Legal challenge - advice needed

[4Media]

I've had an email from a company asking me to handover a domain I have built a minisite on saying that the name is a registered trademark and to hand it over or face legal proceedings
Should I just give them the domain or do I have a leg to stand on?
If anyone has any experience of this kind of think or can provide advice on this matter via PM I'd be happy to share the details.

 

[EdwinEdwin is verified member.]

Check if it is a trademark...
Intellectual Property Office - By mark text or image

If it is, is the domain name also 100% generic (i.e. a normal English word or phrase, like you'd find in the dictionary)?

If the answers are "YES" and "NO" respectively, then you're probably better off handing it over. Any other result, and it's down to your appetite for a fight...

 

[4Media]

Thanks for that Edwin.
Just received a phone call from their solicitors. I dont have the time or the resource to challenge it so I'm going to have to hand it over. Gutted. This is the first real kick in the knackers I've had since getting involved in this game. Going to sulk now and feel sorry for myself

 

[retired_member11]

Thanks for that Edwin.
Just received a phone call from their solicitors. I dont have the time or the resource to challenge it so I'm going to have to hand it over. Gutted. This is the first real kick in the knackers I've had since getting involved in this game. Going to sulk now and feel sorry for myself

Don't do that just yet my fine fellow. What's the name?

 

[acceleratoraccelerator is verified member.]

Feel free to PM me the name and I'll give you my opinion.

Rgds

 

[GreyWing]

Depends what it is mate, if it's a good name get some advice off someone on here. If it's a blatant TM, then fire it back.

If you are really annoyed with them don't want to hand it over, surrender it back to Nominet instead.

 

[retired_member11]

Someone been popping the sake again?

Without knowing the precise details no form of advice on here is valid. Feel free to PM me with the details.

 

[4Media]

- thanks for your replies fellas. I'm handing the domain over, its an error in judgement on my part so no point fighting it.
A lesson learned I put it down as.
The whole episode has motivated me to create a blog and I'll post the gory details on there. I guess I need to reg a TM free domain first though
Have a good evening all.
Alex



Follow me on Twitter "4media"

 

[crabfoot]

Well, I suppose it is too late now - but this is how I see it.

Handing it over costs you money - and it is obvious they wanted it.

If you were intruding on the area of trading covered by their trademark, it is a "gotcha", but, despite the legal threats, "rolling over" too easily is never a good idea.

A minimum of ceasing and desisting is required, so, if you are intruding on their trading area, you take the site down, or change it to dress-making, or something else that is nowhere near their trading area.

Now, just to give you an idea of their costs, the specialised solicitor will cost them at least £250 an hour, probably £600. If they have to take you to court, they want to win, so they might also employ a barrister - that's £625 an hour. To prepare a court case they will have about £2k of lawyer costs, not considering the work going on inside their office putting the evidence together. And remember, there are time considerations - Bill Gates made millions because it took years for the cases against Microsoft to come to court.

That telephone call to you probably cost them £125, and they consider that well spent because you are "rolling over".

They were remiss in that they did not register the name for themselves. They want it.

If it were me, I would offer it to them for about £1,200, which is about half of what it would cost them to recover it through the courts, and then reduce that a little during negociations - but not much.

This is business. Even the lawyers have an obligation to do things the quickest and cheapest way possible for their clients. You may not have a hope if it goes to court, but you owe it to yourself to squeeze as much as possible out of the situation.

Remember, those people are paid to intimidate you - but as professionals, they are unlikely to "send the boys around". They want the quickest, cheapest solution. You handed it to them, but you might have done better.

As an incidental matter, it occurs to me that it would be a good idea to call the lawyer's office and find out the hourly rate - or, if you are really cheeky, ask during the telecon!

 

[4Media]

yeh, but had I put up resistance and was taken to court as a result surely I would have left myself exposed to being prosecuted and subsequently fined?

I have another site which kind of falls into the same category, it's already earning $30-$50 p/m in Adsense and this week it hit page 1 of Google for the main search term/keywords.

What do you recommend I do with that site? Should I just keep the site ticking over or could that result in facing a fine for profitting from a site I now know is a reg TM?

 

[4Media]

oh, and another thing...
Would adding sub text along the lines of "the unofficial guide to <name of sporting event here>" in any way negate the chances of a legal challenge?

I see loads of sites deploying similar tactics but dont know if it holds any water?

 

[springer]

Consider the classes that the trademark is registered in. You could still use the name for something else not related to the classes registered.

For example, Polo: polo mint, polo car, polo shirt.

All depends on the trademark.

Although changing the subject of the site will likely damage your earnings and traffic.

Adding 'the unofficial guide to...' may well play in your favour somewhat if you did not earn money from it, otherwise you are not really showing good faith.

 

[domainking]

handing over a name without a fight just gives lawyers more points to them.
your a fool for handing it over unless its a blatant TM even then would still not hand it over.

 

[aZooZaaZooZa is verified member.]

PM me the name and I'll give you my opinion, unless you've already 'rolled over'.

