Accused of 'abusive registration'! Any suggestions?

[Ant]

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).

Cheers Bailey. Is there more that you think I've missed out? If so, let me know and I will try to elaborate further in my next post. I will try to send an email over to you later on.

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...?

Well there is a good chance it is the same company. Many things suggest that, but they say they are aware that I sold it to a third party in their letter, so who knows. If it is them, and they failed to renew the name, and 'forgot' for 4 years, that would be just one of the points I'd argue. We have the same name, but my site and their name are completely unrelated.

I'm unsure about ignoring their letter though. Couldn't it be seen that I'm being uncooperative, not willing to defend myself, etc. I don't want to appear to be weak, defenceless, or completely ignorant of my situation.

Also, how would contacting Nominet be construed as an admission? I've been accused of something, so surely I should have every right to gather information from a variety of sources, such as Nominet, to understand my position and prepare for my defence?

Thanks again

 

[namealot]

Well there is a good chance it is the same company. Many things suggest that, but they say they are aware that I sold it to a third party in their letter, so who knows. If it is them, and they failed to renew the name, and 'forgot' for 4 years, that would be just one of the points I'd argue. We have the same name, but my site and their name are completely unrelated.

I'm unsure about ignoring their letter though. Couldn't it be seen that I'm being uncooperative, not willing to defend myself, etc. I don't want to appear to be weak, defenceless, or completely ignorant of my situation.

Also, how would contacting Nominet be construed as an admission? I've been accused of something, so surely I should have every right to gather information from a variety of sources, such as Nominet, to understand my position and prepare for my defence?

Thanks again

Why do you think you have to defend etc or do anything? You’re replying to a letter from a solicitor? It means nothing they have absolutely no power anyone can send a letter, was it sent recorded delivery, served by a court etc? Remember someone you don’t know? Has no legal power? Is not a representative of nominet, courts etc, that you don’t know has any right to the name, they don’t know if you’re the right person to send it too or if you even received it? Are saying "hand it over" for nothing… There is a proper route and there not following it. You’re under absolutely no obligation to give them any info at all? If they go DRS etc (Remember that cost them) respond or not then.

If I’m honest made up word which you may have already sold them? They have a prior to registration trademark? not on the strongest grounds, but preparing a defense before you even no what the official complaint is or if it has any grounds etc the idea is to respond to an official complaint not give them ammunition, a new route, grounds etc prior , (Your response can be used in there complaint…) The onus is for them to prove it? You can go in all guns blazing giving them all that you’ll use as a defense helping them with there case if you wish? I’d actually wait till they do something properly till then “say and do nothing ”
Or probably if I was feeling mischievous I’d look at something along the lines of the Malicious Communications Act 1988 response to the threatening letter http://www.legislation.gov.uk/ukpga/1988/27/section/1

 

[Ant]

Why do you think you have to defend etc or do anything? You’re replying to a letter from a solicitor? It means nothing they have absolutely no power anyone can send a letter, was it sent recorded delivery, served by a court etc? Remember someone you don’t know? Has no legal power? Is not a representative of nominet, courts etc, that you don’t know has any right to the name, they don’t know if you’re the right person to send it too or if you even received it? Are saying "hand it over" for nothing… There is a proper route and there not following it. You’re under absolutely no obligation to give them any info at all? If they go DRS etc (Remember that cost them) respond or not then.

If I’m honest made up word which you may have already sold them? They have a prior to registration trademark? not on the strongest grounds, but preparing a defense before you even no what the official complaint is or if it has any grounds etc the idea is to respond to an official complaint not give them ammunition, a new route, grounds etc prior , (Your response can be used in there complaint…) The onus is for them to prove it? You can go in all guns blazing giving them all that you’ll use as a defense helping them with there case if you wish? I’d actually wait till they do something properly till then “say and do nothing ”
Or probably if I was feeling mischievous I’d look at something along the lines of the Malicious Communications Act 1988 response to the threatening letter http://www.legislation.gov.uk/ukpga/1988/27/section/1

Cheers namealot.

Well I imagine their next step will be a Nominet dispute. I guess I'm just concerned that I could end up losing the name for nothing if that happened - I'm not sure how reasonable (or unreasonable) Nominet are.

They sent the letter by recorded delivery, yes. But as you say, just a general solicitors letter. It just points out that they own the trademark, and accuses me of registering the name in bad faith.

