.UK dispute

[a$hley]

Hi,

I have a DRS from Nominet.

The domain in question is a highly descriptive/generic domain.

I can't reveal the actual domains so will use an example generic domain called - mobilephones.uk

I am 100% certain a trademark has not been and cannot be issued for the domain.

The company who owns mobilephones.co.uk & .com is coming after me for the .uk on the simple grounds my site ranks higher their than theirs in search engines and that when they acquired their .co.uk & .com domains they also bought the unregistered rights for the generic phrase.

Their reason why the registration is abuse,

They bought the unofficial/unregistered rights to the generic phrase.
My website is passing off and confusing visitors with their site. (My site has different colours)
The owner who sold me the .UK inspired me to compete with the companies websites.

Both sites do the same thing, list mobile phones and display adverts/ deals etc.

You may now wonder how I aqcuired the .UK??

The owner of mobilephones.co.uk sold me the .UK in Jan 2015 and then sold .co.uk in Feb 2015 to the company. The company then went on to buy the .com in May 2015.

From what I have read in Google this appears to be reverse domain name hijacking attempt.

Your thoughts on this would be very much appreciated.

Thanks

 

[atlas]

Welcome to the community!

If the domain is truly a generic product name like used in your example, then you are on solid ground.

It's an interesting fact situation, as I think when .uk came out several people speculated that this sort of dispute would happen.

I'd go ahead and prepare a defence setting out what you have above. Ideally, retain a solicitor if you're not sure how to do this yourself.

Search engine rankings really have nothing to do with the dispute. Design of your website is irrelevant to a DRS.

1. The domain is likely confusingly similar to theirs, but I'd still put in an argument that it's not and cite Nominet material about why .uk is a new extension.

2. The domain is being used in good faith, as given that it is a generic product domain, the only practical use for the product domain is a website about the product.

3. The registration of the domain can't have been in bad faith, as they did not own their domain when you purchased your domain.

Owning a domain name in and of itself does not give a person any rights to the term.

 

[invincible]

The following is an extract from a solicitor familiar with the DRS:

"The DRS, unlike the UDRP, has the concept of registration *or* use in (essentially) bad faith. This means that while a domain name may be registered innocently it may potentially become abusive as a result of future use."

I presume the actual domain name has nothing at all to do with mobile phones and you're using mobile phones as a mere example?

I note you state the following:

"My website is passing off and confusing visitors with their site. (My site has different colours)
The owner who sold me the .UK inspired me to compete with the companies websites."

Different colours may not be enough to differentiate between your web site and their web site. I haven't seen both web sites to decide. Have you designed your web site to closely resemble theirs?

I find your statement about how the owner who sold you the .uk inspired you to compete with the companies websites rather odd. It seems as if you're suggesting that the complainant who is the registrant for the matching .co.uk and .com first launched their web site, despite you being the prior registrant of the .uk, and subsequently you setup your own web site on the .uk to compete with them? I don't understand how the previous registrant of the .uk and .co.uk could have inspired you to compete with the complainant. Why did you decide to acquire the .uk domain name in the first place and what possessed you to acquire the .uk only, and not the .co.uk as well?

Without seeing the two web sites at issue its not possible to deduce whether you're running a totally legitimate and uniquely styled web site using a generic domain name or using a generic domain name in tandem with a overly similar web site to pass yourself off as the complainant.

 

[invincible]

Design of your website is irrelevant to a DRS.

What on earth has given you that idea?

 

[a$hley]

Welcome to the community!

If the domain is truly a generic product name like used in your example, then you are on solid ground.

It's an interesting fact situation, as I think when .uk came out several people speculated that this sort of dispute would happen.

I'd go ahead and prepare a defence setting out what you have above. Ideally, retain a solicitor if you're not sure how to do this yourself.

Search engine rankings really have nothing to do with the dispute. Design of your website is irrelevant to a DRS.

1. The domain is likely confusingly similar to theirs, but I'd still put in an argument that it's not and cite Nominet material about why .uk is a new extension.

2. The domain is being used in good faith, as given that it is a generic product domain, the only practical use for the product domain is a website about the product.

3. The registration of the domain can't have been in bad faith, as they did not own their domain when you purchased your domain.

Owning a domain name in and of itself does not give a person any rights to the term.

Thanks for welcoming me and taking the time to reply!

 

[martin-s]

Fascinating case. Having launched .uk and unlinked it from .co.uk, Nominet and their agents have no choice but to confirm that the domains AREN'T confusingly similar.

Even though blatantly they are, and the whole .uk launch is a crazy shambles.

Was your site live and trading before theirs?

 

[invincible]

The fact it's a .co.uk and .uk is no more significant than if it had been a .org.uk or a .me.uk instead.

.uk domain names registered after the cut off date were never linked to matching third level domain names. Nominet's rationale, in part, was not to require registrants wishing to register a .uk to have to register another domain name they did not require.

 

[a$hley]

The following is an extract from a solicitor familiar with the DRS:

"The DRS, unlike the UDRP, has the concept of registration *or* use in (essentially) bad faith. This means that while a domain name may be registered innocently it may potentially become abusive as a result of future use."

I presume the actual domain name has nothing at all to do with mobile phones and you're using mobile phones as a mere example?

