Domain Dispute Without a Trademark

[Adamdannut]

Hi guys,

I'm trying to acquire a .co.uk domain for a client, but his business name isn't trademarked.

My client owns the .com domain, and has been trading with his business name for a number of years. However, a couple of years back he lost his .co.uk domain to a rival company. Now his rival has a redirect set up at that .co.uk domain.

I'm confident that we could dispute the domain if my client owned the trademark. However, there is no such trademark, and this rival company is now getting traffic via my client's business name.

Would a domain dispute be unsuccessful without a trademark, even if it can be proved that this rival is using my client's long standing trading name to gain traffic and potentially clients?


Let me know if this makes sense or if you need more information.

Cheers.

 

[keys]

Hi Adam,

Welcome to the forum.

To be successful in a uk domain dispute your client would need to clear two hurdles by providing evidence that,

1) The Complainant has Rights in respect of a
name or mark which is identical or similar to
the Domain Name;
and
2) The Domain Name, in the hands of the
Respondent, is an Abusive Registration.

A registered Trade Mark is helpful, but not necessary.

You can read full text of Nominet DRS policy here,

http://www.nominet.uk/wp-content/uploads/2015/11/DRS_Policy.pdf

 

[Adamdannut]

Hi Adam,

Welcome to the forum.

To be successful in a uk domain dispute your client would need to clear two hurdles by providing evidence that,

1) The Complainant has Rights in respect of a
name or mark which is identical or similar to
the Domain Name;
and
2) The Domain Name, in the hands of the
Respondent, is an Abusive Registration.

A registered Trade Mark is helpful, but not necessary.

You can read full text of Nominet DRS policy here,

http://www.nominet.uk/wp-content/uploads/2015/11/DRS_Policy.pdf

So if I can show that my client has been trading with this name for almost a decade, and has built a recognisable brand, would that show that they have rights?

 

[keys]

The first hurdle, demonstrating rights, is usually a formality. Evidence of several years of trading under the name would be sufficient. The second hurdle, to show that the domain has been used to take unfair advantage of the Complainant's rights also requires evidence. It is important to understand the policy to make a strong case. As far as possible, expert decisions are based on facts not opinions.