Legal action being threatened

disruptive · 27-06-2006, 01:13:23 PM

I regged a .co.uk name back in June 2004. The name was not trademaked then in the UK as evidenced by the trademark database. However I now have a letter from the solcicitors of the company which runs the .com threatening legal action. They state that they have the trademake - which they do. However the trademark was filed *after* my registration of the name. they are then asking me to transfer the domain within 10 days or they will take legel action.

Does anyone have any thoughts or advice?

tifosi · 27-06-2006, 01:23:16 PM

because they own the trademark to a domain DOES NOT mean they own the rights to the domain. But how valid a drs against you... which is the only way they can get the domain from you depends on a number of things. And the onus is on them to prove this.
1. did you register the name to block or cause disruption to their company or use of the domain.
2. are you using the name as passing off against their company.
3. are you using the domain as a valid use? parking and web advertisement isn't pretty but it's a valid use.
4. is the name generic?

Solicitors like sending threatening letters. Makes then feel better about being sad little pringle wearing people. A decent IP solicitor wouldn't have done this. Not at least without a vlaid case first.

Check the nominet policy/procedure on the nominet web site
S

michaeltoth · 27-06-2006, 01:33:41 PM

Quote:

Originally Posted by tifosi

because they own the trademark to a domain DOES NOT mean they own the rights to the domain. But how valid a drs against you... which is the only way they can get the domain from you depends on a number of things. And the onus is on them to prove this.
1. did you register the name to block or cause disruption to their company or use of the domain.
2. are you using the name as passing off against their company.
3. are you using the domain as a valid use? parking and web advertisement isn't pretty but it's a valid use.
4. is the name generic?

S

Check out bounce.co.uk appeal and all this is thrown out of the window.
"parking and web advertisement isn't pretty but it's a valid use." not a valid use according to the expert decision.
everybody should now be worried

grandin · 27-06-2006, 01:40:16 PM

Hello Michael, thats funny just sent a PM to disruptive...funny how we both replied to him...anyway hows the bounce bouncing?

Lee

disruptive · 27-06-2006, 01:54:50 PM

1. I was using it generically.
2. At the time of reg, I had no idea they existed as a company.
3. Never tried selling it to them.
4. I do have namedrive ads on the site.

olebean · 27-06-2006, 02:00:27 PM

Quote:

Originally Posted by michaeltoth

Check out bounce.co.uk appeal and all this is thrown out of the window.
"parking and web advertisement isn't pretty but it's a valid use." not a valid use according to the expert decision.
everybody should now be worried

Can we get this clear.....

Michael are you suggesting that dispite Nominet suggesting that PPC is a business usage, and so you cannot opt out of whois, it is now suggested that it isn't a valid business usage?

If thats the case, thats as clear as mud!

OB

grantw · 27-06-2006, 02:04:36 PM

Quote:

Originally Posted by olebean

Michael are you suggesting that dispite Nominet suggesting that PPC is a business usage, and so you cannot opt out of whois, it is now suggested that it isn't a valid business usage?

OB

An excellent point olebean.

grant

olebean · 27-06-2006, 02:08:28 PM

??????????????????

invincible · 27-06-2006, 02:08:40 PM

Quote:

Originally Posted by michaeltoth

Check out bounce.co.uk appeal and all this is thrown out of the window.
"parking and web advertisement isn't pretty but it's a valid use." not a valid use according to the expert decision.
everybody should now be worried

Is the appeal out yet? It's not on Nominet's site.

tifosi · 27-06-2006, 02:09:43 PM

Quote:

Originally Posted by michaeltoth

Check out bounce.co.uk appeal and all this is thrown out of the window.
"parking and web advertisement isn't pretty but it's a valid use." not a valid use according to the expert decision.
everybody should now be worried

webservers & cyclone + others say differently. It's all in the expert decision and the information they're given. Yours was unique to a degree because of the non-response (mail/no-mail).

I hope the meeting last week that discussed drs have some impact on this, because litigation by companies who presume a right to the domain because they get a retrospective trademark in a certain class will be more frequent.

And I meant is the domain generic (e.g glosspaint & not dulux - sorry diying, all I could think of) and not being used generically.

S

27-06-2006, 01:13:23 PM	#1 (permalink)
disruptive Join Date: Jun 2006 Posts: 1,379 Classified Rating: 0% (-1) Domain Trader Rating: (100% / 4)	Legal action being threatened I regged a .co.uk name back in June 2004. The name was not trademaked then in the UK as evidenced by the trademark database. However I now have a letter from the solcicitors of the company which runs the .com threatening legal action. They state that they have the trademake - which they do. However the trademark was filed after my registration of the name. they are then asking me to transfer the domain within 10 days or they will take legel action. Does anyone have any thoughts or advice? __________________ SOCIALNETWORK.CO.UK\|QuoteSmart.CO.UK\|Photovoltaics.CO.UK\|APPROVAL.CO.UK\|Genetic Testing for Health - Xmas Special

27-06-2006, 01:40:16 PM	#4 (permalink)
grandin Join Date: May 2006 Posts: 1,273 No Classified Ratings Domain Trader Rating: (100% / 26)	Hi Hello Michael, thats funny just sent a PM to disruptive...funny how we both replied to him...anyway hows the bounce bouncing? Lee __________________ Buy To Let Mortgages Buy To Let mortgages Discount Mortgages landlord insurance student loan Commercial Mortgages Fixed Mortgages UK Hotels UK Holidays

27-06-2006, 01:54:50 PM	#5 (permalink)
disruptive Join Date: Jun 2006 Posts: 1,379 Classified Rating: 0% (-1) Domain Trader Rating: (100% / 4)	1. I was using it generically. 2. At the time of reg, I had no idea they existed as a company. 3. Never tried selling it to them. 4. I do have namedrive ads on the site. __________________ SOCIALNETWORK.CO.UK\|QuoteSmart.CO.UK\|Photovoltaics.CO.UK\|APPROVAL.CO.UK\|Genetic Testing for Health - Xmas Special

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27-06-2006, 01:23:16 PM	#2 (permalink)
tifosi Join Date: Oct 2004 Location: Lancashire Posts: 1,906 No Classified Ratings Domain Trader Rating: (100% / 9)	because they own the trademark to a domain DOES NOT mean they own the rights to the domain. But how valid a drs against you... which is the only way they can get the domain from you depends on a number of things. And the onus is on them to prove this. 1. did you register the name to block or cause disruption to their company or use of the domain. 2. are you using the name as passing off against their company. 3. are you using the domain as a valid use? parking and web advertisement isn't pretty but it's a valid use. 4. is the name generic? Solicitors like sending threatening letters. Makes then feel better about being sad little pringle wearing people. A decent IP solicitor wouldn't have done this. Not at least without a vlaid case first. Check the nominet policy/procedure on the nominet web site S

27-06-2006, 02:08:28 PM	#8 (permalink)
olebean Join Date: Nov 2005 Location: Rarotonga Posts: 2,240 No Classified Ratings Domain Trader Rating: (100% / 1)	??????????????????