I note you state the following:

"My website is passing off and confusing visitors with their site. (My site has different colours)
The owner who sold me the .UK inspired me to compete with the companies websites."

Different colours may not be enough to differentiate between your web site and their web site. I haven't seen both web sites to decide. Have you designed your web site to closely resemble theirs?

I find your statement about how the owner who sold you the .uk inspired you to compete with the companies websites rather odd. It seems as if you're suggesting that the complainant who is the registrant for the matching .co.uk and .com first launched their web site, despite you being the prior registrant of the .uk, and subsequently you setup your own web site on the .uk to compete with them? I don't understand how the previous registrant of the .uk and .co.uk could have inspired you to compete with the complainant. Why did you decide to acquire the .uk domain name in the first place and what possessed you to acquire the .uk only, and not the .co.uk as well?

Without seeing the two web sites at issue its not possible to deduce whether you're running a totally legitimate and uniquely styled web site using a generic domain name or using a generic domain name in tandem with a overly similar web site to pass yourself off as the complainant.

The COMPANY is suggesting the owner

Fascinating case. Having launched .uk and unlinked it from .co.uk, Nominet and their agents have no choice but to confirm that the domains AREN'T confusingly similar.

Even though blatantly they are, and the whole .uk launch is a crazy shambles.

Was your site live and trading before theirs?

No - but looking at the websites, they look totally different, but offer the same service.

 

[a$hley]

They have said,

The Respondent's selection of the mobilephones.uk has not been arrived at independently.


The Domain Name was registered by the Respondent at a time when the COMPANY was in negotiations with the owner of mobilephones.co.uk.


The Domain Name is being used by the Respondent in full knowledge of COMPANYS Rights.


Furthermore, the Respondent has embarked on a concerted course of action clearly intended to frustrate COMPANYS ability to seek redress for the detriment that it is suffering as a result of the Respondent's use of the Domain Name.


COMPANY owns unregistered trade mark rights and associated goodwill in the mark “Mobilephones“ (the mark).

 

[invincible]

Without knowing the domain name at issue and seeing the web sites its likely a waste of time commenting because we can only best guess. If you post the domain name (ROT13 it if you wish) we might be able to give you a more accurate answer.

 

[atlas]

What on earth has given you that idea?

I was thinking of the UDRP, which requires both registration and use in bad faith. I see that the DRS test is slightly different.

 

[a$hley]

Without knowing the domain name at issue and seeing the web sites its likely a waste of time commenting because we can only best guess. If you post the domain name (ROT13 it if you wish) we might be able to give you a more accurate answer.

Why do you need to know the domain? Is it simply to see if the websites look different?

 

[atlas]

I find your statement about how the owner who sold you the .uk inspired you to compete with the companies websites rather odd. It seems as if you're suggesting that the complainant who is the registrant for the matching .co.uk and .com first launched their web site, despite you being the prior registrant of the .uk, and subsequently you setup your own web site on the .uk to compete with them? I don't understand how the previous registrant of the .uk and .co.uk could have inspired you to compete with the complainant. Why did you decide to acquire the .uk domain name in the first place and what possessed you to acquire the .uk only, and not the .co.uk as well?

My understanding is that is the applicant's allegation, which has not been admitted.

 

[atlas]

Why do you need to know the domain? Is it simply to see if the websites look different?

I would not recommend posting the domain in a public forum.

 

[a$hley]

I would not recommend posting the domain in a public forum.

I agree I wont be.. I thought I gave enough info to get some opinions..

 

[invincible]

Why do you need to know the domain? Is it simply to see if the websites look different?

Although you've said it is similar to "mobilephones" but isn't actually "mobilephones", not stating the domain name at issue makes it difficult for us to give an appropriate answer. In your opinion your domain name might be similar to "mobilephones" (or whatever) but in ours it might not be.

If it genuinely is something like mobilephones and the websites are entirely different, what have you conceivably got to worry about?

 

[a$hley]

Although you've said it is similar to "mobilephones" but isn't actually "mobilephones", not stating the domain name at issue makes it difficult for us to give an appropriate answer. In your opinion your domain name might be similar to "mobilephones" (or whatever) but in ours it might not be.

If it genuinely is something like mobilephones and the websites are entirely different, what have you conceivably got to worry about?

Nominet say not to disclose specifics about the complaint. I have not said the domain is similar to mobilephones, I have said the domain is as 'generic/descriptive' as mobilephones.

 

[invincible]

Nominet say not to disclose specifics about the complaint. I have not said the domain is similar to mobilephones, I have said the domain is as 'generic/descriptive' as mobilephones.

That's what I meant by similar. However your opinion may not be shared by some of us.

 

[a$hley]

That's what I meant by similar. However your opinion may not be shared by some of us.

Is mobilephones.co.uk a generic/descriptive domain? YES or NO

 

[invincible]

Is mobilephones.co.uk a generic/descriptive domain? YES or NO

Of mobile phones it is. However you're relying on us to accept your competency and we don't know you. You might be a loony.

If you're confident that the domain name is absolutely generic, the web sites are dissimilar and you've not done anything else you probably shouldn't have done, what was the reason to post here rather than laughing at the complaint and getting on with whatever it is you usual do?