This is kind of why I want to speak with Nominet to get some advice, and to see what their view on everything is. If they were to say their case is pretty weak, I'd be happy to ignore them. Why do you believe it would be a bad idea to contact Nominet at this point? I mean, how can that be an admission to anything? It would be nice to get an idea of what they make of it, being as they're the ones who could judge either way

I think you're right about not giving anything away so soon, until theres an official complaint from them. The only other option was what one solicitor suggested, and that was to nip the whole thing in the bud early with a response, and just ask for an admin fee to transfer the name over.

 

[namealot]

Cheers namealot.

Well I imagine their next step will be a Nominet dispute. I guess I'm just concerned that I could end up losing the name for nothing if that happened - I'm not sure how reasonable (or unreasonable) Nominet are.

They sent the letter by recorded delivery, yes. But as you say, just a general solicitors letter. It just points out that they own the trademark, and accuses me of registering the name in bad faith.

This is kind of why I want to speak with Nominet to get some advice, and to see what their view on everything is. If they were to say their case is pretty weak, I'd be happy to ignore them. Why do you believe it would be a bad idea to contact Nominet at this point? I mean, how can that be an admission to anything? It would be nice to get an idea of what they make of it, being as they're the ones who could judge either way

I think you're right about not giving anything away so soon, until theres an official complaint from them. The only other option was what one solicitor suggested, and that was to nip the whole thing in the bud early with a response, and just ask for an admin fee to transfer the name over.

Maybe I’m not explaining it well or your not understanding.. You don’t know what there going to file about if they even will? you can guess but not know? neither can nom, you'd not be speaking to any of the panel anyhow just the phone wallers..? they can be good, bad, indifferent and there is normally arbitration prior before they have paid the larger fee anyhow, nom are not overly keen on full DRS as the more they happen the less in control they appear remember there self appointed and keep the ££££ themselves with governments needing cash taking that right away from nom especially with the potential uk windfall would look very promising atm

I bet the solicitor said that you'll be paying him... how does you sending anything stop them if they have a case and funds they’ll proceed and if they don’t they wont..? Atm there waiting for you to make a move let them... they have not taken the proper routes.

Solicitor barrister Q C etc starting a case without all the fact yes ones that take on any case win or lose mostly crap… Good would tell you to wait till you have the all the facts then proceed with a plan of attack, defense etc not go in half cocked if you want me to have a look let me know otherwise pinging back and forth gaining little snippets each time is not helping you and I’m bored now

 

[lethal0r]

all the best with this ant, I dont have anything to add except dont give in to them. keep us posted on what happens if you can.

 

[Pellam123]

experience

In my experience from years and years back I had a few of these from companies who had little faith that the internet was going to catch on and upon realizing it might, came after me. I was never forced to 'hand over' on any of the three serious challenges (transfer fee's and a relevant administrative charge were agreed) - however in your case for their solicitor to advise them to simply buy it would be to accept a failure by directors in reasonably protecting the companies trademark, ie a lack of due diligence on their part.

In a previous life (pre internet) I spent a lot of time and money with patent and trademark solicitors and my understanding has always been grounded in the fact that if your not attempting to cause confusion within a similar market they don't have a leg to stand on - one case in particular I remember, we launched a signage safety product we called ELF (due to its core component being micro-encapsulated electroluminescent film). Got the trademark searches back from the solicitor and there were about 25 other companies using ELF (at the time) either as product or company trademark including ELF oils - we registered it within the particular market we were addressing and took it to market without any issues.

HOWEVER with regard to domain trademarks people like Stelios et al who (through legal clout) generate the false impression that they can own dictionary words such as easy under threat of expensive costs being generated, causes one to wonder the chances of successfully defending your ownership and extracting market value for the domain.

This brings me to my second point. In law (and my experience) the golden rule is, the guy with the deepest pockets always wins, which is why Timex watches were (back then) able to launch their range of indiglo watches lit with electroluminescent film, but that's longer story!

IMHO: Invite them to correspond with their argument/reasons as to why they believe their clients own a domain they failed to register, however they dress up the argument it will be negligence on their part - get a free half hour with a specialist lawyer (I mean a specialist in the domain field, there are plenty out there), only then consider your position - I personally would hold

 

[Ant]

Hey again.

Thanks to everyone for the replies. Just a little update on what has happened so far.

After looking into some of the previous offers people had made me for the domain, it turns out at least one of them was a spy. He worked for a company specializing in intellectual property, copyrights, and surprise surprise, domain names. After some digging I managed to expose him.

