domain for a limited company (TM pending)

MDUK · Oct 20, 2005

I have submitted a trademark application for the name of my limited company. I hoped to register the domain but the .co.uk of this name is suspended (it is also pre-nominet registration) Nominet have advised that I cannot challenge ownership until it is registered to their terms and conditions.

I know there is a fair chance someone will catch this name when it is released or the original registrant will sign up to Nominets T's & C's (he only became aware it was still in registered in his name when i contacted him to see if he would transfer it to me (naive or what!). What chance do I have of claiming it ?

retired_member9 · Oct 20, 2005

if it is a dictionary word I think you have little chance..

domaingenius · Oct 20, 2005

None at all I would guess.
DG

aquanuke · Oct 20, 2005

The current owner can still renew, although he has to pay a charge.

Why dont you ask him to sell you the domain seeing as you have already been in contact with him.

Most drop catchers have honed the mythical art of removing blood from stone. ie gonna cost you alot more wonga to buy it from a catcher.

MDUK · Oct 21, 2005

Thanks, sound advice, it is definitely going to get caught. I guess the question is how much do i open with. He registered it years ago, internet archive shows he has not used it for 3 years, its an OK name but limited appeal. I guess it's got to be enough for him to bother filling in the transfer forms but low enough that i can afford it. I know that's like asking 'how long is a piece of string?' but if sold.co.uk went for £1000 its nowhere near that good!

£200, £100, more?

rob · Oct 21, 2005

sold.co.uk was a bargain.

If its a single word prenom then probably looking at a few grand if not more.

MDUK · Oct 21, 2005

Sh*t :-?

BTW, tried to call you today, i'll drop you a mail.

Ellis · Oct 21, 2005

Doesn't trade marking take ages? I've heard applications can take upto 18 months and are very costly?

retired member 1 · Oct 21, 2005

Also bear in mind, if the domain is caught before your TM becomes effective, or the original registrant decides to keep the name you cannot challange ownership based on your TM...simply because the domain could have never been registered in bad faith as at the point of registration your TM didn't exist.

So with this method you really don't have a leg to stand on, your options are catching the domain, offering the current registrant money to renew and transfer the name...or paying top £'s to the person who catches the domain.

texidriver · Oct 21, 2005

see,

http://arbiter.wipo.int/domains/decisions/html/2005/d2005-0825.html

MDUK · Oct 21, 2005

Thanks guys, a lot of good advice here. i am going to call the registrant and ask the question!

Michael Penman · Oct 24, 2005

J2theIZZO said:
Also bear in mind, if the domain is caught before your TM becomes effective, or the original registrant decides to keep the name you cannot challange ownership based on your TM...simply because the domain could have never been registered in bad faith as at the point of registration your TM didn't exist.

Not necessarily so. If it's a .uk name then the DRS looks at 'abusive registration' rather than 'bad faith'. A registration can become abusive in use, regardless of whether it was abusive at the time of registration.

An example: I register a domain name in all innocence, then you register a similar trademark. I then use the domain name to cause you unfair detriment by deliberately profiting from confusion with your trademark, or attempting to sell it to your direct competitor. This might well be enough to lose me a DRS case and for you to gain the domain name.

retired member 1 · Oct 24, 2005

Michael Penman said:
Not necessarily so. If it's a .uk name then the DRS looks at 'abusive registration' rather than 'bad faith'. A registration can become abusive in use, regardless of whether it was abusive at the time of registration.

An example: I register a domain name in all innocence, then you register a similar trademark. I then use the domain name to cause you unfair detriment by deliberately profiting from confusion with your trademark, or attempting to sell it to your direct competitor. This might well be enough to lose me a DRS case and for you to gain the domain name.

Agreed, I guess it's all down to the use of the domain.

Hard to tell in this case if the DRS would stand up though without having further details.

MDUK · Oct 24, 2005

i have spoken to the registrant, he says he sold the company (that used the name) years ago to another company and therefore they should own the domain. He is currently completing the paperwork to have it changed to them.

The domain has not been used for 2/3 years, the company that was sold originally have wound down that particular company, in the interim i have set up a limited company by this name and have submitted as a trademark.

It looks like it is going to get transferred to this other company and then i am going to have to take it through adjudication at nominet.