DRS advice wanted

[ivaname]

I bought the domain name off an acorndomains forum member some time back:
The nuts co uk
I applied for a trademark but on the last day before it would have been granted an objection was lodged by IPC Media Limited (nuts magazine)

I did not respond to the objection because I was informed by the trademark office that I would be liable for any costs of the objector should I lose and I could not afford to pay out a large legal bill.

I received a solicitor’s letter asking me to hand over the domain name which I ignored.

Today I have received a DRS notification from Nominet.

Trade mark NUTS
They complain it is an abusive registration, quoting: The contested domain name is practically identical to the Complainant’s earlier rights, the only difference being the addition of the common pronoun THE.

I really think the above is rubbish and that the domain represents a common poker term as being the best hand available.

Can anyone offer any advice on this one?

Thanks

 

[landlord]

Interesting

Very interesting....

I have looked at your withdrawn application and see the classes do overlap with the complainant but yours is very strong in one area i.e. online gaming....it is possible that the complainant would have to prove that they have strong rights in your specific area i.e. they already have online poker on their website.

A DRS may well be beneficial as I have known DRS experts to comment on whether the two marks would cause confusion. Applying for a trade mark (positive step prior to trading) is not (in my opinion) an abusive act therefore I do not see grounds for hading it over....BUT the name isn't that great so you may wish to give it up to save all the argy bargy

Lee

 

[GreyWing]

I'd disagree with the end of what Landlord says, although I understand why.

I would have said the name was poor aswell but I remember it being on the Dragons Den last year as something to do with the "The Nuts Poker League" and a well known term in poker.

It's got to be worth a £x,xxx plus IMO

I think as long as you explain what you were aiming to do with it (online gaming) to the DRS then you shouldn't have any problems.

All the best
GW

 

[grantw]

Like you say, its a pretty well known poker term and you're using it for a poker website. Unless you've had a parking page on it in the past with adverts to other magazines etc. then I can't see you losing this at a DRS - those experts make some crazy decisions though!!

Grant

 

[Admin]

I would make a strong response on the basis that it's not "abusive" as you are using it for a different subject to that of the complainant.

Make sure you backup your case with printed materials, logos, printouts of your website showing poker related pages.

This will impact the decision more than just writing a letter.

Admin

 

[landlord]

Didn't know

I didn't know that it was a poker term and therefore I agree with all respondents AND it then becomes a highly sought after name and as long as you keep your proposed use very narrow i.e. online poker gaming then I think you should be able to defend this attack.

Applying for a Trade Mark is not an abusive act in relation to the DRS (my layman opinion)....if however you started trading and a DRS considered such use to be abusive then you would lose it. OR if you used the Trade Mark Application as a means to extract money from the complainant then that could be abusive.

In respect to your Trade Mark application it is sad that you had to withdraw your application due to financial reasons BUT my recent attempt via the Patent Office to get them to realise that registrants have rights and they need an easy and cost effective way to protect their £10 domain names fell on death ears....In fact in a recent decision they spent 14 pages defending their processes with an eventual saying that we expect you to get legal advice and employ a Trade Mark Attorney..

Furthermore, all registrants should be aware that no rights are given at the point of registration (according to the Patent Office), however this does indeed differ to that stated to me by Nominet...i.e. Nominet state that a registrant (on registration) gains a right to derive the benefit of the domain name use (subject to infringement blah blah blah).

Lee

 

[rob]

"The nuts" means poker to me, as there is the league that was on the Dragons Den - bloke from Wrexham

Nuts magazine is 'Nuts' not 'The Nuts' , likewise the term 'the nuts' is quite common

I would fight it - is there any pattern of abuse or previous DRS decisions?

 

[ScottJ]

Yep the nuts is the best possible hand in poker, Ace Ace before the flop so I'd go all in on this one and call their bluff

 

[ivaname]

Thanks all for the response.

is there any pattern of abuse or previous DRS decisions?

