Need a DRS Advice Please

[signature]

Need help from anyone that has dealt with DRS involving trademark please.

Brief intro.
We register caught a domain name which the complainant already had a trademark for the word, this is dictionary word, the word is descriptive but does not describe the trademark holder business.

Example, The Company does IT services and called itself 'Running Ltd' and has a trademark for the word 'Running' in 3 classes, as you can see the word does not goes with the company business, the company is not a well known brand and we have not heard about the company until we got a email with a threat of DRS or accept $250.
We want to use the name to sell e.g running shoes, we told him we are not interested in your offer and we are not selling the name. Our use of the name will not infringe his brand since we are not using it for IT services.

We got the DRS and now have to respond, his points are as follow:

1. He has a trademark for the name for the past few years
2. We use DAC and EPP in abusive way to register the name as soon as its available.
3. Since the name was parked and advertise for sale, that means we intend to sell it to him or his competitors
4. If he does not have the name it will cause damages to his brand, business and a security issue as well.

Part of our response is that he has been trading for over 10 years without the domain name, how could not having the domain name now become a threat to his business, also trading in domain name is acceptable under Nominet policy and since we are not selling any services in the classes he has trademark on, we are not infringing his trademark.

Above is just a summary of his statements and our responds

We do have a respond written but will like to see if anybody here with experience of DRS can help with check our response.

Just to add, he was also trying to catch the domain name using DAC/EPP but because we caught the name our usage of DAC is abusive according to him.

If anyone need more information please let me know.

Thank for reading

 

[atlas]

Go to Nominet's DRS Search facility:
https://secure.nominet.org.uk/drs/search-disputes.html

Search for domain: mango.co.uk

It sounds like your case is very similar to this one, and if so, you can use the arguments in the case and cite it in support of your position.

 

[signature]

Go to Nominet's DRS Search facility:
https://secure.nominet.org.uk/drs/search-disputes.html

Search for domain: mango.co.uk

It sounds like your case is very similar to this one, and if so, you can use the arguments in the case and cite it in support of your position.

Thanks a lot, I have gone through it, very similar, thanks again.

 

[monaghan]

2. We use DAC and EPP in abusive way to register the name as soon as its available.

This is not abusive and totally irrelevant how the name was registered, the DAC is simply a registry tool to check availability of a domain name and could have been used by the registrar you hand registered it through if it was a manual reg and all transactions with the registry systems are done through EPP.

4. If he does not have the name it will cause damages to his brand, business and a security issue as well.

Did he DRS the previous registrant on this basis?

 

[bluerock]

Have they previously owned the name? If not you cant miss what youve never had and the business has been shown to run without it in the past.

 

[signature]

Did he DRS the previous registrant on this basis?

Thank you for your comment, he did not DRS the previous owner. Below his the reason he gave:

"As the individual hosted no website and the domain was registered prior to our company formation they posed no threat to our brand and we did not pursue ownership in the spirit of goodwill and enterprise."

I cant see why if we use the domain name for a website that does something totally different from them will be a threat to them.

 

[signature]

Have they previously owned the name? If not you cant miss what youve never had and the business has been shown to run without it in the past.

Thanks for your comment, the name was owned by somebody else.