paully

Hi all,

This is my first post so apologies if i'm breaking any forum rules or if I am bringing up an old subject.

I am after a bit of advice regarding trademarks in domain names. I work for a specialist sports shop selling racket sports equipment. We registered a domain name which included a well known rackets sports manufacturer in followed by 'shop.co.uk'. We were not cybersquatting or parking the domain, and on the site we sold nothing but the manufacturer's products - we did not sell anyone else's products.

We launched the site back in September 2008 and notified the manufacturer in question around the same time. At the time the manufacturer did not object to us using their trademark in our domain. In fact they added a link from their website to ours! However recently they have told us we are no longer allowed to use the domain and are demanding that we give up the domain, saying that we have breached contract and they will stop supplying us as a result of the alleged breach of contract.

Obviously we do not want to give up the domain as we have spent a lot of time and effort promoting it and we feel it is unfair for them to turn around and say we cannot use it after a knowing we had it for over a year!

They recently took a company in the Netherlands to court in a very similar case and lost. They then took it to the court of appeal and lost again. Finally settling outside of court. Their solicitors are claiming that if that case was brought before a UK court they would have won. But still as far as I am aware for a company to claim a passing off action they have to prove damages, and obviously by just selling their products, like we are licensed by them to do, there can be no damages?!

We are only a small company and cannot afford to go to court and are generally worried about losing our contract with the manufacturer, as we do most of our business with them.

Does any one have any advice or can recommend any solicitors specialising in domain names in the midlands area?

Thanks in advance.

nickynoodles

(IANAL)

My advice, if you dont want to lose the contract with them, register / buy 'racketsdirect' / 'racketshop' or something similar, 301 your exiting domain to the new domain, then focus on SEO for their brand keywords.

Spending the money you'd spend on solicitors on content and link building will give better ROI.

You might win the trademark case but still lose your supplier, which is still a loss. Tell the manufacturer that you will stop using the domain, but can't give it up because of existing links and traffic.

nickynoodles

Also worth remembering that Nominet DRS and a trade mark infringement case are two different things.

rob

Excellent advice.

namealot

Assuming that they have previously granted you permission, your post gives every indication you would win a case…? But as previously stated they may well stop supplying you?

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)

Having had a similar situation (without TM)it boiled down to they were peeved off with the site listing higher than there own and basically any future site that listed higher would also receive same treatment…

retired_member12

There is a lesson to be learned here, in that whilst it seemed a ok at the time, the inclusion of another companys' name in a domain name is never going to be a good idea. Yes, your relationship with them might seem strong at the time, but circumstances can change, and you end up with your fingers burnt.

You have to remember that they have a duty to themselves to be seen to uphold their trademark rights, otherwise they could lose them. Who is to say that your site was not mentioned in the other case, unknown to you.

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.

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.

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Skinner

Try and negotiate with them, in the interest of maintaining your business relationship suggest that you are perfectly willing to transfer the domain to the, but you would like a short period to transfer your website to another domain name. This is a pretty reasonable request and then 301 it for a month or so the search engines clock the change and most visitors will have been back and then hand it over.

Your issue isn't win or lose the case, its keep or lose the supplier which on balance is likely to be worth more to you than the domain.

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accelerator

Agreed, good advice. There's no point losing an important supplier over this, just switch over to a generic domain and learn how to promote a website without using someone else's brand name in your domain.

Rgds

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jasman

An interesting case. Presumably hanging onto the domain is not worth more than the prospect of their refusing to supply you. After all you won't be able to sell any of the goods on the website without their supply. So legal action is not an option for you because even if you win, they will just cut you off and the domain will be useless to you.

Like the other posters said, you need to get a generic domain. If you can forward the old domain to the new, great. Otherwise, tough, they have the final say as they can cut the supply off.

So, I would keep things friendly with them and tell them I respect their need to protect their trademark usage (see it from their prespective) and agree to transfer the domain to them, but point out the following:

1 you are a loyal customer
2 you were open about the usage of the domain at every stage
3 you have spent a considerable amount of money on marketing the domain

And so I would ask that in respect of the above would they be kind enough to allow a probationary period of a month while your traffic gets redirected to your new site, after which the domain would be theirs free to use as they choose.

Do keep things friendly - the worst case scenario is that they get the domain (either via legal route or from you voluntarily) and they then cut you off anyway.

Damage limitation to your business - I'd also email all your customers who have bought through the site and tell them you are changing your name to the new site. And I'd start selling other manufacturers' products on the new site too (though not until after the redirect period!), since you would no longer be restricted to that manufacturer only, and in case they stopped supplying you your site could still generate income.