Urgent Advice Needed - Domain/Trademark Dispute

[simon5ykes]

Apologies in advance for the length of this message - wanted to try and include everything!

Hi all,

I'm pretty sure having scanned a couple of the other threads on here that I know the outcome of this but I thought I'd run it by the experts first before I do anything.

I saw an advert on TV last week for a new financial claims company, lets call them bonkersclaims.co.uk - long story short, when I tried to view the site I discovered I had typed a slightly different address - lets say bonkerclaims.co.uk (without the 's') and the domain hadn't been regd. I thought to myself that if I had made that mistake, potentially, so could a lot of other people, so I regd it.

I was under the impression that I could not directly approach the company in question and offer to sell etc, so after a few days I went down the route of becoming one of their affilliates - they seemed really keen on the telephone but low and behold, I have today received a lovely letter from their Trademark Attorney reading me the riot act and threatning commence proceedings and/or go down the DRS path.

Within the letter thay have stated that;

(a) they own the domains; (slightly changed just in case!)
bonkers.co.uk
bonkersclaims.co.uk
bonkers.com
bonkersclaims.com

(b) they have 2 registered trademarks for; (again, slightly changed)
bonkers (word: two in series)
bonkersclaims (word: six in series)

They have very kindly included some domain transfer forms and a nice little contract for me to sign saying that I will never register another domain with the word bonkers in it.

Now I don't mind at all handing the domain over if it's just going to bring me uneccesary grief, but I was wondering what the state of play is with the trademarks as they dont seem to have one for my spelling - are they using scare tactics (as its very close to their trademark)?

The thing is, my domain could also be a different spelling of bonquer (I hope your following this) which I'm guessing could change things? Anyway, any help or advise would be greatly appreciated - I have to respond by Fri 11th April.

For those that still haven't managed to work out what the actual domain is, PM me and I'll send you the details.

Thanks again,

Simon.

 

[smokin]

Bit of an odd one, you would be profiteering from their name (or close similarity) which is trademark infringement however it is for their benefit (as one of their affiliates) ..

I would suggest reading the small print as one of the affiliate schemes i have forbids the domain used for the affiliate site to have any of the words of the company name .. a little odd in some ways but i can see where they're coming from .. check it out anyway and see what it says it migh be this that has upset them..

 

[woopwoop]

Trademark infringement and passing off

You could get in a lot more trouble than just trademark infringement. You could get in trouble for 'passing off' even if you are one of their affiliates.

A bit like me opening a burger restaurant and calling in McDonaldos

Certain members of the public (let's face it probably the elderly) would be confused and believe that they are eating a McDonalds Burger. If they get ill or have any other bad consequence this will reflect very badly on McDonalds. Also as the owner of McDonaldos I would be profiting from the investment in the brand that the real McDonalds had put in.

I think the similarity hold's true with your claims company.
You would be misleading consumers by acting as an affiliate - they could think that you're the real deal if your name is so similar.

Passing off is a much more serious offense.

Also regarding the simple trademark dispute, even if the domains are different spellings, and they didn't register your spelling as there trademark, you are still infringing on their rights if the name covers there industry and is confusingly similar to their name (even if when spoken it's confusingly similar).

If you don't want to fill in the forms (and I don't know if they're trying to get you to pay the transfer fee) - but I would just contact the company I registered the domain with and ask them to delete it immediately. Once you see it delete in the whois, contact the solicitors or whoever sent you the letter and tell them that you have deleted the name so they can register it themselves if they want and you will not register similar names in future.

That should be good enough (without the need for you to sign anything or even transfer it) - just delete it.

On a side note, if you have any other domains like this (for other companies) you shouldn't join their affiliate schemes and use it, and be careful about posting your plan on forums like this - solicitors are know to search for stuff like this to make their case against you - I've even read where peoples msn messenger transcripts have been used against them (after being entrapped by a potential buyer).

Second side note: I think the only time when I have seen half a trademark being used in a domain, in an affiliate type way is in a "city"-"car brand".co.uk way. For example LancasterBMW.com (I just made that up) I think that there is an awareness by BMW or other companies that this is a sales garage and they are acting as BMW's agent, and there is an awareness by consumers that this is the website of the garage only - and not BMW's site.

Third (and final) side point: companies still have pretty much the same amount of protection for their name even if they didn't register it. They still have 'unregistered trademark protection'. One benefit of registering is that there is a clear date when they started trading or using the mark. But even if they don't register it they could still take people to court for trademark infringement or worse, passing off.

Good luck

 

[retired_member16]

Simon - I have PMd you, I may be interested in buying this from you.

 

[simon5ykes]

Thanks very much for the advice so far guys.

woopwoop, some very valid points there - just to clarify though, I never had any intention of literally having lots of affilliate links on the page or even passing myself of as them, I was simply looking to use some sort of url forwarding to send users straight to their main website which in turn would be tracked and I would be paid some sort of affilliate fee.

I can certainly see where they're coming from too - I just wanted a little more info before I hastily signed everything over.

Thanks again for your advice,

Simon.

 

[Johnp]

Tesco Versus Elogicom - Have a read

Hi

http://nominet.org.uk/disputes/caselaw/index/tesco/

This one gives a good idea how much hot water you can get into.

Best Regards


JohnP

 

[Admin]

£26,000 in a month! nice, not worth wearing chains for though.

Blatant passing off has to be a bad idea....

 

[simon5ykes]

Right,

Thanks for your advice everyone and also to those who even offered to take the problem off my hands! I have decided, as I thought may originally be the case, to transfer the domain to them to avoid the hassle.

I was however, considering just filling in the transfer forms and sending them with a covering letter to the Trademark Attorney WITHOUT any payment. I don't think I'm legally obliged to do it their way so to speak am I? - or is that just opening another can of worms?!

Do you think it's worth a telephone call?

Thanks again.

 

[woopwoop]

I really think you're safe just deleting it and letting them know that you've deleted it.

They can't continue to get something that you no longer have, and they have no legal comeback if the domain is free for them to register!

You just need to let them know once you see it's available in the whois and tell them that you won't register similar names to theirs in future.

 

[Beasty]

Hi

http://nominet.org.uk/disputes/caselaw/index/tesco/

This one gives a good idea how much hot water you can get into.

Best Regards


JohnP

Spot on JP. However, there is a slight distinction to be made - since in that case it was regd as an affiliate using a different domain.