Legal Question in Intellectual Property in New York

Use the dot-com if the dot-org is in use?

Hi guys.

I've read many other answers and the advice some of you give is amazingly generous. I wonder if anyone can help with my specific situation.

I registered WikiTree-dot-com in May 2004 but have not used it yet. I want to start using it now.

A gentleman in Belgium registered WikiTree-dot-org in April 2005 and started using it immediately. It's a non-profit site that he calls ''WikiTree'', not ''WikiTree-dot-org''.

According to an online TARR search he hasn't trademarked WikiTree, but he's clearly established first use.

The use is basically the same as mine will be. They're close enough to be confused, i.e. both wiki-based family history websites.

I'm friendly with this guy now, and we don't plan to directly compete with each other, but you never know about the future.

So ... same kind of site. I registered the dot-com first. He established first use in the space but hasn't applied for a trademark.

Can I call my site WikiTree without fear of him or the next owner of WikiTree-dot-org trademarking it later?

Would it help if he and I simply agree not to challenge each other's use?

Thank you!


Asked on 8/30/07, 1:24 pm

4 Answers from Attorneys
Nancy Delain Delain Law Office, PLLC

Re: Use the dot-com if the dot-org is in use?

Your problem isn't with just dot-org vs. dot-com; you lay yourself open also to confusion between your dot-com and the other top-level domains if you don't register them and hold them for yourself. Remember .info, .tv, .us, .co.uk, etc.

Trademark law is geographically bound; thus, if someone in China registers WikiTree.info, there won't be a whole lot you, with your physical presence in the US, can do about it unless Mr. China decides to actively sell in the US, and then your case is subject to a "sliding scale" analysis the first of which came out of the Western District of PA about 10 years ago.

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

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Answered on 8/31/07, 2:19 pm
Johm Smith tom's

Re: Use the dot-com if the dot-org is in use?

If you can agree to not challenge each other that would help, but it might not stop a trademark reviewing attorney from declining your mark application. You did have the .com first but he is the first person to start this type of use of the "mark." Keep in mind though that he is in Belgium and not the US. Let me know if you want help dealing with this. This is what I focus on.

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Answered on 8/30/07, 1:43 pm
Kristen Browde Browde Law, P.C.

Re: Use the dot-com if the dot-org is in use?

There are very distinct limitations on the trademarking of domain names, and, from the information you've posted, it's not clear that either of you would be able to trademark your domain name.

Assuming, for the moment, that you can surmount the hurdle and make the name registrable, the question then becomes one of first use in interstate commerce. On that, he seems to have the clear advantage.

However, the inquiry doesn't end there, and gets both complicated and quite fact specific. If you'd like to arrange a consultation on the subject, please feel free to get in touch.

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Answered on 8/30/07, 1:51 pm
Michael Stewart Michael D. Stewart

Re: Use the dot-com if the dot-org is in use?

You can enter into a consent or co-existence agreement with him.

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Answered on 8/30/07, 2:09 pm


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