Can they force me to transfer a domain name

[namealot]

With regards .com trade mark registrations for the term, after the domain name was registered, could not serve as prior trade mark rights to the domain name...?

 

[chuckylefrek]

Yeah the domains are cheap and not worth anything to me really. I just don't like the idea that someone can send me a letter demanding my domain names without even a polite letter first.

Though I would rather use them for another site totally unrelated to the other parties site than hand them over for free. I guess that may not be seen to be very professional though.

Is it worth a last ditch attempt to get some dollar out of the other party or would that put me in a difficult position? If I am happy to transfer them if they say no then nothing to lose I guess?

Thanks for all the advice everyone

 

[namealot]

Depends on you r situation really... If you were to respond go along the lines of thanking them for there letter state you were not aware of any other registrations of the name (nominet may hold sway with the .org.uk but not sure anyone else would?) If they did not state you about trade mark you can either not mention it at all or state when you registered the name you had checked to see if there were any trademarks and there were none decided it was a good name. Possibly mention you have invested time and monies in it are not sure what to do but will probably seek some advice and see how they play from there…?

My thoughts on replies are either be civil yet firm or don’t bother at all…? If you ask for money outright or are rude they will often use your replies in any evidence witch can paint you in a bad light so to speak... Also remember the way and manner that you reply can also be an indication to them of how long to prepare and how good a lawyer etc to allocate to your case this can have some distinct advantages for you if played well


this might also help http://www.chillingeffects.org/trademark/faq.cgi

 

[GlasgowBob]

Ok I have just found out the other party has an application for a community trademark dated august this year. The "Mark Text" is the same as my domain name without the extension.

I guess that means game over?

Thanks

Paul

Hi Paul, you say application - is the tm actually approved?

I had someone claiming rights over a .co.uk domain and under inspection their tm was still being looked at and I told them were to go (actually gave them the opportunity to get it for a donation to oxfam first)

... the tm was later rejected and have never heard from them since.

Robert

 

[Ashton]

To help people understand the situation, heres a similar situation (this is just an example!)

Lets say the domain was:
"freerefillrestaurant.co.uk"

Now imagine a restaurant was doing a campaign for free refills in its restaurant.

In my view the restaurant would have NO right to demand that url.


Please note: This domain is NOT his domain, its just a domain of a SIMILAR example.

 

[chuckylefrek]

Thanks - you are all really helpful.

In answer to the question, the trade mark was submitted in August this year so I assume it has not been approved yet. Though it has been submitted by a trade mark attorney so you would imagine they know their carrots from their onions.

Thanks Ashton for the great comparison

 

[unusualdomain]

Thanks - you are all really helpful.

In answer to the question, the trade mark was submitted in August this year so I assume it has not been approved yet. Though it has been submitted by a trade mark attorney so you would imagine they know their carrots from their onions.

Thanks Ashton for the great comparison

August this year means that the trademark is unlikely to have even got to the publication stage. Once it has got to the publication stage then there is a two month period(at least) where people can object. Only after this is it granted. Oh that's for UK trademarks, not EU ones.

It sounds to me as if this company is trying to scare you into handing it over.

 

[chuckylefrek]

Thanks!

What surprises me is the name ("mark text") that they are trade marking seems to contravine the names that are allowed to be trade marked in the UK. I was under the impression you could not trade mark a name that describes the service.

According to the IPO site

We will not accept marks which:

* describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;

So it is perfectly understandable how a name like "WH Smith" can be trade marked but this trade mark to me seems like the equivalent of a bread maker trying to trade mark "we make bread".

I assume that if they were able to succeed then no other bread making company could use the text "we make bread" on their website or other material.

I am no expert on trade marks so perhaps I am misunderstanding the rules.

Anyway it is great news to hear that it is possible to object to trade marks

 

[woopwoop]

The thing about trademarks is that you don't need to have one registered to protect it.