Despite some people advising me not to go the solicitor route, I did, as I figured it would eventually come to that anyway. I thought the more they invest into legal costs on their end, the more inclined they might be to pursue this further. However it played out, a solicitor on my side would probably be inevitable, so I got one who specializes in domain disputes, so he'd have the full picture early on.

We sent them a letter, rejecting their claim, asking why they believe they have any right to it, etc, whilst implying they can make an offer. As there is a fair amount of history to both the domain and the name itself, I included some of that, to show I have very valid reasons for owning the domain. I realize that it might appear as though I have given away far too much too early on, but before they knew this, they probably thought they had a case for the name. I guess it's debatable whether or not that was the right move on my part, but I wanted them to have plenty of doubt.

Just over two weeks later, they have responded, although completely ignoring our questions - I guess they don't have much to say to that. They have offered me £750, which I thought pretty funny. I suppose starting low from their perspective makes sense, but it doesn't seem to be a very well thought out offer. They have said they are willing to pursue the matter if I decline, but I imagine it would be unlikely at this stage. It seems illogical to me that they would seriously cap their offer at £750, when the Nominet process alone will cost them much more than that. Not to mention their current legal costs, costs of employing their spy, taking me to court, and so on. However, they're a big company - $150 million USD turnover.

I will post updates as things progress.

Also, can anyone give me some pointers on the best way to go about valuing a .co.uk? I don't feel comfortable to tell anyone the domain until the situation has been completely resolved, which I realize makes it extremely difficult. But any advice would be greatly appreciated. How much do UK domains generally sell for, in situations where a company wants a name?

 

[Bailey]

Again Ant, it's impossible to give you any direction on Valuation without knowing the domain. If you've employed a 'qualified' solicitor specialising in domain names - I'm sure he's also the one to be able to direct you on valuation, it certainly wouldn't be outside his knowledge of the business.

If this a $150 million yearly turn-over company - I can't see them wanting to play around, they may just be looking to add the "WE MADE A REASONABLE AND UNCONDITIONAL OFFER, WHICH WAS DECLINED" to their string of whatever route they choose to pursue.

It appears you equally have a fair idea what you want/would accept for the domain given you've identified the £750 as "Funny" I assume you mean 'insufficient/too low'.

With-out wishing to appear too critical of your approach here Acorn. I have a strong suspicion that anyone that added to this thread with something that you felt added to your to your own valuation as being equally valuable advice. Anyone detracting being equally unknowing or not experienced enough to add their comment

If I was you I would just ask for what ever you want for the domain - If you were wrong all along about your rights to the domain, then hopefully you would have only lost that "funny 750" that you've been offered.

I'm also surprised that you haven't mentioned whether or Not the 'Domain Specialising solicitor' believes you have a 'strong case' in defence of your registration. I would have thought that key to your negotiating position.

Either way best of luck

 

[namealot]

Sounds to me like they are making millions without it, couldn’t be arsed to develop before so probably have another name or brand outlet also doubtful you can sell there product or there competition would buy it so who, what and why has driven the price up since you last sold it ? unless they have a weak case or it cost them less to do so a with there turnover the nom fee’s or just straight to court is not going to be a problem? Without a name i'd say if you think its a golden ticket ask that for it? you'll either get it or won't

 

[Ant]

Thanks Bailey/Namealot.

Yeah, it might be that - just gathering information. I said it was 'funny' because their spy already offered me double that, and they knew full well I wouldn't accept. You may be right there, in that they are trying to appear to be reasonable with me before taking things further. Or perhaps it's their way of starting to negotiate a price - I really don't know.


To be honest, I don't really know the value of the name, they're never easy to place. But it's a short, and pretty good word in my opinion. At the least I would guess it has to be worth close to whatever it would cost them to take me to court over. I mean, I have no idea on the cost of that, but let's say it was 5k for all their legal costs, etc, then it would be stupid for them not to pay me the 5k directly and have the certainty of getting what they want. Unless that is the person in charge gets all emotional and wouldn't out of principal or something, but probably unlikely being how it's a business decision.

Oh, and regarding my solicitor, he believes we have a strong case. They claimed abusive registration in their initial letter, but I have a valid reason for owning the name, and hard evidence to back that up (by that I mean dated documents, held by multiple third party companies, clearly showing the name has been in use by me for well over a decade). They have refused to elaborate on why it's an abusive registration or on why they believe they have any claim on the name. Instead they just phoned my solicitor, just to make the offer of £500. This seems strange, because if they genuinely believed that, I would have thought they'd demonstrate it to me, to make me think twice. Either they know they don't have a claim and are bluffing, or just keeping quiet for now to see how I will react. My instinct tells me it's the former, but given I have zero experience in this, so it's anyone's guess.

