhere else</em> - there are many football teams called the "dragons" or the "giants" and their common law trademarks are restricted to where they operate. Similarly, trademarks only relate to the industry your goods and/or services are sold in - Apple Computers had no trade mark conflict with Apple Music ... until they entered the music business.</p>

<p>Someone only breaches a trade mark if they use it in such a way that a reasonable person would think that their goods and services are yours.</p>

<h2>Legitimate Conflict</h2>

<p>If there is no trade mark conflict and there is no passing off then, providing they have a legitimate claim they can register whatever domain name they like - the fact that it is similar to yours is no nevermind.</p>

<p>You can approach them and make an offer to buy the domain from them at whatever price you can agree.</p>

<h2>Illegitimate Conflict</h2>

<p>If they have no claim to the name <em>at all</em> then you can ask the domain administrator to investigate and disqualify them from holding it. This is subject to whatever rules and fees the domain administrator has in place.</p>

<p>Depending on how generic [COMPANY] is they may or may not have a good claim to it. If [COMPANY] is generally descriptive of the goods or services (e.g. "Logistics", "Cleaning", "Software") and/or is generic (e.g. "ABC", "Super", "Giant") then they don't need a lot to have a legitimate claim. If it is very distinctive or unique or, even better, invented (e.g. "Kaloom", "Fidraka", "Paltine") then they need to have a good reason for using it.</p>
