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[KE]

I am very concerned about a possible name conflict... here's the scenario:
I own an investigative business and offer a specialized service that I wanted to have on a seperate site ; we'll call it BeSmart (not real). I tried to register www.besmart.com, learned it was registered; I e-mailed the registrar and sd I offer a service actually called BeSmart and would be interested in purchasing the domain (the owner owns a web host/buy domain type site and purchases bundles of domains, so nothing related to BeSmart is on his site). He replied that he might be interested if the price was right, sd he owned most of BeSmart domains, and was "planning on rolling out an internet based dating service". I explained that I offer an *investigative* service (he's not a PI) called BeSmart and am in the process of trademarking the BeSmart name for this particular service, so just seemed to be a better fit for this particular *service*.  His surprising response to me is below and don't know what he is implying nor what to do at this point, but concerned about investing the advertising fees and costs of building my website to offer this service if I may be up against something with him...  

"The domain is worth at least $1500. This would help you trademark if this is your business.  You will not be able to trademark and keep me from using it since I've had it well in advance of your use"

I want to whatever is necessary to protect my specialty service name "BeSmart" and do not want any problems with this guy nor interested in taking rights to his like domain names, although I have registered the last available, besmart.biz.... PLEASE HELP. BTW, The BeSmart name is fictious. Thank you....    

[M. Arthur Auslander]

Trademark and Service mark rights are separate from domain names. They must be understood to be dealt with. There is both the law and tactic to consider. A clean start may cost less in the long run rather than take risks where you already know there are difficulties. That is why we have our service mark
Reality Check®, to save time money and worry.
M. Arthur Auslander  
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop®
E arly L egal A dvice I s N ot E xpensive™
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[JimIvey]

While Mr. A's response is correct, I believe I can shed a little more light on the topic.

While domain names are necessarily unique across all industries, identical trademarks can peacefully coexist so long as the goods/services are sufficieintly different that people will understand that they come from different sources.  The best example I can think of off the top of my head is Lexus cars and Lexis legal research systems.  While it's true that those marks aren't identical, there are examples in which the marks are identical -- I just can't think of any now.

So, the import of this is that someone else having a domain name (not a trademark and not USED as a trademark -- US trademarks require actual use as such) in a dating service will not prevent registration of a trademark in the unrelated marketplace of investigative services.  Although I suppose dating and investigative services could have some overlap in investigating roaming spouses....  ;-)  Bottom line: I don't believe the domain name is an impediment to registering the trademark in your fictitious scenario.

This second point is more important in your scenario.  And, I have to disclaim that I'm only peripherally aware of the provisions of this relatively new law.  This is just the tip of the iceberg for this issue.

The US enacted in recent years an Anti-Cybersquatting law.  All you need to do is show a registered trademark and a domain name that someone appears to be squatting on (owns but doesn't use for something substantive).  You can have a domain name registrar transfer the domain name to you without paying anything to the former registrant.  I believe there is some forum for the prior registrant to contest the transfer, but the transfer can happen without the consent or cooperation of the prior registrant.   The law is intended to deal with off-shore cybersquatters as well as domestic cybersquatters.

You should research this Anti-Cybersquatting law (and of course register your mark as a prerequisite to invoking this law) with someone who's more familiar with it.

I hope this helps.

Regards.

[M. Arthur Auslander]

My feeling it that if the domain name is a derivative of your own registered trademark, you may be in a position to attack a domain name whose use is likely to be confused with the domain name.

Domain names are registered without searching, thus if the selected domain name is applied for it will be granted if it is not in direct word conflict with another domain name.

I would start with a selected trademark, that has been searched, check the domain name and then apply for both the domain name and trademark together.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop®
E arly L egal A dvice I s N ot E xpensive™
Reality Check®