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paully

Thanks all for your time, and the good advice. Much appreciated.

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.

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.

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.

nickynoodles

Yes .. Ask, as a compromise, that they take control of the domain but redirect all links and traffic to your new site. You'll get out of the Google sandbox quicker using a new domain.

If that's still no go, just hand it over and move on.

racketzone.co.uk is dropping in a week's time btw

paully

Ok, thanks again for the advice.

awesome thanks for the heads up!

accelerator

You never got proper permission to use the domain in the first place. You should have had a signed agreement from someone in the organisation capable of giving permission. So, I don't think asking for compensation would be realistic.

Rgds

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retired_member12

I don't think there is any doubt about your good intentions, and clearly things have worked well until recently. However, the reality is that they've already been through the mill trying to get the other domain name back, and I suspect they've also had to learn quickly from that experience, as you are now. The plain fact is, they are duty bound to protect their IP in all its forms, be that TM or Patent. It just so happens that as they have wised up to this fact, your efforts will be a casualty.

jasman

Another option is to move the site onto a new domain immediately, and 301 redirect the old domain to it. Then drag the negotiations out a little to give Google enough time to replace the old domain's rankings with the new one's.

Keep all correspondance by letter, not email. If they ask why, say you prefer to keep hard copies for all legal correspondence. Each time you send a letter, and wait for their reply, and then send your reply to that, it's going to be about another week. So if you can drag it out so several letters are exchanged you should get a few weeks while Google realizes the domain forwards to the new site. Even after the domain is in their possession it may take them a while to change the nameservers giving you even more time.

So initially you might send a letter making it clear that you will transfer the domain over to them as you respect their need to protect their TM, but don't give any details other than that. Then wait for reply. You might then reply to their letter saying something like you just need your web designer to download a backup of the website before transferring the domain over and you expect that to be in the next few days. They reply saying whatever. Then you send another letter saying you now have a backup, but ask which email address the domain should be transferred to etc. Eventually, you hand over the domain, but your new site is the one coming up in Google.

This way, instead of asking them if you can have a month to redirect the old domain to the new (to keep the ranking you have built up in the search engines), you effectively take a month - or at least a few weeks anyway. So they don't even get a chance to say 'no'. Don't take the piss dragging it out too much though, you don't want to annoy them and risk being cut off! As in all areas of life, walk a fine line...