So details like application date (in this case) aren't important. The key things are:

1. Is the phrase/word in their name protectable (trademarkable)? Or are they to generic?
2. If they do have a claim on the word/phrase, in which classes? Just because 'three' occupy the mobile network area/class you could still launch a company called three in something unrelated.
3. The difference between registered and unregistered trademarks is slight. The main thing is that there is a documented date of first use. But as long as you use a name in business/trading and have dates (such as when you put an ad in the local paper, or the dates that you ran an ad with that name through adwords, or history of us of that name in the way back machine - archive.org) then you can demonstrate something called 'unregistered trademark protection'. This trumps a registered trademark with a later date. A registered/unregistered mark must also be used to keep/establish the protection.
4. You can use the TM symbol next to any unregistered trademark, but you can only use the 'r' in a circle next to registered trademarks.

 

[Ashton]

The phrase is generic, is used by pubs around the country and they have no claim to it.

This is a joke imo, they are just trying to scare you. Write them a letter stating your price and that you will not be threatened by a TM Attorney.

 

[chuckylefrek]

Thanks Woop Woop and Ashton.

Btw the letter did refer to the fact this "name" was protected by "common law" trade mark rules. I would have thought that common law trade marks in the UK have similar requirements in terms of not being generic.

It is reassuring to know that this could just be a scare mongering tactic but rather alarming that a reputable trade mark attorney would stoop this low. I guess they will get paid whatever the outcome


Thanks again!

Paul

 

[woopwoop]

No probs Paul. btw - i don't know what the domain is (I don't think you posted it in the thread) so always be careful. If you're in the wrong, then it'll cost you a minimum of a grand to backtrack and pay the costs of their solicitors letters.

This is a joke imo, they are just trying to scare you. Write them a letter stating your price and that you will not be threatened by a TM Attorney.

To mitigate losses and protect yourself, I think the best approach is to leave emotion out of it when dealing with solicitors and other companies.
Instead of saying something like 'I'll not be threatened...' it may be safer (and stronger) to say 'I don't believe you have a right to this domain because...'

Just my opinion but when fuel is added to the fire, usually the solicitors win.

 

[Ashton]

Yeah woopwoop is 100% right, 'wont be threatened' isn't a term you should use in a professional letter.

I wonder what people think is the best way to respond to this?

A letter back, saying what? Or nothing at all?

 

[ABCV]

Why don't you put in an objection to the TM application because you are also using the trademark?

 

[chuckylefrek]

Thanks Capital Domains.

I am not actually using it as such as my domains are just displaying the ISP default holding page. So essentially it is just the act of owning these domains that is now my crime punishable by being forced to transfer them.

I would expect the trade mark will be rejected based on my enquiries regarding trade marking another similar generic phrase but I could be wrong.

The law is so confusing! From what I can gather, I could in theory go and demand a .com from some company that is not using it as I own and am using the .co.uk. If only it was that simple as when I enquired about purchasing such a .com I was told the owner was accepting offers in the region of $XXX,000.

Anyway the domains this thread concerns are absolutely no use to me so I think I am going to just bend over backwards and save myself the stress and possible loss of money.

Thanks for all the help.

Paul

 

[chuckylefrek]

I have crumbled! I have cancelled the .co.uk via Nominet.

Can I do the same for a .com?

 

[dashu1]

I don't think just dropping the name will get you out of the mire if they have any claim.

I could be wrong, but I'm sure that just dropping them could still leave you with problems?

 

[Ashton]

Shoulda transferred to them if you were bending over.

Its a pity your bending over, but I understand the risk.

Really its a ridiculous claim and it's a pity they didn't just offer to buy it, instead of hiring a TM attorney.

 

[chuckylefrek]

Eep that is not what I want to hear. Anyway too late now - it has been dropped. They can't exactly say I am doing anything wrong if I don't even own the domain surely???

 

[Ashton]

Nope, just think it was cheeky!