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Who "owns" it?
October 9, 2012 6:30 PM   Subscribe

For sake of discussion, let's say that I am an expert on "widgets". Particularly, I review a lot of reports about widgets for my word-of-mouth consulting business. This is a side business - - by day I work in the public sector - - in the widget business. Approximately 6 years ago I purchased the domain "widget review.com" with the hope of using it as I neared retirement and transitioned to a full time consulting role with a full fledged website. Well... In the interim time, another expert in the widget field has had a consulting business and a website named "widget review.org" I know you are not my lawyer, but might I run into some sort of legal trouble when I bring my website online... even if I owned the dot com url first? To be clear, my competitor and I provide the exact same service. I am also operating under the assumption that he probably looked for the dotcom version of the url, but since I owned it, optioned to the dotorg version.
posted by teg4rvn to Work & Money (12 answers total) 1 user marked this as a favorite
 
If he trademarked "widget" you could have an issue, otherwise you probably fine.

IANAL.
posted by COD at 6:39 PM on October 9, 2012


I think it would work out okay, and with minimal confusion for potential clients if you marketed your service exclusively as "widgetreview.com" and never "Widget Review" - assuming the other guy doesn't market themself exclusively as "widgetreview.org". I think legally you could still call yourself "Widget Review" (if there aren't any trademarks) but it would be confusing for potential clients, which is not what you want.
posted by fermezporte at 7:05 PM on October 9, 2012


@fermezporte: that is my concern. Most people would naturally type the dotcom before the dotorg. My competitor might lose business to me, thus pissing him off. There are no trademark issues. I just wonder about the legal vagaries of this kind property.
posted by teg4rvn at 7:14 PM on October 9, 2012


It probably wouldn't really matter, but, should he be running a for profit business on a .org domain anyway?
posted by trbrts at 7:49 PM on October 9, 2012 [3 favorites]


Change the name and offer to sell him the dot com for a reasonable fee. Why risk confusion?
posted by anon4now at 8:49 PM on October 9, 2012 [1 favorite]


I am not a trademark lawyer. However, I was looking up just this issue yesterday.

The domain is not strictly the issue IMHO. You review widgets. Your purchase predates your competitor's usage and the argument that you are not typosquatting is easy to make.

The issue is what you call your business.

For registered trademarks, a person registers their service against a classification. They are then protected against infringements in their field of business. But you don't have to register your trademark to be protected by law.

For registered and non-registered trademarks - as I understand it - it is priority that matters. Your competitor has already established a business called "Widget Review" that predates yours. You cannot do the same thing and if you started a business with a name that invited confusion between the two businesses then they might bring in the lawyers.
posted by MuffinMan at 12:20 AM on October 10, 2012 [1 favorite]


but, should he be running a for profit business on a .org domain anyway?

You can do whatever you want with a .org. From Wikipedia:
The domain extension was originally created for non-profits, but today it is commonly used by schools, open-source projects, communities, and for-profit entities
posted by EndsOfInvention at 1:37 AM on October 10, 2012


Thanks for the input. Thankfully, widget review dot org is just an easy to remember url for his business which has another name (think "John Smith, widgetmaster") His url naming scheme (mine too) is more for search engine optimization than creating an actual business name. With that said, I have no idea if his business is DBA" widget review dot org "

I also own widgetexpert and widgetconsult dotcom so I might just redirect the " review " URL to the" expert" URL.

Any other tips or suggestions appreciated.
posted by teg4rvn at 3:42 AM on October 10, 2012


Just make the official name of your business/site " teg4rvn's widget review" and have it live at widgetreview.com (also buy teg4rvnswidtetreview.com and redirect it there). People will remember the short url and you get to use it on business cards, and adding your name to the brand will help you stand out in the crowd of widgeteers.
posted by mikepop at 5:25 AM on October 10, 2012


As far as the ownership and trademark issues go, I believe MuffinMan is correct, but IANAL either.

Another thing to bear in mind... typing "widgetreview.com" into the address bar may well not be the most common way people arrive at your site. That might rather be via clicking a link they saw someplace else, or it might be via a Google search. And if your competitor already has had a site live for some time, chances are anyone typing "Widget Review" into Google will find his site first rather than yours.

That's another argument for finding yourself a new, distinct name.

Before you do that, I would check out what search terms people interested in widgets actually use, and see if you can incorporate them in your name. For all you know, people may search for "What widget" or "Widget Guide" rather than "Widget review".
posted by philipy at 5:51 AM on October 10, 2012


I don't think you should take legal advice on this topic here. An attorney in Southern California you could contact who is an expert on this topic is Stephen Anderson.
posted by Dansaman at 6:41 AM on October 10, 2012


Check out this link regarding "merely descriptive" trademarks and marks that have acquired "secondary meaning." Then consult with a lawyer (specifically, call around to half a dozen lawyers and explain your problem until you find someone you like and trust). Your question cannot be answered based on the information you have provided, so you may as well throw dice as follow the advice here. If you plan to make more money from running your side business than you could make by just selling the domain to the guy who runs widgetreview.org, then the legal fee will be small potatoes. Just do it.

(Fair disclosure: IAAL.)
posted by jhc at 8:24 AM on October 10, 2012 [1 favorite]


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