 

[TinkyWinky]

If it were me, I would offer it to them for about £1,200

Nuts mate ..... try £200+VAT.... works every time for me when I have accidently realised I have a TM or something that someone claims ( a very different kettle of fish) is a trademark..... and I've had about 10 letters

That amount is so small it will cost more for them to get the lawyer to write the letter back to you - I always try to be as professional as possible and say that whilst I have done some work on the domain planning and business plan, I realise that they may (always put 'may') have a claim that I want to resolve amicably and quickly.....

I always state the price and the fact I want to co-operate and each time in the past year or two I have received a very positive letter back with either a cheque or a PO to raise an invoice...

If it is a TM / Name etc.... hey £200 is good beer money for the £6 - £10 it probably cost you in the first place

Don't be greedy...

 

[crabfoot]

Well, I can understand that asking £200 saves effort - but I always work on the principle that the first offer is never the best - like with insurance companies if you "total" the car - so ...

You have to guess what it will cost them to pry it away from you, then go for a sum in-between that and zero. If £200 makes you happy, that's OK.
And what might happen does depend on whether you've infringed upon their trading area.

In the realm of sports, everyone has the right to express an opinion. Declaring the site "unofficial" can cover a multitude of sins, and it is hard to comment without knowing all the facts.

It all comes down to how you are hurting the TM holder. If what you are doing is DIRECTLY costing them sales, they could claim for the loss in court. Anything else will be harder (and more costly) for them to claim for.

If your site infringes on the areas that are trademarked, they can ask you to cease and desist from trading in those areas, and for compensation for loss of trade (that's the "crowbar" - they will usually take the domain in lieu of the compensation). If it is going to be hard for them to prove "loss of trade", the more likely you are to get a good price for the domain.

If you are using the site for purposes outside the TM area - say, using ajax. co.uk for Greek history - you can ask them to make an offer - or tell them to jump in the Thames, they can't touch you for it.

Prosecution? Let us be realistic, unless you are making a lot of dosh out of the site fraudulently, the Serious Fraud people will not be involved - so the affair will remain a civil matter unless loads of money have come your way, instead of to the TM holder. It is a possibility, but not likely.

Ask the lawyer that rings you up - it is illegal and unethical for him to lie to you. If you ask him questions, he has to give you his £600 per hour advice for free - so next time, ask the right questions!

 

[4Media]

well, I have 'rolled over'. I closed the site down last week. They asked for me to transfer it to them and I said I would only do so if they paid me the reg fee of £6. I havent heard from them since.

I understand that them persuing the matter further would cost them but assuming I challenged their decision, went to court and lost, would I have had to reimburse their legal fees + pay a fine?

The site was only making $40-50 p/m but sat nicely in my portfolio requiring no maintenance.

I'd like to hear if anyone has had to pay-out having built a revenue earning site on a TM domain.

As I say I have several domains in that genre, I'll give you an example, I own "British Grand Prix dot org dot uk" which I found out after I reg'd it that that's a TM domain too. Now, if you were me would you bother spending 2-3 hours building a minisite+Adsense on that domain or is it too risky?

Now, say the TM holder saw this site (if developed) would they always seek an out of court compromise for me to remove the site or is there a chance they would go in heavy handed and just send me a summons? ie, do you always get a warning beforehand, a yellow card if you like - or has anyone had a straight red?

Again, really appreciate you fellas taking the time out to give me advice on this.

 

[grantwgrantw is verified member.]

I understand that them persuing the matter further would cost them but assuming I challenged their decision, went to court and lost, would I have had to reimburse their legal fees + pay a fine?

Indeed, it's all well and good people saying fight it, ask them for £xxxx etc etc but if you do start messing with them / fighting it they could say f*ck it we'll see you in court (in which case you will need expensive legal advice) and when you lose we'll want all our costs paying and then consider whether we'll take you for damages too.

Anyone who risks big losses over a TM domain/site making $50 a month needs their head looking at! You did the right thing IMO.

Grant

 

[crabfoot]

Like I, and others, said before - it is not possible to predict the likely outcome of court proceedings without knowing how you were damaging their trade. And Grant has a point, although you would have to be dealing with complete nutters ready to throw money down the toilet, if your negociations ended in failure.

They have not taken you up on your generous offer to sell, given a week - so we might presume that the lawyers were asked to get you to cease and desist your activities, they have done that, and the client is satisfied.
In the meantime - I would rapidly "sell" that domain to someone close to me (eg. my wife), and let her put up site content which is unrelated to the activities of the TM holder, and cannot be construed as damaging their trade.

If, for example, the site is then selling sporting equipment, and the TM relates to an event, they can't touch her for that. But she has no association with the legal stuff, or your original offer to sell - so if they really want the domain, they can pay her "through the nose" for it!

This is also a protection if they are taking the matter further, legally - which might be vaguely possible if you have heard nothing. It gives you "leverage" if the domain is formally out of your hands, but actually in your control.

Regarding your undeveloped British GP domain - the first thing I would do with that is to approach the trademark holder, tell them that your intention is to run it as a minisite with Adsense, offer them a free link to a site of their choice, and ask if they have an Affiliate Program so that you might make a shilling or two on the side from that link. I don't know who owns the TM, but I would guess it is the F1 people, and the term is used for motorcycle and equestrian events, so they will be aware that you have other possible uses - spell it out to them.
Get on the right side of the TM holder before you do anything, or orient the site to areas outside the compass of the trademark, and you are doing no wrong.