Domain Manage

Brand name domain drop

Discussion in 'Drop catching Domain Names' started by mdb, Sep 25, 2011.

Thread Status:
Not open for further replies.
  1. mdb Denmark

    mdb Member

    Joined:
    Jun 2006
    Posts:
    49
    Likes Received:
    2
    There's a product name of brand which will be dropped over the next month. It's not high profile, it's niche and doesn't pull in loads of searches but still worth having...

    The licence owners for the brand (and product) are letting it drop. What are your thoughts on registering it? Surely it would make a dispute on their part seem pretty weak?.. The only problem is there's no disputing that this product name belongs to this brand so it would make it equally as difficult to defend.

    Does anyone have any experience / thoughts on this. Providing I don't defame the product / brand, what's the worst case scenerio if I did reg it, it would get taken off me?

    Thanks in advance.
     
  2. Domain Forum

    Acorn Domains Elite Member

    Joined:
    1999
    Messages:
    Many
    Likes Received:
    Lots
     
  3. wb United Kingdom

    wb Well-Known Member

    Joined:
    Mar 2009
    Posts:
    2,072
    Likes Received:
    34
    Just because they drop it, it doesn't mean a dispute on their part in future would be weak. If as you say there is "no disputing that this product name belongs to this brand", then you are likely to lose it. Worst case scenario would probably be going to court and having to pay costs and damages for breaching their trade mark. If it's a registered trade mark, then you could find yourself in difficulty under criminal law too.

    Best advice would be to not register it. I've seen a few 'official' niche websites on trade mark domains operated by publishers though, so if you think it's really worth having then get permission from the relevant company first.
     
  4. mdb Denmark

    mdb Member

    Joined:
    Jun 2006
    Posts:
    49
    Likes Received:
    2
    I've never heard with these disputes under criminal law. I've had a few civil, how shall I say, disagreements and it's ended up where I just hand over the domains... And I suppose that's the way I see this, I wouldn't argue it in a nominet dispute, I'm just saying if the company were to get in touch with me first first (they have in all the cases I've had), I have an argument and good reason to say "I determined you didn't want the domain anymore, you had 3 months to renew it, but anyway here it is."

    I would not damage the trademark in anyway - I'd ONLY be promoting it.

    I'm not going to put loads of money into catching it, it's reasonable to think I may get a letter through my door. I might even wait to see if I can hand reg it, in which case someone else will catch it anyway.
     
    Last edited: Sep 25, 2011
  5. accelerator United Kingdom

    accelerator Well-Known Member

    Joined:
    Apr 2005
    Posts:
    7,397
    Likes Received:
    109
    All I can say is that personally I don't bother with other people's Trademarks, I don't think it's worth any potential hassle and I'd rather use generics.

    If I am going to promote a brand, then I just use a page on one of my sites. The only thing I'm losing is the exact match domain boost, but I can live with that.

    Rgds
     
  6. stellar73 United Kingdom

    stellar73 Active Member

    Joined:
    Aug 2011
    Posts:
    778
    Likes Received:
    11
    I've got a related question to this so hope no one minds me using the same thread.....

    A few weeks ago I caught 'sceneit' (co.uk) with the intention of using it for a photography site.

    I've since discovered that Mattel have a game of this name (except that it has a question mark tagged on the end) and they appear to have the term (including the question mark) trademarked....or at least im assuming they have it trademarked as the entries on their whois refer to a company called 'Mark Monitor' who presumably do some sort of tradmark protection for them......The drop which i caught didn't come from them however but from a performing arts company who had been using the name for years though Mattel appear to own a number of extensions including .com, .de, .eu, .uk.com

    I'm now not sure where I stand if I want to use this name. Obviously my purpose would be completely different so would I be in the clear to use it?

    Any advice appreciated
     
  7. accelerator United Kingdom

    accelerator Well-Known Member

    Joined:
    Apr 2005
    Posts:
    7,397
    Likes Received:
    109
    UK Trademarks relate to particular business classes / activities. If the activity you want to use the name for is not covered by their Trademark, then potentially you could be OK to use it. Just take a look at the detailed wording of their Trademark at ipo.gov.uk to see.

    Rgds
     
  8. stellar73 United Kingdom

    stellar73 Active Member

    Joined:
    Aug 2011
    Posts:
    778
    Likes Received:
    11
    Thanks accelerator, that's v helpful! I've just looked it up and they have two classes registered, neither of which conflicts with what I want to do with the name, brilliant, didn't realise it would be that easy to find out!
     
