Wednesday, July 15, 2009

Is it possible for a business to stop a person from having an email address similar to their companys name?

I have a company that is telling me that I must get rid of my email addresses because it is similar to their company name. Bit strange I reckon.
Is it possible for a business to stop a person from having an email address similar to their companys name?
Some time back, the fashion company Armani had apparently sued a gentleman by the name of A. R. Mani to get hold of a domain name.





It seems they tried intimidating him. He was ok with the idea of giviing up the domian name but he wanted to be compensated for the costs of printing new business cards and stationery etc.





The company refused although it offered him an expensive suit for his trouble. He just wanted the compensation.





The case went up to either ICANN or WIPO which ruled in favour of Mr. Mani.





You could try and get more information on this of the net. It does seem similar to your case.
Reply:Without knowing all the details, it's hard to say but generally if a company has trademark or prior common-law rights to their name, then they will have the rights to enforce their rights.





But names are not protected "across the board;" certain parameters apply:





1) Are the names similar in Sound, Appearance or Meaning?





2) Are the industries the same or similar to one another?





3) Are the names confusingly similar to the average consumer? In other words, could customers be confused and assume that both companies are affiliated?





Here's what the USPTO has to say about this matter:





"The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:





the similarity of the marks; and


the commercial relationship between the goods and/or services listed in the application.





To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related."





Also read ICANN's Domain Name Dispute Resolution Policy - link below





It's best to contact a private search company or a trademark attorney to assist you in determining if this will be a problem or not.

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