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Hi,
You clearly need the advice of a trade mark solicitor, if the firm that Grant has advised can’t resolve this send me a PM and I will provide you with details of a Trade mark solicitors we use that have exceptional experience in these matters, they have resolved various TM issues for our company – this is a specialist area.
My own thoughts on this are as follows:-
To be in breach of a trade mark the following normally have to present:-
1. Your mark used and the registered mark have to be identical – exactly the same.
2. You are using the mark for the exact same services or business nature
3. The public would be confused by your company and that of the registered owners business
Based on what you write, yes it was perhaps foolish to register a similar domain name but it’s not exactly the same, only similar and I’m not sure parking it with adwords on or whatever would constitute passing off, also i doubt a judge if it went to the high court would rule that there was any public confusion, but I’m no legal expert.
The other thing that bothers me with this is I can’t see how they have arrived at the compensation level they claim. Yes if a company were to sue you for damages and win they could recover their outlay but this is a solicitor making a figure up with a restricted time frame to respond in and that doesn’t sound right to me. In fact it smells like a try on to me and it’s not up to them to suggest how you finance the compensation that also doesn’t sound right.
Best advice for you is to get an expert opinion.
In the meantime do not answer this firm directly that would be very foolish, you could say something to them that could be used against you in this case and don’t sign anything!
You are prepared to sign the domains over to their client and I would have thought that would resolve the issue, that’s if it is their client that has raised the objection and this is not some two bit practice looking for quick bucks from situations like this where they are not officially appointed by the client.
If their client had issued a WIPO against you it would have cost them circa £1500 x 5 domains to achieve this, i.e. getting the domains off you and that would have been the end of it. To then sue for damages is often more than it’s worth because they would have to establish financial loss and for parking a domain its hardly the same as setting up a similar business in computers using their name on a website and that’s if proof can be established that you are in breach of the three points I’ve mentioned.
Anyway, good luck on this, get the legal help and hopefully it can be resolved quickly and you can put the matter behind you.
Rich
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