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Trademark infringement. Pending application. Cyber squatter duplicates my website after I register for a trademark.

Cyber Squatter.

Additional information
Internet websites.

I registered the .com years before them. Someone registered another TLD same name. I contacted them to purchase the domain name. Before contacting them their website had just a blank page. No response. That was ok, they were not hurting my company.

I applied for a US Trademark, same as my domain name, company name right away to protect competition in the future under the same name.

Shortly after I contacted the domain name owner to purchase, they duplicated my website, company name and put PAY FOR CLICK services for the same services that I personally have been offering for years. The websites has the same wording, ect as mine.

My trademark is in "New Application Processing" status. It will be 1 year before I get my ® mark approved.

Should I wait until I have my ® mark? Or tell them to remove duplicated material and to remove my company name now? They themselves, are not related to the offered services.
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Attorney answers (3)

Reputation Level 18
Your narrative is difficult to parse. I think what you're saying is:

You've offered certain services to customers "for years" under a particular company name and via a website with a particular .com domain name. You've applied to federally register the domain name (I'm assuming w/o the .com identifier) as a trademark. Some other person has registered at another top level domain the same domain name that you use at .com and has published a website at that location which "duplicates" the appearance of your website and offers sponsored advertisements paid for by companies that offer services in competition with yours. You want to know what you can do about this other website.

First, if you use a word or phrase as a trademark -- that is, if you use the word or phrase to identify your company as the source of your services -- and the word or phrase is distinctive then you HAVE trademark rights in that word or phrase. While your registration of those rights is beneficial it is not necessary. So, you need to speak with an intellectual property attorney to determine if you have trademark rights in the word or phrase that you've applied to register as a mark.

Second, if you do have trademark rights in the phrase that pre-date the publication of the other website then you can demand that the other website owner take down its website and transfer its domain name to you. You should do this only through an attorney, however.

Third, I'm unclear on what you mean when you say the other website "duplicates" your website AND provides pay per click advertising -- it seems to me it should be one or the other, not both. In any event, assuming you're right, then you may have a copyright infringement claim against the other website as well. While filing suit would likely be prohibitively expensive, this copyright angle does permit you to send a DMCA take down notice to the web host that publishes the offending website. Again, I suggest you evaluate this possibility with your own intellectual property attorney.

The conduct that you've described happens all the time. Assuming you have developed trademark rights in the word or phrase you use as a domain name (it is not necessary that it be registered) you can use the domain name dispute resolution procedure to challenge the other person's ownership and use of the domain name that he or she is using. Google "UDRP" and read the rules. Yet again, your own attorney should file the action if that is the direction that makes the most sense. Good luck.
3 people marked this answer as good

Reputation Level 20
As noted by the other responses, the UDRP procedures may be what you need, and/or a DMCA take down notice. Consult an IP lawyer to help you with your issues.

Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.
2 people marked this answer as good

Reputation Level 9
The previous response is very comprehensive and helpful. I would like to add, however, that the expense of a UDRP complaint or a Cybersquatting action in federal court is considerable. Your post didn't really indicate if the other domain is simply a nuisance, or if it is causing considerable harm. You will notice online that there are endless numbers of cybersquatters and typosquatters. Largely, these sites are consider nuisances that aren't worth the expense of fighting.

To reiterate a point presented in the first response, if the other site has actually copied the exact text or images from your site, a DMCA takedown notice would probably be the most effective route.
3 people marked this answer as good

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