Domain Manage

Owning a trademark domain - but not using

Discussion in 'Domain Name Disputes' started by TinkyWinky, Mar 20, 2008.

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  1. TinkyWinky United Kingdom

    TinkyWinky Active Member Acorn Supporter

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    Just want to see if anyone can clarify my thinking...

    I recently picked up a couple of domains that contain a well known trademark (not a generic word), I have not parked these nor have I put a holding page on or anything (been a bit lazy) so I have made no money and not been "trading off" / "passing off" the domain names.

    The company approcahed me and told me to give them back - which I said fine, for £300 to cover all associated costs ie. £150 each (which is reasonable as that is the money I would lose from not parking ;) )

    They have come back with an aggressive letter saying that I am in breach of their trademark and I have to hand back the domains.

    I hate large corporations who assume they are always in the right, so I now fancy a bit of fun - but want to check first before i mail them back as I am not so bothered to incur big bills via DRS or court etc..

    Despite owning the domain, I am not using - therefore can I actually be in breach of trademark?

    I know you are probably thinking - so why own if you are not going to do anythgin with - what's the point, but I am a stubborn ba***rd and would rather use the situation to make a point if they are not going to pay me.

    Can anyone help with legal info or has has a similar position?
     
  2. Domain Forum

    Acorn Domains Elite Member

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  3. aZooZa

    aZooZa Well-Known Member Exclusive Member

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    They might have in-house lawyers who will give you a REALLY hard time. Dump them. If they have the TM; they 'own' them intrinsically anyway.
     
  4. stevebrowne

    stevebrowne Active Member

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    Depends on the trademark. Apple owns the word Apple in relation to computers, but not music thanks to Apple records who were around a little bit longer than Apple Computers. Also Apple.co.uk is someone else entirely.

    If it's an exact like (using above example) appleipod.co.uk or appleimac.co.uk then I'd give them up now.
     
  5. mat United Kingdom

    mat Well-Known Member

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    Not worth it if its not a generic type domain name. You dont have a leg to stand on and for a couple of hundred pounds profit at best if you do manage to sell it to them its a waste of time and hassle.
     
  6. paulleahy United Kingdom

    paulleahy Active Member

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    At the first and hopefully NOT the last DomainFocus event a lawyer give a talk about trademarks and domains and said as long as you are not trading in the same product as they are you are allright i havent got her details but someone here should so i say fight them dont give them back and please keep me posted on how it goes on good luck
     
  7. mat United Kingdom

    mat Well-Known Member

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    Well thats bullshit right there
     
  8. paulleahy United Kingdom

    paulleahy Active Member

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    What is hopefully NOT the last domain focus event or the lawyer at the event
    Im the one on the right
     
  9. retired_member3

    retired_member3 Retired Member

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    I wouldn't argue. Just delete them then at least they have to register them rather than you having to transfer etc...
     
  10. mat United Kingdom

    mat Well-Known Member

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    Simply not trading in the same product doesnt make it automaticly alright to hold/use a trademarked domain name
     
  11. paulleahy United Kingdom

    paulleahy Active Member

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    Where is that lawyer now so one here must know her
     
  12. woopwoop United States

    woopwoop Well-Known Member

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    This is the exact same advice I'd give.
    When I registered my first trademark I found out loads about how I'd be protected - great experience.


    Also interesting is that there's registered trademark and unregistered trademark. Both offer protection with an unregistered trademark automatically given after you start trading with a name in a particular industry/ies. (registering only makes it easier to prove that you had a name established on a recorded date + having it registered deters people more from using it)

    So this is another thing to look out for - using a name that's out there being used (though not registered) - the other person using it still has unregistered trademark protection.


    In summary, if you can't think of a legitimate use for the domain that doesn't infringe the other persons trademark, then give it up.
     
  13. TinkyWinky United Kingdom

    TinkyWinky Active Member Acorn Supporter

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    Ahhhhhhhhhhhhhhhhhhhhhhh

    £200 in the bank says done deal and lots of beer money.

    My advice (FWIW)

    i. play innocent to start with when they contact you

    ii play nice for follow up letter to say you've spent time and money on business plan

    iii. play insistent on innocence and wanting to save everyone grief over a 'genuine' mistake on last letter

    All the above took about 30 mins tops, regging took £10 and 2 mins so at £100 an hour for my time and charges I still win handsomely :)

    Probably lucky though :| and not a simple way to make too much cash!!!

    //TW
     
  14. golddiggerguy United Kingdom

    golddiggerguy Well-Known Member

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    People should look at it from all angles.

    What if you just developed, marketed and spent 1000's on advertising a brand new product and someone bought the hyphenated version of your domain (or similar).

