Advice needed over domain

kryptix · Aug 8, 2013

Hi guys,

I'll start off by saying that I have dabbled with domain buying and selling for a few years now but I'm not sure what to do with a domain I have and hopefully some of you insightful people may be able to advise me!

When I first got into the game a few years back one of the first domains I ever registered was a .co.uk domain which had been deleted from a previous registrant and is heavily linked with a large UK retailer in the FTSE100.

I am a bit unsure whether it would be construed as a trademark (as my domain has an "s" at the end where the registered trademark on the ICO website doesn't). Anyway, I am unsure with what to do with this domain.

I would be happy to sell but I know the whole situation with potential trademark conflicts and I don't want to be involved in anything to do with lawsuits. I don't really want to be a cybersquatter and I don't really have any use for the domain.

As much as I want to let it expire, I just can't believe I am in ownership of such a well known brands domain. They have currently registered some of the other TLD's for the domain but they have never contacted me regarding the .co.uk, possibly because it is just an empty page with no content.

Any advice would be great, I admit it was a noobie mistake to make at first but just wondering what the best thing going forward is in your guys opinion as I accept you probably know more on the subject than I do!

Thanks for any input

PaulGregory · Aug 9, 2013

On the one hand it's different to the trademark, on the other hand it's apparently only valuable because it is identifiable as the brand.

If it was something like Tescos.co.uk or WHSmiths.co.uk (it is not either) then you're talking about a name that is popularly associated with the retailer. Practically all retailers are (if they don't already end in s) also referred to with an S on the end, and it's difficult to argue that you had some other use for it.

If it was a trademark associated with a retailer but not that retailer's actual name, such as Georges.co.uk (again, it isn't that) then it somewhat depends on whether there are other meanings for the name. A trademark is often only registered in a few categories. If George is only TM for clothing and bedding, you can use the name for consumer electronics, for example.

You say they haven't contacted you. Have you been displaying your address on the WHOIS throughout the reg period?

You should contact them with caution.

If you go in seeking £££, they'll get their solicitors onto it. So if you're considering lapsing it anyway, you may as well try to get a few quid out of it.

Personally, I'd contact the brand owner and say that you have the domain. You intend to expire it, as it suffers from confusion with their brand, but you fear that others will grab it when it becomes available. To avoid that, say you're happy to transfer the name in exchange for the fees you've incurred since registration (add up £6 for each renewal). Not a lot of money, but it's something.

Jamie101 · Aug 9, 2013

Paul, I really don't think it's a good idea for the OP to contact the brand, unless they want to potentially find themselves in a lot of trouble.

Contacting them is basically like saying "I have a domain that you own the trademark of, so you need it."

It's even more silly to do this just to cover the costs of renewing the domain, not worth the risk of them bringing you to court over trying to get them to pay £xx or something.

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PaulGregory · Aug 9, 2013

It does rather hinge on whether the "s" makes it generic. For example, Top Shops is a rather different beast to Top Shop but Tescos is obviously Tesco.

ASDAS would be a grey area. Is it just a bunch of letters?

Yes, there's a risk of legal action at £xx but surely if it's less than £xxx it's cheaper than getting solicitors involved.

Indeed, if "a few years back" means 2009 I wouldn't bother. 1999, yes.

I am influenced by the assumption that if the OP simply wanted to lapse it and get no money at all, they wouldn't have created a username and posted their query.

AssetDomains · Aug 9, 2013

Hard to say if their brand is a made up word like Microsoft, Samsung then your potentially in trouble if there brand is based around a generic word apple, orange etc then you might be OK need more info to give proper advice feel free to send the name by private message.

lee · Aug 9, 2013

Contact them and tell them its available for £500 - assuming that the DRS cost is still in the region of £650 - They will pay if they want it as its a lot cheaper to send you a cheque than instruct lawyers to follow through a DRS.

I wouldn't make a habit of registering them and then announcing it on here tho, they dont like that kind of thing here.

foz · Aug 9, 2013

If the domain in question only has one potential suitor then its not worth much. Don't approach them. Cancel it or just let it expire.

stellar73 · Aug 9, 2013

Foz is right, unless the s does make it generic the only thing worth doing is cancelling it. Dont really see the point in contacting them to try and get a token amount to cover your renewal costs as, even if the risk is small, its still a risk and not really worth taking for the sake of £xx

If you do decide to contact them I would simply do it as a courtesy to let them know youre cancelling the domain and that it will be FTR

Philnorris · Aug 9, 2013

If you offer the domain (No matter how you wrap up the reasoning behind contacting them) to the TM owner you could land yourself in a heap of sh_t.

They may throw money at lawyers to make an example of you.

There is a way round it, someone else contacts the TM owner and lets them know he was contacted by the registrant who was looking to sell it. Would there be an issue in purchasing the domain. The mail to the TM has the offer details in the correspondance so they can contact you directly. You have not tried to sell to them and are in the clear. This should only be used if you feel that you are not infringing. If you are get rid of it and save yourself the stress.

Simple rule of thumb, if you think you are infringing a TM leave it alone

PaulGregory · Aug 9, 2013

kryptix said:
They have currently registered the .com, .net, .info, .co and .org of the domain but they have never contacted me regarding the .co.uk, possibly because it is just an empty page with no content.

This does show that they have an interest in the brand+"S", but do you know for certain whether they regged them, bought them, or sued people for them? (I'd still like to know if your contact details were ever public or guessable - do you pick up mail@[brand]s.co.uk?)

It could be worth checking the dates and histories of these domains (and other brands owned by the company) to see whether the Company was always the registrant.

Also, if your reg date is after the .com and .net dates then that would weight things towards cancelling quietly.

kryptix · Aug 9, 2013

Conclusion

Hi guys,

Firstly thanks for all the replies I knew I'd get honest and helpful responses from some real experts! As a result of reading through them I have decided the best course of action is to cancel the domain. Without the "trademarked" business the domain would be useless so I'll take the small loss. You've confirmed what I thought and it's just not worth the risk.

Thanks again!