Could extensive TM rights grab .uk domain?

keys · Mar 25, 2014

Could the rights of a co.uk domain (to matching .uk) be trumped by a Trademark holder?

Here is a scenario,

****.co.uk registered ten years ago, not a generic name but no conflict at the time with any business or TM rights

The name has subsequently been adopted for a major global product, over 180 million units sold at an average price of several hundred pounds.

****.co.uk has automatic rights to ****.uk, but there would be no point in registering ****.uk

If the TM holder had grounds to claim ****.co.uk I am sure they would have done so. I wonder what their position would be if ****.uk is registered.

The TM holder has no interest in buying ****.co.uk and the domain will not be gifted to them. I have a charitable third option if they would like to get in touch.

I expect most Acorn members can identify the name in question. There are no prizes for posting the domain, and doing so would probably not be helpful to us or Admin.

bensd · Mar 25, 2014

If the .co.uk was originally registered in good faith, I can't imagine registering the .uk now could be seen as a problem?

anthony · Mar 25, 2014

Surely its the use that is the issue anyway?

keys · Mar 25, 2014

Registration of ****.co.uk has been unchallenged in 10 years, so I think it is fair to assume that is ok

If ****.co.uk could be registered today it would be asking for trouble, a Google search of the product name returns 580m results, there are practically no other uses or meanings.

Since ****.uk would be a new Registration it would be subject to current circumstances, where the organisation in question could claim exclusive rights to the name. 10 years ago they had no interest in it.

stellar73 · Mar 25, 2014

I would assume that by exercising your right to register a .uk (where you own the corresponding co.uk) then all you are doing is extending the same right which is embodied in the co.uk. In other words if you registered the co.uk in good faith - in this case at a time pre-dating the trademark - then that same good faith/ rights surely must extend to the .uk registration too.

I don't know this for sure but it seems logical as if Nominet were going to allow this scenario to be viewed in any other way (eg one which favoured latter day TM holders) they surely would be opening the floodgates to a whole load of legal trouble, eg people would be creating TM's left, right and centre in order to grab .uk rights from legit co.uk owners.

jim1 · Mar 25, 2014

keys said:
Registration of ****.co.uk has been unchallenged in 10 years, so I think it is fair to assume that is ok

If ****.co.uk could be registered today it would be asking for trouble, a Google search of the product name returns 580m results, there are practically no other uses or meanings.

Since ****.uk would be a new Registration it would be subject to current circumstances, where the organisation in question could claim exclusive rights to the name. 10 years ago they had no interest in it.

Just a thought, if someone else registered ****.co.uk 10 years ago, and also registared other names at the same time; if they then saw the new .uk domain lauch and registered them all as they did ten years ago this would show a pattern that I would have thought under a DRS complaint show merit and would be their reason to registrar them; the same reason as they did ten years ago none registered in bad faith then or now.

Be very interesting to see a test case when this happens as I'm sure it will.

PaulGregory · Apr 30, 2014

Nominet's own WHOIS says

Right of registration:
****.co.uk

So at a simple level, that's the right that counts.

The new .uk may awaken interest in the TM holder. You might find that they have changed their tack in recent years, for example acquiring the .co.uk for their main trademark and the equivalent .de to your domain - but I doubt ownership of the .uk domain would make any significant difference to the number of people that buy the product.

One could assume that the TM holder would seek to register the domain when the .co.uk right expires so registering the .uk just before the deadline may thus seem more 'wrong' than registering the .uk at your earliest opportunity.

However, other people may also seek to register ****.uk when it is available, so you could potentially offer to use your right to ****.uk to _avoid_ the TM holder some future trouble?