4Media

I've had an email from a company asking me to handover a domain I have built a minisite on saying that the name is a registered trademark and to hand it over or face legal proceedings
Should I just give them the domain or do I have a leg to stand on?
If anyone has any experience of this kind of think or can provide advice on this matter via PM I'd be happy to share the details.

Edwin

Check if it is a trademark...
Intellectual Property Office - By mark text or image

If it is, is the domain name also 100% generic (i.e. a normal English word or phrase, like you'd find in the dictionary)?

If the answers are "YES" and "NO" respectively, then you're probably better off handing it over. Any other result, and it's down to your appetite for a fight...

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4Media

Thanks for that Edwin.
Just received a phone call from their solicitors. I dont have the time or the resource to challenge it so I'm going to have to hand it over. Gutted. This is the first real kick in the knackers I've had since getting involved in this game. Going to sulk now and feel sorry for myself

retired_member11

Don't do that just yet my fine fellow. What's the name?

accelerator

Feel free to PM me the name and I'll give you my opinion.

Rgds

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GreyWing

Depends what it is mate, if it's a good name get some advice off someone on here. If it's a blatant TM, then fire it back.

If you are really annoyed with them don't want to hand it over, surrender it back to Nominet instead.

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retired_member11

Someone been popping the sake again?

Without knowing the precise details no form of advice on here is valid. Feel free to PM me with the details.

4Media

- thanks for your replies fellas. I'm handing the domain over, its an error in judgement on my part so no point fighting it.
A lesson learned I put it down as.
The whole episode has motivated me to create a blog and I'll post the gory details on there. I guess I need to reg a TM free domain first though
Have a good evening all.
Alex



Follow me on Twitter "4media"

crabfoot

Well, I suppose it is too late now - but this is how I see it.

Handing it over costs you money - and it is obvious they wanted it.

If you were intruding on the area of trading covered by their trademark, it is a "gotcha", but, despite the legal threats, "rolling over" too easily is never a good idea.

A minimum of ceasing and desisting is required, so, if you are intruding on their trading area, you take the site down, or change it to dress-making, or something else that is nowhere near their trading area.

Now, just to give you an idea of their costs, the specialised solicitor will cost them at least £250 an hour, probably £600. If they have to take you to court, they want to win, so they might also employ a barrister - that's £625 an hour. To prepare a court case they will have about £2k of lawyer costs, not considering the work going on inside their office putting the evidence together. And remember, there are time considerations - Bill Gates made millions because it took years for the cases against Microsoft to come to court.

That telephone call to you probably cost them £125, and they consider that well spent because you are "rolling over".

They were remiss in that they did not register the name for themselves. They want it.

If it were me, I would offer it to them for about £1,200, which is about half of what it would cost them to recover it through the courts, and then reduce that a little during negociations - but not much.

This is business. Even the lawyers have an obligation to do things the quickest and cheapest way possible for their clients. You may not have a hope if it goes to court, but you owe it to yourself to squeeze as much as possible out of the situation.

Remember, those people are paid to intimidate you - but as professionals, they are unlikely to "send the boys around". They want the quickest, cheapest solution. You handed it to them, but you might have done better.

As an incidental matter, it occurs to me that it would be a good idea to call the lawyer's office and find out the hourly rate - or, if you are really cheeky, ask during the telecon!

4Media

yeh, but had I put up resistance and was taken to court as a result surely I would have left myself exposed to being prosecuted and subsequently fined?

I have another site which kind of falls into the same category, it's already earning $30-$50 p/m in Adsense and this week it hit page 1 of Google for the main search term/keywords.

What do you recommend I do with that site? Should I just keep the site ticking over or could that result in facing a fine for profitting from a site I now know is a reg TM?