Hi there!

In 2012, an individual entrepreneur registered a website and it has been operational since. Recently, another website with the same name emerged but with a different domain zone and logo where the domain name is still present.

To be clear, both websites share the same name albeit in different domain zones. The owner of the second website has registered the logo together with the domain name as a trademark whereas the owner of the first website has not.

Interestingly, both websites sell similar products. This begs the question, what can be done to address this issue?

It is advisable to seek legal advice and file a valid complaint with the court and search engines to request for the blocking of the infringing website.

In addition, it is also recommended to create a domain cloud by acquiring domain names that are similar to the main domain but with different domain zones. This may entail additional expenses but can help minimize such conflicts in the future.

I had an unpleasant encounter which led me to discover that in about 80% of cases, websites registered without trademarks tend to lose legal disputes.

Unfortunately, there is currently no single mechanism in place that can completely prohibit the registration of identical domain names in different zones. However, there are some legal measures that can be employed to exert some pressure on the infringing party.

Nevertheless, the best course of action would be to consult an experienced lawyer who specializes in internet real estate and intellectual property disputes before embarking on any legal proceedings.

To address this issue, the owner of the first website can consider several steps:

1. Evaluate the situation: Assess the potential impact of the second website on your business. Determine if there is customer confusion or any harm being caused to your brand.

2. Consult a lawyer: Seek legal advice from an attorney specializing in trademark and intellectual property laws. They can guide you through the process and provide expert advice based on your specific situation.

3. Trademark registration: Consider registering your website's name and logo as trademarks. This will provide legal protection and allow you to take legal action against infringing websites.

4. Domain dispute resolution: If you believe the second website's domain name is infringing upon your rights, you can explore domain dispute resolution mechanisms such as the Uniform Domain-Name Dispute-Resolution Policy (UDRP) or country-specific processes.

5. Negotiation and communication: Reach out to the owner of the second website to discuss the situation. Share your concerns and explore the possibility of resolving the issue amicably. It may be beneficial to involve legal counsel at this stage to ensure your interests are protected during negotiations.

6. Cease and desist letter: If negotiations fail, you can consider sending a cease and desist letter, outlining your legal rights and demanding that the owner of the second website discontinues using your name and logo.

7. Legal action: If all else fails, you may need to pursue legal action against the infringing website. Your attorney can guide you through the appropriate legal proceedings, which may include filing a lawsuit for trademark infringement or unfair competition.

The newcomer, having registered a trademark for their logo and domain, could argue that their brand is distinct enough to avoid confusion, even if the domain names are similar.
The first website owner should consider filing for a trademark to protect their brand identity, as it can provide legal leverage against the second site. Additionally, they might explore reaching out for a cease-and-desist letter, but this could be tricky without their own trademark.