    They banged a shite site with loads of naff ads and was making money off your new products name.

    Not good ! :rolleyes:

    I have just reg'ed a Trade Mark and would be fuming if that happened to me. So you should look at both sides really and put yourself in that situation.

    Your guys maybe thought, get it while they can as it's just a sitting time bomb waiting to be abused.

    2p
     
    Last edited: Jun 3, 2008
  15. TinkyWinky United Kingdom

    TinkyWinky Active Member Acorn Supporter

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    Why didn't you/they register it? Would be my first question. Sorry with prices being so low there is no excuse why companies do not register the hyphenated or other conceivable terms associated with their trademark. That is laziness, naivety or arrogance.

    Remember a trademark is only valid for the classes you register it with anyway and in this case I had quite a few other clases where I could have exploited completely legally that clause.

    That's a bit harsh GDG ;)

    In essence I fairly and squarely registered a couple of domains, was going to put on services that would have benefited their brand and ultimately people that are their members, and ok, yes would have made some money myself but not out of promoting competing brands or services.

    This is where, IMHO and experience, the vast number of companies need to

    a. be smarter and wiser in their approach to any online promotion
    b. spend a small amount of money to protect what you have already invested time and money on
    c. admit they don't know everything so enlist the help of external 'professionals' who do (which they don't very often)
    d. stop and think about the positive aspect of affiliates using the domains, rather than assuming it will always be damaging (but set out rules legally of course)
    e. put up or shut up - rather than whining and using legal strong arm tactics.

    Of course there are always the exceptions to every situation!!

    GDG - you registered the hyphenated of yours :| ?
     
  16. golddiggerguy United Kingdom

    golddiggerguy Well-Known Member

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    Hypothetically..... but yes businesses should but don't.

    If someone reg'd a domain before a company even was incorporated then that should go in the favor of the domain holder IMO.
    Afterwards then it should be for a totally different product or service. (not leeching a brand)

    Companies can't reg all possibilities e.g. Orange.co.uk would have to reg domains with mobile,mobiles,broadband,phones,mobilephones,cheap,deals, and so on and on and on. then also the hyphenated ones too.
    So it is a little impossible to cover all bases we'll all think of a slightly different version we could use some how.

    For example 1orange.co.uk is available. ;)


    I reg'd .com .co.uk .net and hyphenated. but people could quite easily add stuff and cover other possibilities.

    I do have a few TM domains myself but do donate any monies made from it to a local charity now I know what shite it can cause. :-D
     
  17. holgate

    holgate Active Member

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    We once spent....

    £14,000 over three years with a trademark and patent firm, the simple fact is if your not trading within the same market and confusing the public with similar brand names your ok. However........should you find yourself in court at the hands of a dopey judge against a powerful legal team the chances are they will make a case for wresting your domains from you.

    That fat one trick pony stavros from easyjet has been making a mockery of trademark law for the last five years and now virtually owns the word easy which is not how the law was originally framed. Further reading



    My golden litigation rule....the person with the deepest pockets always wins.

    PS. We fought and defended an action brought by ELF oil against one of our electro-luminescent-film products which we branded Elf. Our QC rocked, then emptied our bank account.:(
     
  18. suzi United Kingdom

    suzi Active Member

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    Hi - Just interested to get a bit more info.

    How 'contained' was the trademark? Did it make up most of the domain name? All of it?

    How big is the brand?

    Would your 'service' have relied on referrals to the brand or someone selling the brand's products?

    Why hadn't they registered 'your' domains? Or are there vast numbers of domains that could be registered? Or were you quick off the mark? ;)

    Do you know what brought you to their attention?

    Suzi
     
  19. holgate

    holgate Active Member

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    What Suzi said...

    Due diligence is also part of the efficacy involved in trademarking. You went light in my opinion.
     
  20. newbie United Kingdom

    newbie Active Member

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    my two cents

    My friend has been approached by a few very large companies concerning some of his domain names - usually aggressive letters demanding large sums of money and of course the domain names too. This happens around every 4 months.

    Be aware that most large companies hare more cash to throw at their legal team than you do so it's not about what's right, but it's about what you've got time for.

    My friends policy is this...

    1) register what you like, if it looks like it may be profitable then he's up for it
    2) If a large firm gets upset, he stops parking the domain ie. He does not dig the hole any further
    3) He's tried asking these large firms for money, it never goes down well so now he doesn't bother

    Time is important. To preserve valuable time...

    1) he does not waste time responding to the incoming letters
    2) he contacts nominet to delete the domain names

    The threats coming in can be quite convincing. Just drop the domain names and that's always been the end of the problem for my friend :)

    Regards,

    Newb.
     
    Last edited: Jun 5, 2008
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