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15 Comments

Can I lose this domain name?

Hey guys, here is my question about trademark infringement.

Last year I’ve bought a domain name from a pretty exotic part of the TLD list.

I’m not going to be too specific, let’s say the domain name is 'my.contact'.

This example domain perfectly fits in my current issue, it’s a pretty generic word 'my' and it resides on '.contact' TLD.

Here is the problem. There is a successful web or app on domain name 'mycontact.com', it’s pretty active and they even own the trademark 'mycontact'.
(note: this is not the real domain name, but it fits in my example.)

I’ve bought this domain name in the 'General Availability' period, which is before the 'Trademark Claims' period.

I was informed that in this 'Trademark Claims' period I can lose this domain name during the dates from 2020-12-02 to 2021-03-02, fortunately, it did not happen.

My questions are:

  1. Does it worth building a product idea for this domain?
  2. Can I lose this domain name even after the 'Trademark Claims’ period?
  3. The domain name is based on the generic words "my" and "contact", can be their trademark power used against me?

In my defense:

  • I'm not going to copy/paste their product idea
  • the domain name is based on the generic words "my contact"

thank you in advance

  1. 4

    Here's what I would do. Not saying this is the best suggestion, but an idea.

    1. Keep the domain, let them buy it from you in 1 year
    2. Immediately rebrand and rename your product.
    3. Keep building your product and keep the domain redirect to your new name/domain.

    There might be some SEO experts here on IH that could help you figure out if keeping the domain is better or worse for SEO and if you can/should put content instead of a redirect.

  2. 2

    Had a similar situation before once. It was a domain that was about to expire, then I received a cease and desist letter with a bunch on demands. Someone had a coffee company named Fortune - I had the domain http://fortunecoffee.nl/ and a coffee place. They said it infringed their trade marks etc.

    Long story short - I renewed the domain because they sent that letter and asked them what they wanted to pay for it. Negotiated the price a bit upwards and sold it to them.

    I'd suggest to you to just hold your ground if you want to keep the domain or get a good price for it and find a new domain / rebrand.

  3. 2

    I've purchased the domain name 'get.contact'
    There is already a product living on 'getcontact.com'

    I don't know who owns ".contact" and what are their rules. I would start with learning that.

    Up to my layman knowledge:

    Copywriting "get contact" is at best very difficult because it's a general expression. If your product does something different, it may not be a big issue.

    It may be a good idea to put something on the domain that expresses the purpose.

    It may be also a good idea to register a trademark, but I don't think it's necessary.

  4. 2

    I have used trademark ownership to leverage a domain from someone on the past so I know that this can be done. If you’re operating in the same space then you are at extra risk.

    I don’t know why you don’t tell us the specifics as to be blunt, no-one here is going to care and it would help us advise you more.

    1. 1

      okay, here are the details:

      I've purchased the domain name 'get.contact'
      There is already a product living on 'getcontact.com'

      It seems, their product is an app, identifying a phone number if it's spam or not when somebody is calling you.

      My idea is to have a personal page, something like 'about.me'.
      A person has a unique URL, eg: "get.contact/johndoe" where he can present himself.

      It doesn't seem to me like the same space, does it?

      I have used trademark ownership to leverage a domain from someone on the past so I know that this can be done.

      Could you leverage a domain, because someone was building the same idea?
      Or someone had just the domain similar to your trademark?

      1. 1

        I had the trademark for (some word) and they had (some word).co.uk

        I contacted the relevant internet authorities saying that I had the trademark and could i have the person’s contact details.

        Without me even needing to prove anything , they gave me the guys email address, phone number and home address.

        I just emailed him and then called him and knowing that I had the trademark and could legally take it off him anyway (although it would take months and months to go through that process) he decided to sell it for a reasonable cost. Saving me months of not over a year on admin and him losing out on getting anything for it.

        ANYWAY…. In your case I think your fine. You’re not trying to impersonate, you’re not trying to confuse. It’s a totally different type of business. I’d say you’ll be fine.

        1. 1

          Oh I should add - this guys website was in the EXACT same class group that we held the trademark in.

          If you’re not operating in the same class group (which roughly translates as the same area of business) then they don’t really have an argument.

  5. 2

    I think Reddit is much better to ask such legal issues. I saw few such questions about domain names on reddit before.

    1. 1

      Could you please be more specific, what subreddit is that?

      1. 2

        Around a year back I saw a reddit discussion on legal issues and domain names. I dont remember exactly which subreddit.

        Check this link

        https://www.reddit.com/r/legaladvice/comments/b2eh6l/major_corporation_coming_after_me_for_a_domain/

  6. 2

    Here's what I would do:
    Buy a consultation with a specialist. There are many aspects of this issue. Don't rely on advice from this forum. Especially, if you don't want to be specific.

    1. 1

      thank you for your reply!

      Don't rely on advice from this forum.
      Well, I do not agree, this forum was the first thing that came to mind, it helped me a ton of times especially fruitful advice from users who had the same issues.

      ofc, I don't expect the specialists' interpretation, more likely:
      "I had the same issue, if they own trademark, they can claim your domain anytime, here is a no-go."
      or (more positive to me :P)
      "Even when you have the same domain names, yours is yours, you can build your stuff, although SEO is going to pain in the ass."

      The question is asked here on this forum, more or less, pointing me in the right direction and hear out at least some aspects of this issue.

      Buy a consultation with a specialist
      Who can help me in this situation exactly, what type of consultation?

      1. 2

        The forum is great. My point is: most of the legal questions can be answered ONLY if you're very specific about all details. If you don't want to be specific, you'll not get the correct answer (even if there is a specialist here). On the Polish web, there is a dedicated blog about that topic: https://znakitowarowe-blog.pl/, so I know how complex the answer can be.

        1. 2

          Indeed.

          I've posted already the complete detail under Primer's comment.

          Once again, thank you for your reply.

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