Legal action being threatened

[disruptive]

I regged a .co.uk name back in June 2004. The name was not trademaked then in the UK as evidenced by the trademark database. However I now have a letter from the solcicitors of the company which runs the .com threatening legal action. They state that they have the trademake - which they do. However the trademark was filed *after* my registration of the name. they are then asking me to transfer the domain within 10 days or they will take legel action.

Does anyone have any thoughts or advice?

 

[tifosi]

because they own the trademark to a domain DOES NOT mean they own the rights to the domain. But how valid a drs against you... which is the only way they can get the domain from you depends on a number of things. And the onus is on them to prove this.
1. did you register the name to block or cause disruption to their company or use of the domain.
2. are you using the name as passing off against their company.
3. are you using the domain as a valid use? parking and web advertisement isn't pretty but it's a valid use.
4. is the name generic?

Solicitors like sending threatening letters. Makes then feel better about being sad little pringle wearing people. A decent IP solicitor wouldn't have done this. Not at least without a vlaid case first.

Check the nominet policy/procedure on the nominet web site
S

 

[michaeltoth]

because they own the trademark to a domain DOES NOT mean they own the rights to the domain. But how valid a drs against you... which is the only way they can get the domain from you depends on a number of things. And the onus is on them to prove this.
1. did you register the name to block or cause disruption to their company or use of the domain.
2. are you using the name as passing off against their company.
3. are you using the domain as a valid use? parking and web advertisement isn't pretty but it's a valid use.
4. is the name generic?

S

Check out bounce.co.uk appeal and all this is thrown out of the window.
"parking and web advertisement isn't pretty but it's a valid use." not a valid use according to the expert decision.
everybody should now be worried

 

[grandin]

Hi

Hello Michael, thats funny just sent a PM to disruptive...funny how we both replied to him...anyway hows the bounce bouncing?

Lee

 

[disruptive]

1. I was using it generically.
2. At the time of reg, I had no idea they existed as a company.
3. Never tried selling it to them.
4. I do have namedrive ads on the site.

 

[olebean]

Check out bounce.co.uk appeal and all this is thrown out of the window.
"parking and web advertisement isn't pretty but it's a valid use." not a valid use according to the expert decision.
everybody should now be worried

Can we get this clear.....


Michael are you suggesting that dispite Nominet suggesting that PPC is a business usage, and so you cannot opt out of whois, it is now suggested that it isn't a valid business usage?

If thats the case, thats as clear as mud!

OB

 

[grantw]

Michael are you suggesting that dispite Nominet suggesting that PPC is a business usage, and so you cannot opt out of whois, it is now suggested that it isn't a valid business usage?

OB

An excellent point olebean.

grant

 

[olebean]

??????????????????

 

[tifosi]

Check out bounce.co.uk appeal and all this is thrown out of the window.
"parking and web advertisement isn't pretty but it's a valid use." not a valid use according to the expert decision.
everybody should now be worried

webservers & cyclone + others say differently. It's all in the expert decision and the information they're given. Yours was unique to a degree because of the non-response (mail/no-mail).

I hope the meeting last week that discussed drs have some impact on this, because litigation by companies who presume a right to the domain because they get a retrospective trademark in a certain class will be more frequent.

And I meant is the domain generic (e.g glosspaint & not dulux - sorry diying, all I could think of) and not being used generically.


S

 

[domaingenius]

To give any meaningful reply one would need to know the domain names in question. Catch 22 I guess as you may not want to publish them on here.
This is just another sign of what I guessed is going to happen more and more as domains get scarce ,people then decide they want to get "a" name and will try drs and Court to get it.

DG

 

[disruptive]

I am not going to roll over and play dead. I believe that if there is any justice, use comes before TM - (I had the dn before they TM'd). If this is going to get prevalent, then perhaps I'll call my company sex.com and go after that domain....

makes a mockery of common sense and the law.

 

[olebean]

people then decide they want to get "a" name and will try drs and Court to get it.

DG

DG

That was part of the discussions last week ironically time illuded with the domination of DRS. One question that was not asked was where or not Nominets T&C consider PPC as "valid and Proper" usage.

Ironically, if i recall correctly, Beasty suggested that PPC is considered in legal terms to be valid. I cannot recall any Nominet Rep stating anything to contradict that statement........

Lets hope someone from Nominet enlightens us!

 

[grandin]

either way a problem exists

dis you wrote : I am not going to roll over and play dead. I believe that if there is any justice, use comes before TM - (I had the dn before they TM'd). If this is going to get prevalent, then perhaps I'll call my company sex.com and go after that domain....makes a mockery of common sense and the law.

