You receive a phone call. The person on the other side is making you an offer you cannot refuse: either you’ll buy all domains containing the name of your company in an hour, or your competitors will do it. They are just informing you honestly and are giving you the right of pre-emption. This is how the classic domain name scams looks like.
I’m not going to directly point the finger at companies, which are earning money that way. But try to search the phrase „competitors want to buy domains” on one of the most popular websites with amateur films, if you want to hear one of such phone converstations.
The issue of domain name scams has become serious enough for the reporters of the Polish tv show „Interwencja” to investigate it. I encourage you to watch an episode „They bought domains, and now they regret it” by Sylwia Kozłowska-Sierpińska.
Okay, but how to react in a situation like this? You can:
1. Buy offered domains (that’s what I don’t recommend)
Can you feel safe now? A company named „JOHN and JANE”, operating under a domain johnandjane.com is not safe even if it buys ten another domains with other extentions. Anybody can in any minute buy a domain with dashes (john-and-jane.com) or with changed word order (janeandjohn.com).
In conclusion: buying similair internet domains is not an effective method of protection. In addition, it creates costs of over 50 € per one domain.
2. Ignore the offer
I’m pretty sure that those „competitors” do not exist. The nice woman on the other end is just lying through her teeth.
Of course it doesn’t change a fact, that thanks to domain name scams such situation is possible to happen. I’ve seen it when the very first result in a search engine is a link to a website of a very hard-working entrepreneur, but right below there is a confusingly similair domain of his competitor. Hence, there is a real chance of a confusion.
3. Register company’s name as a trademark to fight domain name scams
A trademark registered in the Patent Office can be used as a legal instrument for combating the unfair competition. How, you ask? Third parties are not allowed to use any sign which is identical with or even similair to your trademark. Moreover, comparison of word marks is based on its phonetic plane.
Using a domain containing word phonetically similair to above mentioned JOHN AND JANE is an infringement of its owner rights. Of course on the condition, that offered goods are of the same kind. Internet domains are also perceived as entrepreneurs’ names. Ttherefore on the basis of the Act of combating unfair competition – it cannot confuse consumers.
Disputes on internet domains in Poland are proceeded in front of the Arbitration Court for Web Domains at the Polish Chamber of Information Technology and Telecommunication, the Court of Arbitration at the Polish Chamber of Commerce in Warsaw and in front of the court of law. If the case concerns protection of the European union trademark, it is proceeded in front of the Community Trademark and Design Court.
The party hoding rights to the registered trademark is more likely win the dispute. Research and Academic Computer Network declares itself at the regulations that it can submit notice of termination of a contract with a subscriber who brakes the law.
Final remarks:
The third option does not apply, if you use a domain which does not contain a fancy company name, but for example following phrases:
- good-lawyer.com
- cheap-furniture.com
- estates.com
Such phrases have a merely informative character and therefore cannot be registered as trademarks. In every other case, it is worth to consider registration of a company name in the Patent Office.
+48 607 416 240
office@lech.bydgoszcz.pl
- Small company and trademark. When to file a trademark application? - 20 March 2018
- Trademark similarity: When does it lead to an infringement of the law? - 15 February 2018
- Rebranding – when it is a threat to your company? How not to lose a trademark? - 8 January 2018
