Help with Legal email .com and org.uk

[dragon]

I've got a generic site on a org.uk and have received an email from solicitors of the owners of the .com site, demanding that i change my business name because it's infringing on their rights/tm. They are claiming that I am 'passing off' as them.

They have a TM for "xyz.com" but NOT xyz or xyz.org.uk - dont really want to go into too much detail but glad to receive opinions of other members via pm.

Thanks
Matt

 

[scooter]

Sorry,
i posted here. PM sent.

 

[dragon]

Sorry,
i posted here. PM sent.

Thanks, just replied!

 

[Frog]

I've got a generic site on a org.uk and have received an email from solicitors of the owners of the .com site, demanding that i change my business name because it's infringing on their rights/tm. They are claiming that I am 'passing off' as them.

They have a TM for "xyz.com" but NOT xyz or xyz.org.uk - dont really want to go into too much detail but glad to receive opinions of other members via pm.

Thanks
Matt

If they've trademarked "creditcards.com" then they have absolutely no claim over you building www.creditcards.anything - its a generic, descriptive phrase.

Are you sure the complaint relates to the domain itself, and not what you've put on it? I would deliberately go with completely different colour schemes, layouts and so on. With a similar domain I wouldn't want to rack up legal bills if they are saying the "passing off" relates to you making your website look like theirs.... even if you won you'll have a pile of bills and wasted time

 

[prkeating]

Did they obtain the tm before you registered your domain?
What are the goods/services of yours vs theirs? Make sure they are as different as possible using a different layout, color scheme etc as noted in the prior post. Try to dig up any history you can about your domain and theirs to see how they were used in the past.
I presume their tm was registered in the UK (they are using solicitors). Your best argument is that by specifically filing the mark to include the [dot]com, they chose that specific extension over all others and did so knowing that other extensions existed. I suspect the [dot]com was used because the generic would have been otherwise rejected as a tm registration.
If you need further views send me a pm.
Good luck
Paul