legal threat - is this a joke?

[whitetoo]

Hello domain gurus,

I am seeking advice on a letter that I received today from a law firm acting on behalf of a company which has a very similar domain name to me.

I registered the domain back in 2007, since then a very small site has sat under the domain name, purely for SEO purposes. I haven't had much time to dedicate to the site, therefore the activity is minimum boarding on inactive.

In this letter I received, they state that their client's company is the largest in the UK and has been trading since 2006 and that people hitting my site will be confused with their business and it's a misreputation, and that the company have not given me permission to operate a website that is similarity named to their own.

I want to point out that the website does provide a similar service at a much reduced cost, all the content is mine and the cosmetics and logo are completely different, it's been operating since 2007!

The client has instructed the law firm to take all steps necessary to prevent any continued infringement and will be taken to the High Court if I do not abide by the terms.

1. Don't register any other domains which are similar to their business name.
2. To immediately transfer my domain to their client.
3. To pay all costs to be assessed if not agreed in relation to the infringing activities.

Is this some kind of joke? Surely if this was a High Court case half the internet sites would be wiped out?

I have certainly not set out to deliberately gain business from other sites, the name just happens to be similar and I wasn't aware of the company until this point.

Any comments/feedback or advice as to how to deal with this one would be greatly received. They obviously WANT the domain name, it is of no value to me just a hobby which I registered several years ago but at the same time their bullish attitude has my back up, a legal threat with no prior contact?

Thanks for reading anyway guys, I would truly appreciate any replies.

 

[wb]

How similar are the domains? Is it a 'generic' keyword or a 'brandable' made up one? Is it a .uk?

 

[whitetoo]

Wow wb thanks for your reply.
The domain is a .co.uk - I guess you could make it brandable but it's not a "made up" bunch of words just purely describes the service provided.

As an example, it's something like:
motortrade
biketrader
moneytrader
credittrade

As an example:
they own "biketrade"
and I own "biketrader"

That's generally where it stands.

 

[GreyWing]

Impossible to say with limited info, you are best PM'ing someone like WB on here who will be able to give you a good idea of a likely success rate of defending it.

 

[lomax]

Garry Chernoff recently won a UDRP action that attempted to take (read steal) his domain: Autotrade.com

The complainant was the AutoTrader.com Group in the US.

See here for more info:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0923

He was defended by John Berryhill, one of the best domain lawyers out there.

It's not birds, but it's very similar It's also worth noting that AutoTrader have a trademark for same, whereas the people hassling you don't have a registered TM.

Regards

 

[Ashton]

Chirp Chirp - Worked it out and couldn't find any tm's for it.

EDIT: The reply above mine is gold and a near perfect example!

 

[peter_w]

On the face of it, it doesn't look too good for your domain to be honest.

By the sounds of it, the other company was set up (2006) and was trading before you (2007). From what you have said, your name is basically 1 letter different and you are offering the same service/product. It's unlikely you'd be successful in court, unless you can afford a rather good lawyer.

 

[Edwin]

There is a huge difference between a legal challenge being "a joke" and being "unlikely to succeed on merit". Any time that a lawfirm takes the trouble to throw the book at you, it's worth at least treating their concerns seriously, even if you personally believe they will ultimately fail in their challenge.

After all, by offering no defense or response of any kind, you are dramatically lengthening the odds against keeping the domain name.

You need to take a step back and figure out how much you want to keep the domain name. If it's "enough to pay for a lawyer" then Paul Keating just joined the forum and would probably be a great asset in defending your side of the issue.

If it's not worth bringing in legal representation, then you've got a few more choices:
A) Agree to the demands in full
B) Hand the domain over but disregard the additional terms
C) Argue specific points of their challenge as best you can
D) Do nothing
E) Tell them to... (no, I won't go there - just not my style)

 

[wb]

Worked it out.

AutoTrade(r) is quite a good comparison, which has been commented on previously in this thread.

Edit: Looking at your website though, it's probably a bit of an aggravating factor that you're offering the same service. As a side note, I don't value the domain personally.

 

[woopwoop]

Or just delete the domain.

 

[whitetoo]

Hi guys,

Firstly I really appreciate the time you have spent in your replies.

RE: joke title, I am taking it seriously which is why I am seeking advice, it appeared a joke to me because my site is so small and insignificant in comparison that they'd even bother to waste their time. It is of course worth something to them though obviously, I have a small blog on the site which offers free advice articles which brings some adequate revenue through Google ads.

I don't want to literally hand over my property to a company that's flexing it's muscles. Very frustrated that they want to trample on such a small set-up.
The site itself is rubbish, but it's the domain they want.

Ideally I want them to make me an offer, would you advise against me replying to them myself without seeking a professional?

 

[lomax]

.... and I wasn't aware of the company until this point....

Looking into this again I think your position is weakened to the point of being untenable by the fact that you registered their company name with a hyphen on the same day as you registered your own domain, and their site was already well established by this point.

If this goes legal I think you'll lose because of this fact regardless of any other issues as it shows awareness of them as an entity.

Their (likely) argument is probably going to be: you registered the domain under dispute, plus the same domain with a hyphen, plus their exact domain but with a hyphen, and this was all done on the same day, so you must have seen their domain registration and/or site during this process.

Up to you, but my advice would be to walk away from it.

 

[aZooZa]

Looking into this again I think your position is weakened to the point of being untenable by the fact that you registered their company name with a hyphen on the same day as you registered your own domain, and their site was already well established by this point.

If this goes legal I think you'll lose because of this fact regardless of any other issues as it shows awareness of them as an entity.

Their (likely) argument is probably going to be: you registered the domain under dispute, plus the same domain with a hyphen, plus their exact domain but with a hyphen, and this was all done on the same day, so you must have seen their domain registration and/or site during this process.

Up to you, but my advice would be to walk away from it.

Yes I agree. Looking at the sites and the registration dates I wouldn't think you have much hope of keeping them. I'd walk away if I were you.