I agree: does make mockery of common sense and as EURID put it....common sense does not take precedence over the rules

Muddled contract: lets apply your case to the drs. Policy states 3aia that the important date is the date of registration.....however....on a previous case an expert states 'it doesnt always have to be the date of registration'

I wouldnt worry though because the Government sit on the Nominet PAB so I am sure all will get sorted soon

Lee

 

[domaingenius]

I am not going to roll over and play dead. I believe that if there is any justice, use comes before TM - (I had the dn before they TM'd). If this is going to get prevalent, then perhaps I'll call my company sex.com and go after that domain....

makes a mockery of common sense and the law.

Dont make the big mistake of thinking that there is any justice in this world, coz I can tell you there aint. Simple, if you rely on the Courts or anyone else because you think justice will prevail, you will lose. There is only one person that has your interests at heart and that is you. The way I look at it. If they had a name that they were using to sell,for sake of argument, eggs ,and you come along 6 months later and buy the same name.co.uk and start selling eggs as well, whether they have a tm or not, then you will lose. If however you use it for something else, and the name is truly generic then it is different

DG

 

[michaeltoth]

Can we get this clear.....


Michael are you suggesting that dispite Nominet suggesting that PPC is a business usage, and so you cannot opt out of whois, it is now suggested that it isn't a valid business usage?

If thats the case, thats as clear as mud!

OB

Read the bounce.co.uk decision: http://www.hostfilez.com/download.php?file=971

The exerts have now comtracdicted themselves and think PPC is not OK

 

[domaingenius]

Read the bounce.co.uk decision: http://www.hostfilez.com/download.php?file=971

The exerts have now comtracdicted themselves and think PPC is not OK

Please advise which exact paragraph would lead you to conclude PPC was not acceptable ?. The decision is harsh. I for one would not and did not know that bounce was a trademark and cannot even say id heard of the product. This however is what I suspect is the start of this type of claim ,where companies get TM's and try and grab names through that back door route. This is why the DRS must be brought in to line with TM law, and more to the point simply having a TM should not entitle a complainant to the domain UNLESS the domain owner is stupid or careless enough to use it for same products as the TM exists for(like phone4u)

DG

 

[olebean]

Please advise which exact paragraph would lead you to conclude PPC was not acceptable ?. The decision is harsh. I for one would not and did not know that bounce was a trademark and cannot even say id heard of the product. This however is what I suspect is the start of this type of claim ,where companies get TM's and try and grab names through that back door route. This is why the DRS must be brought in to line with TM law, and more to the point simply having a TM should not entitle a complainant to the domain UNLESS the domain owner is stupid or careless enough to use it for same products as the TM exists for(like phone4u)

DG

DG

I brought this up during last weeks meeting.......... No comment on Nominets side!

 

[bb99]

I brought this up during last weeks meeting.......... No comment on Nominets side!

One would have thought that there would have been some response:

- "it's like that because ..."

- "we shouldn't allign with TM law because ..."

- "that's an interesting point, we're consulting with stakeholders and will consider it as part of the upcoming DRS review"

- "GET OUT OLEBEAN"

Was there really silence / no comment?

 

[Jac]

Please advise which exact paragraph would lead you to conclude PPC was not acceptable ?. The decision is harsh.

Yes it is harsh... but alas... it is a fact of life (and disputes) that all decisions are harsh to anyone but the winner.

I for one would not and did not know that bounce was a trademark and cannot even say id heard of the product. This however is what I suspect is the start of this type of claim ,where companies get TM's and try and grab names through that back door route. This is why the DRS must be brought in to line with TM law, and more to the point simply having a TM should not entitle a complainant to the domain UNLESS the domain owner is stupid or careless enough to use it for same products as the TM exists for(like phone4u)

In this particular appeal, the appeals panel actually seems to acknowledge TM Law in para 8.3.8 when they say:

"The mere fact that a generic word happens also to be a trade mark cannot lead to the trade mark owner monopolising all uses of the word."

However, the crux of their decision seems to be encapsulated in paragraphs 8.3.10 and 8.3.11.

Regards
James Conaghan

 

[grandin]

thats fine james but

ok james thats fine but:-

can you tell me why the remedy was transfer to the complainant? this is a generic domain name with a value well in excess of traffic from the name bounce as a detergent. Would you go online to buy bounce or would you go online to buy bounce when you go to www.tesco.co.uk on your weekly shop..............the remedy is incorrect........michael should give procter £500 for lost click thrus and I will pay michael £5k for the domain name.

sadden by the result and will post in due course

Lee