Owned domain several years, but now is trademarked

[mallymally is verified member.]

Hi All

I wonder if you could give me any advice please regarding the below domain name. Basically I've received this email last week. I purchased the domain name from a seller in 2016. I had a finance type website on there since that date until now.. The company have registered a tradermark in 2021 https://www3.wipo.int/madrid/monitor/en/showData.jsp?ID=ROM.1619097.

Any idea what my options are. I've suspended the website for the time being and have put it on a hosting page.

 

[diablo]

Trademark is for an image. Are you using that image on your website?

 

[Muller2]

If you didn't use that image, put ur site back up and tell them to fuck off imho.

You've had the domain and site from 2016 well before they registered it

 

[deedee is verified member.]

That looks like protection for a logo only? If you've had a site up since 2016 you should be asking how they think you are infringing ? Looks to me as someone who doesnt know much , that its just the logo :

https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003673162

 

[jasman]

I'm not sure how you have arranged your affairs but it would be best to make sure that the domain is owned (as far as the whois is concerned) by you personally or by a company that isn't dissolved(!). As it stands you are giving them ammunition for making a case against you.

A website can be owned by a different entity to the domain owner so an argument can be made that just because the dissolved company doesn't exist any more, this does not affect your right to own the domain. I'm not sure if things still work this way but it used to be the case that the assets of a dissolved company become bona vacantia and get transferred to the crown! What a scam that is.

I have never heard of the complainant and I believe the size of the complainant's business and how well known their trade mark is are taken into account when deciding ownership disputes. So we're not talking about coca cola or McDonalds here which is in your favour.

But I do think you need to get your house in order or you are making things look dodgy from your end and giving them ammunition. Taking the site down may look guilty, then again it may be a reasonable thing to do while you take legal advice (which I am not giving). But if you put it back up I would remove any reference to the dissolved company, and clearly state who the owner is. Also make sure you haven't got any other domains/ websites mentioning this or any other dissolved company as they are putting you at risk.

There is another potential minefield. If you have been introducing customers to loans for commission how have you been getting the commission payments if the company has dissolved? It doesn't look great to be acting as one entity on the website but taking the money via another one. All needs resolving very quickly.

So I think I would promptly decide who is trading/ which entity is operating your business activities, ensure that this entity is legally actively trading and not dissolved, ensure that the website content and whois are consistent in referring to that entity, and possibly reply thanking them for pointing out the website content is out of date and you have now updated it and that your use of the domain cannot be a deliberate attempt to infringe their mark as your use of it in that way predates their trademark and you had never heard of them before anyway as they aren't well known. Something like that.

Obviously I am not a lawyer, this is not intended as legal advice.

I'd also delete the references to the name in this thread after a day or two once people have replied in case Google grabs the word content of the images now or in the future which could enable the complainant to discover this thread at some point.

Good luck!

 

[Kaleido]

It's risible that they've even trademarked this piece of shit.

 

[robrob is verified member.]

I had an issue where I bulk bought a load of LLL.co.uk's in 2005 and in the batch was a proper XYZ type rubbish one.

I quoted a fair price to an enquiry and had a load of nonsense in return, including a note on trademarks that it was claimed I was abusing. TMs referenced in EU were registered in 2007 and the more relevant one in 2014.

A long story short, they went to DRS.

A costly and lengthy response was made and they declined to see the process through after mediation. *I* paid for the decision and won. Sadly no reverse hijacking was found, which I strongly believe was the case.

A couple of years later the legal 'expert' appears to have been binned from the firm, they came back to buy the name so I put the costs of the DRS win on top plus an optional £1k fee - waived if they apologised - which they did.

TLDR: Stand firm if you have done nothing wrong.