I do try to remain neutral in my posts, because I want you guys to have a genuine and honest picture of my situation, so that any advice I get from you guys is accurate from what you've read.

Regarding price, yeah, that's probably something they would pick up on, if I came out with a high price. All I can say to that, is the first time I sold it I was younger and a student, and to be honest sold it for less than it was worth. Also, as I told their spy I had received a much higher offer already, so it has to be worth that at least.

unless they have a weak case or it cost them less to do so a with there turnover the nom fee’s or just straight to court is not going to be a problem? Without a name i'd say if you think its a golden ticket ask that for it? you'll either get it or won't

I thought that also, but then surely any business, regardless of turnover, will want the best deal. Taking someone to court isn't going to be cheap, especially if they don't have a case. And skipping the Nominet process might look bad for them. I figure the name should be worth at least the equal amount of those costs to them, but maybe I'm wrong. Do you think coming out with a price to them, could then be used against me? I mean, they could potentially argue I have only set the price high because of their brand, which then supports their false claims of abusive registration.

 

[namealot]

Court cost to them are most likely tax deductible win or lose (btw are there legal bods in house ) ditto with the buying. Some firms its also about gaining something that’s much harder for anyone else to contest at a later date hence go through the courts let them decide the legal rights etc they win then they perceive it to be stronger should anyone else try a claim at a later date? You win they buy and use your right and there legitimate purchase etc win win? ?

You either have the right to the name or you don’t so price should be irrelevant? If it’s a coin toss as to who does would you asking for anything more than reasonable cost sway panel, judge etc they should go with what the law states but anyone’s guess?
Your reluctance to ask for more to me could show weakness or lack of belief in your claim to them ?

Personally I wouldn’t give any legal info or ammunition to them? If you do and it doesn’t completely knock them out of the water its pissing in the wind, Your “legal domain expert” doesn’t seam to have done that or countered with anything ? Why does he think they'll answer any questions? whats stopping you asking a higher price ? the risk of getting nothing that’s the nature of the game your showing trading usage etc as right to name there using a possibly more legally recognized trademark card ?

You have already stated you sold it once to “them“ what did you base it on then and what’s changed to increase its value hard facts etc or just your belief? Multitude of things to base a price on your legal expert should know them aside legality otherwise how does he no if an offer is fair, reasonable should be accepted etc all part of his job? He should have given you a price guide if he hasn’t then what he doing simple relaying what you say to him on headed paper? If he has and you’re not sure he is right then you’re not confident he knows his job? (Also sounds like you’ve eliminated yourself from direct negotiations as there putting offers through him more expense more time wasted) You can read lots of different scenarios into there offer as its lower you could see it as there legal side isn’t that impressed with yours and are low balling to see if he just advices you to sell it to them at that price?

If your trying to screw every drop out of it then you shouldn’t give a toss and if there lawyers are any good they should know price and how to read your reluctance to state it? There are many ways to approach selling names but weakness isn’t one to portray especially against a company with a large turnover and good legal representation?

 

[Ant]

Hi namealot,

No, they're an independent company that specializes in copyright, patents, IP, etc.

Finding out if I have the right to the name (more maybe more accurately, if they have any right to the name) appears to me to be next to impossible. Although I guess there is no definite answer for that, but it's tough to find out what my personal rights are regarding this, from a neutral independent source. My personal view is they have no claim whatsoever, unless a trademark automatically gives them the right to anything of the same name? I mean, I bought the domain in good faith, and for good personal reason. As far as I can tell, it's about as legitimate as it could get. I mean, what have I done wrong here?

My reluctance isn't a lack of belief in my claim, it's a lack of knowledge and confidence in this area. I'm just a regular young guy with a domain name - I have no background in law, etc. The reluctance to ask for money, is because I don't want them to be able to use that against me, by saying something like "look, he's inflated the sale price purely to profit out of our brand/large company". At the same time, if they want the name, I want a fair price for it or else I'd rather keep it.

My solicitors counter argument was to simply demonstrate to them that I have very solid and valid reasons for owning the name. I think that was a fair and reasonable thing to do, as it shows I have genuine reasons for owning the name, backed up with evidence. In my personal opinion (which maybe means nothing here), it did knock their argument out of the water, because it totally disproves their accusations.

