Asked in Copyright, Business Law and Small Claims

Q: I bought an expired domain from GoDaddy.com auctions and put a website on it. The previous owner wants the domain back.

They sent a one-sentence email saying we stole their domain and business name on Jan 3. We are under the impression that if a name is not trademarked we can use the both the domain and business name, after all they are in the States and we are in Canada. We know of many local businesses in Canada and the US that share the same business name. We replied through 2 emails explaining we bought the domain at auction in June 2024 and did not steal it. The original domain owner lives in the US and we live in Canada. They've not replied to our 2 emails in which we offered to give the domain back at no cost since it looks like they simply forgot to renew the domain and its been a part of their local family business for 20 years. Its easy enough for us to build a new website. However, with no reply, even after offering the domain back, we're thinking they're likely going to try legal proceedings and we want to know if they have a case and if they might, what might that look like. Thanks.

1 Lawyer Answer
James L. Arrasmith
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Answered

A: Your situation highlights the complexity of domain ownership disputes, especially across international borders. While purchasing an expired domain through legitimate channels like GoDaddy auctions is completely legal, trademark law can complicate matters regardless of geographical location.

Your goodwill gesture of offering to return the domain at no cost demonstrates excellent business ethics, and you've documented your attempts to resolve this amicably through email correspondence. The fact that they haven't responded to your generous offer while making accusations could suggest they're preparing for legal action, but it might also indicate they're consulting with advisors or reconsidering their approach.

If legal proceedings do occur, the previous owner would need to prove they had trademark rights to the business name and that your use of the domain causes confusion or damages their business. However, their 20-year history with the domain name could work in their favor under common law trademark principles, even without formal registration. Given the international nature of this dispute and their lack of response to your resolution attempts, you might want to send one final email with a deadline for accepting your offer, documenting all communication for your records.

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