Thanks all for your time, and the good advice. Much appreciated.
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Originally Posted by namealot  Did they give any reason for the u turn you really need to know why? This could happen with any site you have that has there product on it…? Ask them it may also help with stop future misunderstanding. (you need to know were you stand regarding any future site) |
We rang the manufacturer up and told them we were using the domain - they didn't tell us we couldn't use it and added a link to our site from their own. However, we didn't talk to the MD of the company (who is impossibly difficult to get hold of). I think one of three things happened here:
1. They have been told by their parent company (who actually owns the trademark) that we were not allowed to use the domain.
2. They have been put under pressure from a larger account who doesn't like us using the manufacturer's trademark.
3. The MD of the company was not made aware by his staff at the time that we were using the domain.
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Originally Posted by DoubleTap I know this will sound harsh, but from a business perspective, you have been quite naive. I wouldn't say you've been passing off, but I can't see how you have not been trading off their trademark, you must see that, surely? Put it down to experience, hand it over for free (don't 301 it), and maintain a healthy relationship with your supplier. |
I agree with hindsight we possibly have been a bit naive, our e-commerce is in its infancy, but at the time we did not think trading off their trademark was a problem - as we regularly fill our high street shop with banners and POS material with their trademark on - which they obviously encourage. We also thought there would not be a problem as all products sold through the website were theirs - it’s not like we are taking money off them! They were benefiting from our sales as much, if not more, than we are. They are not retailer and do not sell to the public, so even though their trademark is used in the domain name - the domain name as a whole (Their trademark+'shop.co.uk') is not applicable to them.
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Originally Posted by bb99 You may find the recent DRS decision on HeritageBathrooms.co.uk of interest. I can't link to it directly but if you click on this: Decisions Search
then select 'domain name' and put 'heritagebathrooms.co.uk' in the box and search for it, you will be able to download the PDF.
This DRS deals with a case whereby a company has said "it's OK to use our TM in your domain name" and then later changed their mind.
Obviously each case is taken on its own merits but the expert talks at length about whether or not the DRS should be used to settle what could boil down to a contractual dispute. In this case he takes no action and suggests the whole thing would be better dealt with in court. |
Thanks for pointing this case out, it looks very interesting. It looks like the defendant in that case had a written agreement with the trademark holder though - which we don't have, but in our mind the fact that they linked their website to ours as 'an authorised stockist' would demonstrate that we had a verbal conversation with them regarding the domain and that, at the time, they were happy with it.
I had read a similar case on the Nominet DRS regarding Seiko watches. The defendant had Seikoshop.co.uk - however he wasn't selling through his website, but used the domain to promote his high street shop, and the claimant (Seiko) successfully argued that they might not be selling their watches when the customer comes to the defendants shop.
Also there is this case regarding Volvospares.com which went through the WIPO Arbitration and Mediation Center, which seems very similar to our case. The panel concluded that although the defendant knew about the claimant’s trademark, they could not find any evidence that the defendant was misrepresenting the claimant’s trademark and that they had a legitimate business interest with using the domain.
WIPO Domain Name Decision: D2008-1860
All that said though, the issue for us is, as you all correctly point out, losing the supplier. Even if we were to win any case brought before the Nominet DRS or other courts, if it results in us losing, or damaging our relationship with the supplier it would obviously not be worth it. If the courts did rule in our favour, I am not sure they can just stop supplying us, as I can’t see how they would prove that we breeched contract. But obviously there is no guarantee that we would win the case, far from it.
Like Jasman, Skinner and Nickynoodles suggest, I think we will write a letter back to their solicitors that we are willing to give up the domain in order to keep our strong business relationship. However, do you think we are pushing our luck to ask for any compensation considering they were fine with the domain for 9 months and knowingly let us spend money developing the site only to now take it away from us? Let’s not forget they were happy enough when the orders were coming in and they were making their money of the site too.