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nickynoodles · 10-03-2010, 11:32:15 AM

The 'abusive' site does contain advertising releavant to the TM class. Infact the top ad is one for my client's site. (via AdSense)

Cost is not an issue for my client and the domain is worth at least five figures in lost business. The issue is more making sure that we do the DRS right the first time.

nickynoodles · 10-03-2010, 11:34:12 AM

Quote:

Originally Posted by afx

A "trading" name is a little vague. Are you saying it is a made up word, ie. definitely not a dictionary word ?

Also is your clients TM a CTM with rights for use in the UK or do they have UK trademark ? Or is it a US TM only ?

Could another company other than your clients assert rights to the name ?

It contains a dictionary word. For want of a better example, think 'Andersen Consulting'. (Totally different sector though) It's a UK trademark.

I don't think another company could assert strong rights to the domain as my client has used the trading style for 20+ years.

retired_member12 · 10-03-2010, 11:34:24 AM

Quote:

Originally Posted by nickynoodles

...Contact hasn't been made, as I would guess they'd want more than the cost of a DRS...

...They're probablly making �xxx a month from the AdSense...

I'd stick to the facts for a start, and not assume anything you can't prove.

foz · 10-03-2010, 11:47:10 AM

If it is an obscure TM and the Respondent is located outside the UK, it could be argued that the Registrant had no prior knowledge of your clients rights (if any) at the time of registration. You must prove that the current Registrant was aware of your clients TM prior to registration.

In effect two parts to a DRS - Your clients rights and the Registrants bad faith. You have to prove both aspects to ensure success.

foz · 10-03-2010, 11:49:02 AM

Quote:

Originally Posted by DoubleTap

I'd stick to the facts for a start, and not assume anything you can't prove.

Agree with that, it could be only making �10 per month.

keys · 10-03-2010, 11:55:55 AM

Quote:

Originally Posted by foz

If it is an obscure TM and the Respondent is located outside the UK, it could be argued that the Registrant had no prior knowledge of your clients rights (if any) at the time of registration. You must prove that the current Registrant was aware of your clients TM prior to registration.

An innocent registration can become an abusive one when a domain is put to use. Informing the registrant of the TM could confirm this if they persist with the current site.

Conversely, a TM granted after the registration date of a domain would only support a DRS claim if abusive use can be established.

nickynoodles · 10-03-2010, 12:02:15 PM

My hesitation with contacting the current registrant is that they may take down advertisting, weakening the case in Nominent's eyes.

To my eyes the domain seems to tick one of the 'Absuive' boxes in Nominet's guidelines:

"Has been used in a manner which took unfair advantage of or was unfairly detrimental to your [the Complainant's] Rights"

I think it's very, very unlikely that it would have been registered in good faith.

Some one kindly recommended a solicitor via PM so I'll be taking things forward for my client through them.

bb99 · 10-03-2010, 12:05:46 PM

Quote:

Originally Posted by nickynoodles

My hesitation with contacting the current registrant is that they may take down advertisting, weakening the case in Nominent's eyes.

Get a screenshot of the abusive use beforehand, and then it's irrelevant whether they take it down or not.

In any event you could argue that them taking it down in response to your communication was an acknowledgement of their abuse.

Given you say that money is not an issue for your client and that you want to get it right, I think you should see a solicitor about it.

However I do find it regrettable having to say that because the DRS is meant to be a non-legal process accessible to the layman rather than a solicitors picnic.

foz · 10-03-2010, 12:20:25 PM

If the use is in-keeping with the second keyword and the domicile of operation is outside the UK. Abuse and TM infringement could be argued against. I'm assuming its a UK TM only?

nickynoodles · 10-03-2010, 12:24:28 PM

Quote:

Originally Posted by foz

If the use is in-keeping with the second keyword and the domicile of operation is outside the UK. Abuse and TM infringement could be argued. I'm assuming its a UK TM only?

The use is in keeping (well, 1 page of AdSense in the same sector), and it is a UK only TM.

10-03-2010, 12:20:25 PM	#19 (permalink)
foz Join Date: Oct 2006 Location: NZ Posts: 1,450 No Classified Ratings Domain Trader Rating: (100% / 20)	If the use is in-keeping with the second keyword and the domicile of operation is outside the UK. Abuse and TM infringement could be argued against. I'm assuming its a UK TM only? Last edited by foz; 10-03-2010 at 12:31:02 PM. Reason: My bad, made it clearer.

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10-03-2010, 11:32:15 AM	#11 (permalink)
nickynoodles Member Join Date: Aug 2009 Posts: 95 No Classified Ratings Domain Trader Rating: (100% / 5)	The 'abusive' site does contain advertising releavant to the TM class. Infact the top ad is one for my client's site. (via AdSense) Cost is not an issue for my client and the domain is worth at least five figures in lost business. The issue is more making sure that we do the DRS right the first time.

10-03-2010, 11:47:10 AM	#14 (permalink)
foz Join Date: Oct 2006 Location: NZ Posts: 1,450 No Classified Ratings Domain Trader Rating: (100% / 20)	If it is an obscure TM and the Respondent is located outside the UK, it could be argued that the Registrant had no prior knowledge of your clients rights (if any) at the time of registration. You must prove that the current Registrant was aware of your clients TM prior to registration. In effect two parts to a DRS - Your clients rights and the Registrants bad faith. You have to prove both aspects to ensure success.

10-03-2010, 12:02:15 PM	#17 (permalink)
nickynoodles Member Join Date: Aug 2009 Posts: 95 No Classified Ratings Domain Trader Rating: (100% / 5)	My hesitation with contacting the current registrant is that they may take down advertisting, weakening the case in Nominent's eyes. To my eyes the domain seems to tick one of the 'Absuive' boxes in Nominet's guidelines: "Has been used in a manner which took unfair advantage of or was unfairly detrimental to your [the Complainant's] Rights" I think it's very, very unlikely that it would have been registered in good faith. Some one kindly recommended a solicitor via PM so I'll be taking things forward for my client through them.