  9. Bailey United Kingdom

    Bailey Well-Known Member

    Joined:
    Apr 2009
    Posts:
    3,427
    Likes Received:
    73
    It's always worth familiarising yourself with the basics of TradeMark law. From experience I can tell you that many TM holders themselves are unfamiliar what their rights are.

    I'm slightly concerned that the original poster 'mbd' has rightly pointed out that he has some experience from previous disputes - That almost indicates a "Sailing Close to the wind" approach overall. And to my mind if your going to operate in these areas you need to be a little bit more familiar with TM law in general.

    In the first instance I believe the "Attempting unauthorised profit or trading from anothers TM rights" is going to be the prong of attack - If one should materialise.
     
  10. philipp United Kingdom

    philipp Active Member

    Joined:
    Feb 2005
    Posts:
    639
    Likes Received:
    16
    I think in practise things can get more complicated than accelerator describes, as there can also be subjective consideration of how well-known a trademark happens to be, and whether your use of a substantively similar name constitutes dilution. But that's something for lawyers to wrangle over whilst charging you £££ for the pleasure :)

    (IANAL, YMMV)

    P.
     
  11. Bailey United Kingdom

    Bailey Well-Known Member

    Joined:
    Apr 2009
    Posts:
    3,427
    Likes Received:
    73
    Indeed - It's a very subjective area, I have to add though that once you dig case-law you do find Very "Common sense" outcomes prevail in most instances.

    OK I got the IANAL - enlighten me on the other one please. :p
     
  12. mdb Denmark

    mdb Member

    Joined:
    Jun 2006
    Posts:
    49
    Likes Received:
    2
    In the other instances I refer to I wasn't using the domains in the same way I am thinking of using this pending drop, but I know that would have little impact on a dispute.

    I know if a dispute arose either with the brand owner personally or through Nominet I would hand it over immediately, which is why I wouldn't throw money at it or a lot of time. I think the brand owner would find it difficult (not to mention a bit of a pr disaster) to try and push for anything else. As I said I'd ONLY promote the product.

    I'm reasonably well up on domain trademark law, I had my fair share of experiences back in the day and there's no way I'd go back there, but as it's been mentioned, not everyone who owns a trademark understands what they're entitled to. This brand I'm talking about, there's a chap who's targeted half a dozen of their products' names and he apprears to have had the domains for several years... although they do just resolve to a holding page.

    Incidentally, in my experience there's little thanks that comes your way in pointing out to a registrant that their domain is about to expire.

    Every corporation is different.

    I had a domain which included a brand name in it. They fabricated a story to make out I was tarnishing their brand and they tried to sue me. I ended up handing over the domain to avoid litigation and it closed my business down overnight - my fault, I accept that. What aggravated me though was that my business ONLY sold, and by proxy promoted, their products. After taking it off me they let it go to a 404 and then within a year they let the domain drop... It's available to register now and there are still a handful of banklinks from 10 years ago still active...

    So, it all added up to them putting me out of business, which stopped me buying and selling THEIR products. No one gained anything, maybe you could argue they were in control of 0.0000001% of their brand for ten months and they probably spent several grand for the pleasure. Today their brand is struggling and they were way out in front a decade ago... Their competitors who are now market leaders did little in terms of domain chasing, yes they've done some, but they've let 1000s of domains carry on... Why? I think it's simple, they're happier with people keeping their brand in the public eye so long as it doesn't defame it. Free publicity.

    In another instance, an acquaintance of mine was doing the exact same process as I was doing except they were working on another brand. When the brand found out, yes they were initially hostile, but they eventually chose to work with the owner even though they could have taken the domain off him no questions asked. Two years later the domain owner was a multi-millionaire and his site became a main sales channel for the brand online. He wasn't even really internet savy, he just negotiated well and once he knew the opportunity was there he set about making himself savy. It was a perfect example of a win / win.

    Back to the domain that's dropping soon... IMO, the UK distributor is doing a pretty lame job as far as promoting the brand online and they've had years to sort it. In my view the brand owner could choose either of the two approaches.

    Apologies for the long post, just though it might be of interest.
     
    Last edited: Sep 25, 2011
  13. philipp United Kingdom

    philipp Active Member

    Joined:
    Feb 2005
    Posts:
    639
    Likes Received:
    16
    Your mileage may vary :)

    P.
     
Thread Status:
Not open for further replies.

Share This Page