Accused of 'abusive registration'! Any suggestions?

[Ant]

Hey, hopefully someone here could give me some advice on my situation...

I own a UK domain and have recently received a solicitors letter claiming I have registered the domain name in bad faith. For anonymity, I'll call the site 'BS.co.uk'. The company, which is based in Europe, has the trademark, 'BS'. Their claim is that I registered the name, with the sole intention to profit out of it. :x


Some history of the domain:

I first registered the domain in the early 2000s, and for good reason, as it was my nickname (I have no shortage of evidence to backup this). I used the domain personally for a number of years (blog and so on), until someone contacted me asking to buy it. We agreed a price, and I sold it.
For the entire 4 years that this third party owned the domain, they did not once use it. In fact it was still pointing towards my web-space for the entire time. Then one day I noticed the domain was no longer registered to anyone, and once again available. I left it some time to see if the previous people were going to take it back or not (maybe their CC had expired or something), but they did not. And so I re-registered it for myself again. Whilst under my name this second time, I used it with a variety of sub-domains, email accounts, etc, but never really anything on the homepage - just blank, or at most something very basic.

Now, 3.5 years on, I have been contacted by this BS company, demanding I hand it over to them, free of charge (I'm assuming it's the same people as who originally owned it). They have given me 2 weeks to comply. :x


My question is, do they have a case against me? It seems crazy that they (again assuming they're the same people as before) can 'forget' about a domain for nearly 4 years after it expired, then suddenly demand it back. I did not register it to make a profit, (although people had contacted me trying to buy it, I turned them down) and have never contacted that company.

I have never had any experience with this sort of thing before, so any help will be greatly appreciated.

 

[retired_member32]

what do you mean that this domain "wasn't registered to anyone " ?

 

[Ant]

4 years after they had bought it from me, I saw that it was no longer registered to anyone. I assume they had let the name expire.

 

[mally]

The way I've always understood it is if you not trying to do the same thing as the company with the trademark then you should be ok.

For example if they sold washing machines, as long as your site isn't selling washing machines then you should be ok.

As long as you haven't approached them to sell it direct then again that helps your case.

 

[tifosi]

It's a uk domain, they're a non-uk company? Cheeky b(*(rds. Don't assume they are the previous owners (or the ones you sold it to if they're the same). Treat them as new entities until they can prove otherwise.

Are you using the site in any way to pass yourself off as them? i.e. directly profitting from ads or their business goodwill?

Coincidental use of words is not abusive imo. My moniker here is the same as a number of uk/european/global companies and I own the uk/eu domains. If they came to me with this browbeating excuse I'd tell them where to get off.

Up to you whether to reply or not, if you do don't offer to sell it to them, but if the passing off question is no I'd just file the letter and let them stew.

It's quite typical of solicitors to go in all guns blazing in the hope of a quick kill when the other party folds out of fear/apathy/other.

If you wanted to contact them I'd be more inclined to call them with a simple no. That way their client gets charged for their time!

 

[Ant]

Thanks for your reply, Mallu. The company taking action against me is a retailer. I've only had personal things on the domain, like a blog, forum, etc. So nothing similar to them at all.

I've never tried to sell it to them, nor have I ever contacted their company in my life.

However, I have had multiple people call/email me trying to buy it - all of which I refused. As a result of those people offering to buy it, I did put a 'for sale' note on the home page for 4 weeks - which in retrospect was a mistake. But it was after those people had offered to buy the name. Naturally I was curious. I guess that would go against me though.



Thanks for your reply too, tifosi. Absolutely in no way am I trying to pass myself off as them. It's been a totally personal/non-profit site. Whilst the homepage is blank at the moment, I still have many of the previous versions of the site, scripts, databases, etc, archived as evidence.

Yeah, foreign registered company, trying to take my .co.uk. It is very cheeky.

I'm not sure if it's best to reply or not. If I don't reply, I guess they will contact Nominet to begin the dispute process (no idea how that will go). If I do reply, I will certainly do as you suggest, and call them

 

[RobM]

Bear in mind it will cost them at least £750 at DRS to 'perhaps' take the domain. Also if you haven't had anything on your site that encroaches on their market (and don't forget searches and ppc can be gamed to produce whatever results the complainant wants) I wouldn't take any notice of it. However that's just me - you may want to seek legal advice.

 

[Ant]

That's good to hear, as I've never had any adverts on there.

They're a big company though, so I won't be surprised if they proceed with the DRS to try to take it from me. I just hope Nominet a fair and reasonable when they judge this type of thing.

Thanks, RobM.

 

[micky1]

get a solicitor, get them slapped down

 

[tifosi]

get a solicitor, get them slapped down

Not really the most helpful of comments.

 

[micky1]

Not really the most helpful of comments.

sorry! But if someone came after my site then i'd quickly rebuff there advances. OR theres more to the story than meets ther eye?

 

[martin-s]

If the domain was really BS.co.uk of course, it would be too short for them to have a reasonable leg to stand on...

