GingerApple

Hi,

Just wondering, if something is say TRADEMARKsupplies or genuineTRADEMARKparts, can the owner of the initial trademark take the domain?

Thanks,

Will

Bailey

The short answer - Yes, Without a doubt.

You require the holders permission to use a TM in relation to their products or services.

There is a reason Trade Mark Law is an area of study and practice in it's own right. Your question is far to basic in its nature to give any definitive answer. It's possible to touch on 'Casual reference' Critique etc etc and not have a problem. The key to remember is that a TM holder is 'Obliged' in Law to defend their TM. 'Dilution' can actually be a defence for a non-authorised use. ie the Mark is so diluted by usage that it no longer deserves protection.

__________________
TheDon dot Com

GingerApple

Ok, I think it's best to avoid for now. Thanks for your help.

oka7domain

yep even Appl.com have lost on court trials against "you know who [the half eaten fruit ]" just because they/appl.com accidentally or not, put a link/advertising to the "you know who" products. Appl can be refered to application, not the fruit imho but still... They lost It. just like the Beatles did, against the same fruit on Their studio/recording name cmiiw

__________________
CCTLD:paymentcenter.co.uk-jurisdictions.co.uk-SUV.ws- Golds.be- 322.US
International Web Identities? send.pmto.me

bazwalt

Hi all,
I bought the domain names and set up a site in 2004 for a local market at the request of the market owners.."themarket.co.uk" (not the correct name!!). I also have the .com pointing to the .co.uk.

In 2009 the market owners changed. They used "the-market.com". I was never approached or consulted about my name/site. My site gets plenty of hits, theirs a whole lot less.

I have a stall at the market and want to open another stall but the owners are saying NO unless I sell/give them my domain name(s) as it appears to be causing them problems!!

What should I do? Where would I stand legally? Surely this is tantamount to blackmail!!

If I say no then they would possibly throw me off the market for good.

I really could do with some sound advice.

Thanks,
Barry.

Bailey

Bazwalt - from the brief synopsis given, you actually appear to be in a strong position. A lot - as always comes down to the finer points of your original agreement with the original market owners. If it's concept and build is as casual an arrangement that your posting suggests, then take comfort in the fact that someone feels strongly enough to what appears to be 'almost' an attempt at extortion.

The way forward as always tends to be compromise. If I was you I would move this forward bearing in mind the following pointers:

1. Are you comfortable in both your own knowledge and position regarding the original domain and agreement that gave rise to the site - I usually find that people let can sleep right in knowledge - invariably have right on their side (that dosen't include those that choose to ignore the basics in law)

2. Check the on-line and freely available Trade-Mark databases to clarify any pre-existing holder ( I doubt you will find there is a TM)

3. Move forward in a position of confidence and strength - I can't see that holding the domain has any particular great advantage to you as a stall-holder within this market ( against a collective position). There undoubtably is a consideration of the other stall holders to be aware of

4. What would give you satisfaction (and due reward) for the work that you have done and the value of the domain in this context

5. Both parties appear have something to gain in this particular set of circumstances - which seems to me to be far too good an opportunity to waste

In this instance, if you want to discuss it from a laymen point of view send me a PM and we will have a chat

__________________
TheDon dot Com

Bailey

Hi Barry I've sent you a compehensive PM reply - more of a best-outcome rather than from the legal position - hope it helps

__________________
TheDon dot Com

richrf

Here is a good synopsis of trademark issues that was given at the DomainFest Conference today. Note the three main points:

1) Confusingly similar
2) Whether there is legitimate use
3) Whether the domain was registered in bad faith

I've followed some of the recent cases that are publicized on some blogs and sometimes it is difficult to understand how different panels are interpreting these three points. Any decision by the panel can be appealed to in court.

Hope this helps.

bazwalt

Hi Guys,
In particular Bailey & Richrf.
I've read all the responses and have made my decision.
I'm going to undertake discussion with the market owners in the hope of coming to a suitable resolution for both of us.
Yes, I'll have to give up the domain names, I'm not looking for big bucks.
It's the codicils which may be attached to any transfer which I need to resolve!!
Thanks again for all your help.
Regards,
Barry.

richrf

Good luck with your negotiations. Be sure to let them make the first offer if there is any talk about money.

Rich