Yes i have one recent DRS decision againt me, I did not respond.
This is mentioned in the complainants statement.

will this way heavily against me?

 

[GreyWing]

Hi Mate,

Personally the name has a fair bit of value, If you are worried about DRS, ask or pay someone on this site to respond for you.

It's worth the investment and the real experts are on this forum.

Your previous decision may or may not go against you depending on what it is. But I think this name is strong enough to stand on it's own.

All the best
GW

 

[SF]

Hi Brendan

As you know I was the seller - and we both know that the traffic was purely "poker" related.

I am fairly confident that you should win this case.

Do we all remember when i got it and it was doing mega traffic, it was all for poker"

Please keep us posted as we can all offer the best advice, already the experts on here have givern there thoughts

Good luck, and stick to your guns, its poker and Brendan, when you win, dont sell them the name cheap

All the best from your fav seller

 

[landlord]

Prime Case

This is a prime case where the guy with less financial resource should be protected....his small investment should be protected against the paper backed magazine.

Rob, why don't you suggest to Nominet that they should encourage IP lawyers and trade mark attorneys to tout for business on nominets website stating whether they will consider a no win no fee deal.....if Nominet dont except this then clearly they are biased towards their drs experts who unduly publicise their services

It would be good if we had Mr Michael Silverleaf conduct the DRS on this case....as fascinating as Mr Willoughby...

I see a bit of ego boosting stuff between Silverleaf and Willougby...who can act in the most honourable way and sort out the DRS...

Indeed who is going to have the balls to state that transfer is unlawful when the complainant does not have unequivocal rights..

Lee

 

[retired_member3]

I say we all gang together to come up with the defence and can have a whipround for funds. Could actually get a bit of pr for it. The press would love a story of domainers v nuts magazine!

 

[landlord]

Thus can only rely on Mr Silverleaf

One most rely on Mr Silverleaf to sort out the DRS....

thenuts may have taken the correct approach i.e. to withdraw its TM application....opposition can be very complicated and 48 pages long http://www.ipo.gov.uk./tm/t-decisionmaking/t-challenge/t-challenge-decision-results/o07808.pdf

Lee

 

[Beasty]

Rob, why don't you suggest to Nominet that they should encourage IP lawyers and trade mark attorneys to tout for business on nominets website stating whether they will consider a no win no fee deal.....if Nominet dont except this then clearly they are biased towards their drs experts who unduly publicise their services

Oi - there already is one lawyer here who takes on fixed fee DRS cases!

Happy to do my usual free appraisal Brendan - I have PMed you my email address if you want to do that.

Incidentally, the costs in TM opposition hearings are generally fixed quite low and quite a bit less than what the winning party would pay to be represented - it is not the same as in court. Also, it is possible to amend an application to accommodate the basis for the objection, often still leaving you with a useful mark and no opposition hearing to take part in.

All the best

Jim

 

[ivaname]

Hi Jim

Thank you for your private message.

I have sent you an email

Best wishes
Brendan

 

[ivaname]

I have decided to defend this DRS myself.

Is there anyone on this forum with advise on the points I should stress in my defense?

 

[GreyWing]

If it was a £50 name represent yourself, but why take the gamble on this one. Personally I'd listen to Beasty and use him, he's all but guaranteed to successfully defend this one.

However one wrong word from you with regards the DRS response and they'll use it against you. Seen too many crazy decisions from the panel to risk a decent name like yours.

GW

 

[afx]

Agreed - makes no sense in going it alone on this one with this one.

Depending on what stage you're at in the DRS, if you submit a solid defence by someone like Beasty they may not even pay for a decision. I would guarantee that some bod at nuts magazine wont have raised the DRS, it will be a lawyer / solicitor instructed to try and fleece your name off you. It's highly likely their lawyer is reading this thread thinking to themselves great, he's defending himself. If I was you I would be getting this thread locked.

 

[ivaname]

Thanks to the last 2 posters but I have to go this on my own.

Is there anywhere I can see a good example of a DRS response?

anyone with advice please PM me?