 

[Bailey]

There could be a 'Question' of ethics here. If indeed they are the same party/parties that purchased the domain from you in the first place. (which you seem to be indicating).

If that is so , I'm surprised they didn't try a more softly, softly approach.

In the form of our - "Our tech guy left and we didn't have the password access or something similar".

It reads to me like one of those cases where only You are in full awareness of the facts (Ie are they one of those that indeed tried to buy the domain back after realising their mistake, but this time round you've said No) ?

I can't see how anybody here on Acorn can give you a definative answer, without having all the details to hand

 

[CatchDrop]

I can't see how anybody here on Acorn can give you a definative answer, without having all the details to hand

Yup

Until everything is divulged, this stinks of the example two letter domain to me.

 

[stellar73]

Coincidental use of words is not abusive imo.

Agree with this. Based on everything you've said I don't see how they can claim it is an abusive registration, even with a trademark. Their trademark will be to cover use of the term in specific classes which doesn't stop you using it out with these and for other purposes (and certainly doesn't give them automatic rights to the domain). You would only be in trouble if you had adsense or other ads on the page which directly or indirectly linked to them or were passing yourself off as them in some other way.

The only way in which I can imagine their case being taken seriously would be if the name itself is such an unusual choice that a "reasonable person" in the street would have a hard job imagining you had come up with it independently. Even if this is the case you say you have evidence of it being your nickname so that should nip that one in the bud even if it goes to DRS.

I wouldn't spend any time worrying about whether or not they were the previous owners as I don't see that this is relevant to the issue.

Personally I would send them a polite reply saying you do not believe yourself to be in breach of their trademark and have no intention of handing it over to them. See what they come back with and they might make you an offer. Might also be worth checking archive.org to see if the old version of your blog is on there. This might be useful evidence of your original intentions if the situation does progress to DRS.

 

[namealot]

It could depend on your original wording, knowledge on original sale contract and correspondence etc They had a trademark for abc and your nickname was abc registered prior to there trademark then you’d probably be in with a chance of keeping it? But the name registered after gets a little murkier in this instance?

They could argue that your second registration was with the knowledge of there trademark but not sure how that would stand ( not knowing the exact word also makes it difficult how unique, generic etc) Don’t know of any cases of a name sold subsequently dropped then re-registered by original seller. Ethically if it’s the same firm some would return it as your good name is worth more. Others would be tuff jog on

Nominet decision is often anyone’s guess? A court it tends to be a legal point although an ethical bias can affect the outcome e.g. They can decide in your favor but not award cost etc…

Any correspondence with them especially asking for payment could be very tricky some might use a hosting, administration etc form of reimbursement to pass the name over as it could be argued you are not asking for anything other than your cost. Without knowing the full scenario its hard to give full advice at the momment they or at least what you have posted about them sounds little more than a shot across the bows type not heard anything about court or nom yet I'd wait and see what there next move was ?

 

[Ant]

re

sorry! But if someone came after my site then i'd quickly rebuff there advances. OR theres more to the story than meets ther eye?

The story is exactly as I described before. I'm looking for advice, so lying here I'd only be kidding myself. Getting a solicitor involved might be beneficial, but I'm not sure if I should be spending money on one at this early stage.

If the domain was really BS.co.uk of course, it would be too short for them to have a reasonable leg to stand on...

The word is 5 characters long. It's not in the dictionary, but very similar to one that is. And very easy to see how it could be someones name.

There could be a 'Question' of ethics here. If indeed they are the same party/parties that purchased the domain from you in the first place. (which you seem to be indicating).

If that is so , I'm surprised they didn't try a more softly, softly approach.

In the form of our - "Our tech guy left and we didn't have the password access or something similar".

It reads to me like one of those cases where only You are in full awareness of the facts (Ie are they one of those that indeed tried to buy the domain back after realising their mistake, but this time round you've said No) ?

Well they're writing to me from different solicitors, and with a different story. They haven't offered me anything - just demanded I give it to them. It could be that initially they wanted to remain anonymous when they bought it from me - I don't know. But as tifosi said, it's probably best not to assume they're the same, unless they prove otherwise.

On ethics, yes, if they had contacted me shortly after I bought it, said they were the previous owners, I'd most probably handed it back to them for free. But after 4 years, I feel it's fair game for anyone to take and keep.

Agree with this. Based on everything you've said I don't see how they can claim it is an abusive registration, even with a trademark. Their trademark will be to cover use of the term in specific classes which doesn't stop you using it out with these and for other purposes (and certainly doesn't give them automatic rights to the domain). You would only be in trouble if you had adsense or other ads on the page which directly or indirectly linked to them or were passing yourself off as them in some other way.

The only way in which I can imagine their case being taken seriously would be if the name itself is such an unusual choice that a "reasonable person" in the street would have a hard job imagining you had come up with it independently. Even if this is the case you say you have evidence of it being your nickname so that should nip that one in the bud even if it goes to DRS.

