Rob_F

This also makes a lot of sense. It might not be right but your client might not want the worry of a legal threat hanging over him. Depends on your client I guess.

- Rob

Blake

I think that this is the legal situation here, however does not stop the threat of legal action and who wants to embark on a new business venture with this problem hanging over them from the start.

denchomsky

Thanks for the opinions everyone.

To Clarify

(not actual domain or company names)

Person A has registered the company name'Lovely Gardens Ltd.'
Person B has registered the domain names 'lovelygardens' in both .com and .co.uk extensions, and registered the company name 'Lovely Gardens Online Ltd'

Neither company has any trading history, both want to trade in the same field

Person B builds a website on lovelygardens.com, on the banner, page title and text they refer to themselves as "Lovely gardens".

Person A takes exception to person B referring to themselves as Lovely Gardens on their website and insist they refer to themselves as Lovely Gardens Online, they also take exception to them registering the company name 'Lovely Gardens online' as they say it is to simmilar to their company name.

So:
Can Person B refer to themselves as 'lovely gardens' on their website, even if their company name is 'Lovely gardens online Ltd', and there is a company registered as Lovely Gardens Ltd?

As mentioned previously person A registered the company name 1 day before person B registered the domain names.

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screenprotectors - Eco Car Hire - tekkie - TAKE BACK CONTROL OF YOUR IPHONE 4 - Car Hire Scanner

Bailey

Registering a Company name gives you no rights in TM law.

Personally if this scenario applied to me ( and it has once or twice). I tend to question the assumptions that the complainant has made (In a very polite and accommodating way).

ie, If they wanted to protect the name surely it would have been advisable to have a TM application in place - or did you (they) consider that the generic nature of the term would not be granted in the classes that they proposed ??.

If your comfortable with your position - sow a few doubts in theirs, i'm still surprised just how ignorant individuals are regarding their rights under trading laws.

If you want to PM the name and the communications made I will give you - an educated laymens perspective - I don't profess to be an expert but I do enjoy business law.

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TheDon dot Com

Blake

This case has intrigued me, so much so that I called my lawyer ( major law firm ) about it. He confirms what has been said earlier in this thread, i.e. the company registrant has no automatic right in law to the domain name/s ( which are regged on a first come basis ) just because he registered a company name ( unless he has previously applied for a trademark in the specific business category which both parties intend to trade in and then he still has to prove that the domain registrant is ' passing off ' on the benefit of the company name ), he suggests a remedy might be as follows, the domain name owner offers the names to the other party at a price which reflects his loss of opportunity and costs incurred so far ( £x,xxx ! ) and then chooses a different domain name, or in my lawyers words, tells the other party to f*ck off !

Bailey

My thoughts entirely Blake but, I love retaining an air of reasonable superiority when dealing with spurious complaints.

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TheDon dot Com

namealot

Registration of a company doesn’t give automatic rights to a domain name…? Trademark/Company Registration are totally different...Tell them to go forth,

As long as there true company details are on the site they can pretty much do as they like (avoiding trademarks or illegal activities)

denchomsky

Hi.

Just update you all on this.

My Client decided not to bother getting into a fight with the other person, and said they could have the domain names once compensation was paid, (cost of registering new names, cost of me re-designing the site, cost of registering new company name, and old one) And I told him to tell them to make an offer on the domain names as they are worth what the other person is willing to pay.

The other party were heavy handed and I wish my client had told them to f**k off, but they couldn't be bothered with the hastle, and whats the point of two company trading under the same name anyway, someone had to do the decent thing.

Cheers.

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screenprotectors - Eco Car Hire - tekkie - TAKE BACK CONTROL OF YOUR IPHONE 4 - Car Hire Scanner

Bailey

A couple of points to bear in mind if the situation should arise again.

1. It's very common for two companies to operate under the same Company Name - even for the same sevices. you only need to look at the Companies house register to realise how often this happens.

2. Trade mark law is a whole different ball-game, again two companies can operate under the same TradeMark providing their in different classes (also distinctiveness starts to come into play)

Where I always come across the most ignorance, and I'm certainly no expert, is in descriptive terms. Lets use your example "Lovely Gardens" The chances of getting a trademark registered for that term in the classes that apply to 'Garden Services' Is a fat ZERO. You can't take ownership of a common term or word in its descriptive usage - Now if you where to add something to distinguish your trade mark application from the term "lovely Gardens" sometimes something as small as preceding with ie, "The Lovely Gardens" Now your into distinctiveness and would probably get granted. Obviously it can get messy and "passing-off" amongst many other criteria can come into play

And lastly you can take a common term and get a trade mark granted providing it's "distinguished" by being unrelated to its common usage - Hence "Orange" as a telecommunications service.

The problem most web-developers and domain holders encounter - Is the ignorance of the complainant to understand the difference between Company registration and Trademark registration and and therefore try to overstep their rights.

You register a Company to create a legal 'entity' - You register your trademark to create a legal 'identity'

Hope that helps

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TheDon dot Com

TinkyWinky

Companies house registered names DOES NOT mean a trademark or rights to a specific domain name. Period.

It may be useful in a defence if you have had a company trading under a certain name for a long period of time and then want to acquire a domain, but as with Emirates vs Emirates, if there is an unduly long period of time before you 'claim' rights to a domain, then it may well be counted against you.

Shame your client buckled Denchomsky - he/she had just as much right on the domain...

As an aside, where I have previously bought or acquired a valuable domain (£xxx,xxx value) where someone may have tried the "I'm a registered company and I consider that domain should be mine" route, I have always created a Limited company if possible as the exact domain name :

e.g. carbonhouse.co.uk Limited

Keep it active for a year, then put on the shelf and set as Dormant - thus protecting the exact domain name you own. A cheap route for a valuable domain.

Cheers
TW