Asking the questions was to see if they had any foundation for a legitimate argument. So far it seems they do not, or else they would have said. If they're intentionally keeping quiet, then why? What's it gained them? Given their accusation, asking why they feel they have the rights to the name is a common sense question, which they've clearly evaded.

The domain has never been used commercially or for trading. It's been 100% a personal website. I say I sold it to someone - I assume them - but cannot be sure. They won't acknowledge or deny that. 90% chance it is them from what I've seen.

Nothing has really changed its value, expect I sold it for less than it was worth 7 years ago. In addition, having received a higher offer since then already sets the bar higher. If someone has offered x amount, then surely it's worth at least x amount. I will be directing offers to go through me. As you say, I'm not paying him solicitor money to relay messages back and forth. In fact I haven't even been in touch with him since, as I want to think everything through clearly beforehand.

I don't believe I've shown any weakness so far. They've only had a single letter of correspondence from me.

I like to get opinions from you guys, because the more people who reply, the more angles the whole thing will be viewed from.

Cheers.

 

[Bailey]

As much as you appear to be genuine in your beliefs Ant. You've hit the nail on the head with your comment.

My reluctance isn't a lack of belief in my claim, it's a lack of knowledge and confidence in this area

.
Unfortunately, Domains/Domaining isn't an area to enter into without some level of understanding of the legal side of this business. Every week here on Acorn we see names posted for sale that are clearly at conflict with Existing TradeMarks. And sadly responses from the same posters 'such as'

Well why can't I ? OR such foolish beliefs as "But I'm Not Using the "EXACT" words of the TradeMark" I can go on and on.

Now I'm not saying this is your position but you do come across as quite naive in this area, Particularly with some of your comments about how you perceive value etc.

What I'm happy to offer you (And it's not an open invitation to any one else with a similar dilemma) Is my personal (and qualified) opinion on both the domain and your position. I'm prepared to spend some time (probably a couple of hours) giving you what I believe to be as close to an expert opinion as you will find anywhere. Hopefully thereby making-up for your lack of expertise.

What I will do is promise there will be no public comment or posting regarding what I discuss with you or divulgence of the domain. Any further comments in this thread (should you take me up on this offer) will be from you alone.

As most know on Acorn, I have the time and probably as good as knowledge as your going to find anywhere. And due to your 'apparent' genuine wish to get as close to a definitive understanding as possible. If it turns out to be a real 'conundrum' of a position, I will tell you so.

What I ask for in return is an honest and open divulgence of the history of the domain and of course a text copy of the correspondence to-date. I have pm'd you my personal BT business email address which has been my email since the late 90's and my work desk phone number.

Can't offer anything fairer than that.

 

[namealot]

If they have a trademark of the same 100 % they have a claim? You want to know how strong without divulging it? Devil's advocate there mark owner trying to legitimately claim the name ? maybe one trying to assert expansive trademark rights or just trying it on? You cyber squatting “trade mark was before I had the nickname” and "implying they can make an offer"
Does it look like your not willing to sell unless they offer enough “surely the name can't be that valuable to their business” then “They have offered me £750, which I thought pretty funny” you had it "for sale" also you sold to them before All can be interpreted differently? my nickname, my own personnel site etc thin ice also? possibly with above?

You could look at reverse hijack cases even take legal action etc "Finding out if I have the right to the name (more maybe more accurately, if they have any right to the name) appears to me to be next to impossible" without a name yes ditto with prices etc so why keep asking? bailey made an offer take it up.

Larger companies that own a mark for a made up word prior to a registration (with sufficient fund etc) many wouldn’t have given you anything in the first place? Maybe they were dumber and smarter now?

Your solicitor with all the facts should have answered all you need to know thus eliminating “lack of knowledge and confidence”? You and he see a strong case? Not sure many would with a lot of what you have posted? They don’t need to answer any questions agree. disagree, justify, acknowledge anything nothing official is happening no nom, no court etc basically your showing all your cards…There not no surprise really even if they believe you have a claim they’ll be dissecting what you sent looking for loopholes, previous cases, precedents etc most wouldn’t give there opposition a chance to do the same..?

Offered x but didn’t accept... often they’ve gone elsewhere, could be working for them or back out minute they here about possible pending actions all and more change offers made..

Remember though nothing is actually happening officially at least...