I wouldn't spend any time worrying about whether or not they were the previous owners as I don't see that this is relevant to the issue.

Personally I would send them a polite reply saying you do not believe yourself to be in breach of their trademark and have no intention of handing it over to them. See what they come back with and they might make you an offer. Might also be worth checking archive.org to see if the old version of your blog is on there. This might be useful evidence of your original intentions if the situation does progress to DRS.

In their letter they state it's their trademark, and say I bought it in bad faith, purely to profit out of their name. This is completely untrue. I bought it for the same reason as I did 10+ years ago. I've never tried to sell it to them. I've never contacted them. I've never ran any form of adverts on there, nor have I sold anything there. The site has been purely personal. The only thing that might have been 'bad' of me, was to put a 'for sale' page up for 4 weeks, after I had people offering me money for it. I wanted to see the response/interest, because I was curious. Two people somehow looked my phone number up to contact me, so put in some effort to find me (it's not on 192, whois, etc). 4 weeks out of a total of 8 years of ownership.

It could depend on your original wording, knowledge on original sale contract and correspondence etc They had a trademark for abc and your nickname was abc registered prior to there trademark then you’d probably be in with a chance of keeping it? But the name registered after gets a little murkier in this instance?

They could argue that your second registration was with the knowledge of there trademark but not sure how that would stand ( not knowing the exact word also makes it difficult how unique, generic etc) Don’t know of any cases of a name sold subsequently dropped then re-registered by original seller. Ethically if it’s the same firm some would return it as your good name is worth more. Others would be tuff jog on

Nominet decision is often anyone’s guess? A court it tends to be a legal point although an ethical bias can affect the outcome e.g. They can decide in your favor but not award cost etc…

Any correspondence with them especially asking for payment could be very tricky some might use a hosting, administration etc form of reimbursement to pass the name over as it could be argued you are not asking for anything other than your cost. Without knowing the full scenario its hard to give full advice at the momment they or at least what you have posted about them sounds little more than a shot across the bows type not heard anything about court or nom yet I'd wait and see what there next move was ?

Their trade mark was before I had the nickname, yes - late 1980s. But surely the name can't be that valuable to their business, if they ignored it for so long. They had ample opportunity to take it.

I partly agree with the ethics of handing it over, if they are the same people, and more importantly had a shorter time passed. A few months after of registration? Sure. But 4 years!?

I've never had any experience with Nominet disputes. I think I will give them a call if there is a number for disputes and see what they say.

Yeah, with regards to any form of payment, it would be tricky, as it could support their accusations. The hosting/administration route would probably be best. And true given the time I'll have to waste moving files/databases around.



Thanks very much to everyone for the replies.

 

[Bailey]

Well done Ant, That's nice to see a thought-through and comprehensive response. But, as you acknowledge - There is more to this particular dispute, than anyone can possibly know enough to judge on without having all the details.

For the casual viewer (all of us) It really depends on too many unknown Variables. I do believe your being honest in your transcript. But, it's too easy to be exact in some areas and then vague in others (I'm not saying it's intentional)

Anyone that tried to call this one for its possible outcomes is not going to be of any help. However, You seem to be pretty sure of your ground - to me that's always a plus (if they fully understand the dispute procedure and grounds for).

 

[Bailey]

edit-out

 

[namealot]

Their trade mark was before I had the nickname, yes - late 1980s. But surely the name can't be that valuable to their business, if they ignored it for so long. They had ample opportunity to take it.

I partly agree with the ethics of handing it over, if they are the same people, and more importantly had a shorter time passed. A few months after of registration? Sure. But 4 years!?

I've never had any experience with Nominet disputes. I think I will give them a call if there is a number for disputes and see what they say.

Yeah, with regards to any form of payment, it would be tricky, as it could support their accusations. The hosting/administration route would probably be best. And true given the time I'll have to waste moving files/databases around.



Thanks very much to everyone for the replies.

Trademarks are a funny thing if its the company that owned that let it drop you could try a veiled attempt at the fact that they had let it drop and not bothered to chase it up at all over the last few years that they had abandoned the mark so to speak ( although thats thin ice )

Also you can own a trademarked name in fact there are often many trademarks with the same name it’s the class and what the trademark is etc that can have bearing on what you can do with it ( less so with totally made up words though )I could own apple and sell apples and also offer the name for sale that doesn’t mean I could sell there goods or anything associated with the mark though or that they wouldn’t try and use the fact I’d put it up for sale against me either…? Without a court order, date etc or Nominet intervention though what they have sent means absolutely nothing at all other than they are either trying it on are not aware of the due process for domains... Personally I would ignore the mail not contact nom (that could be construed as an admission I’m not sure if nom have a disclosure policy which could strengthen the complainant case) and sit back have a cup of tea and wait and see.. If nothing else its all good entertainment reading some of the bs letters from legal bodes. feel free to message me over the name if you want but don't post it on the open forum...?