passing off - trading name

[bu06nne]

I have just received a letter from a law firm stating that I need to hand over my website and domain name due to 'passing off'.

The clients trading name is the same as my domain name, however their registered business name is different. The trading name is a generic phrase, but is unique to the industry we both operate in.

We both operate the same service...

Do i have any leg to stand on?

Cheers

 

[AssetDomains]

Hard to say without more information. Are there any actual trademarks in dispute how generic is the term if is truly generic they shouldn't have much of a leg to stand and its probably just bully tactics.

 

[Retired_member41]

If your domain doesn't have a web site on at the moment then you can't be passing off.

If it does and looks similar to theirs then you could be, and it's a criminal offence so be careful.

Just post the sites and you will get your answer very soon after.

 

[foz]

Sounds like bully boy tactics. If you can afford and follow through on a DRS defense, seek legal opinion from a professional.

 

[bu06nne]

Thanks for your replies.

We both run websites, my site design is completely different - there's no way someone would get confused by the two.

What is DRS defense? Cheers

 

[foz]

What is DRS defense? Cheers

If you persist their next port of call may be http://www.nominet.org.uk/disputes/resolving-domain-disputes

That is if your domain is .uk?

 

[Edwin]

There are a huge number of variables here, so without knowing all the details I doubt you can get very specific advice. Plus it sounds like a job for the lawyers. Worth considering at least which came first i.e. did you register the generic(ish) domain before the other company started trading as the equivalent expression, or after? Also, how "well known" are they (within the industry) for the name they're trading under?

 

[bu06nne]

Interesting - is this the only route to get hold of a domain name? Or can they go through the courts? Looking at the fees, it looks as if the defense don't have to pay a penny?

 

[Edwin]

Interesting - is this the only route to get hold of a domain name? Or can they go through the courts? Looking at the fees, it looks as if the defense don't have to pay a penny?

They can go through courts too, but (probably) not both, if you look at the example of Emirates. In other words, if both you and they participate in the DRS process, they can't also go through the courts. But they can take legal action directly without going through the DRS at all.

 

[foz]

Looking at the fees, it looks as if the defense don't have to pay a penny?

You take time spent as not a cost?

If you're legally represented you will pay. £200 per hour.

 

[inbound]

If, deep down, you know that you registered the domain because of the company now complaining you have acted in bad faith and have crossed over to passing off (it's not about the design of a site) - this could be very bad as damages could be sought.

If you feel that damages could legitimately be sought then I would say that a (domain and passing off savvy) lawyer is your first stop.

If you feel you are OK, are there any complicating circumstances, such as you living in the same place as the company (so they could argue you knew about them before they became nationally known)? These sort of things mean a lawyer could be required. A lawyer will ask the questions to tease out these complications.

You need to have a pretty tight case if the complainant is serious and takes it to court.

If it just goes to DRS then reading up on past judgements will help you - but that's time consuming and could mean that just going to a domain savvy lawyer will be better.

If you registered the domain before they started trading as that phrase you have a good, verifiable, defence. A lot of this might come down to timing and the extent to which the company in question was known by that phrase prior to you registering the domain (or possibly prior to you launching your competing service).

I suppose I'm saying get legal help. A quick chat on the phone can help and a paid consultation may set you on the right track quickly.

 

[Bailey]

Yes indeed, without knowing the actual domain name and company concerned, nobody here can really give you direction, just a synopsis of different remedies available.

Something I've used once or twice when I have been absolutely sure of my ground is to remind the complainant "That Over-Reach of their TradeMark is sufficient to apply for it to be cancelled"

Obviously I don't intend ever going down that route - But so often the smaller Companies and one man bands hold TM's without the faintest idea about their rights and responsibilities. I must admit I'd be a lot more wary if it was a large Company with its own legal dept

 

[bu06nne]

the plot thickens...

They have also written to the hosting company I use - who have, without warning, decided to block my site so it's not visible.

Are they allowed to do this?

Thanks

 

[bulkcorn]

the plot thickens...

They have also written to the hosting company I use - who have, without warning, decided to block my site so it's not visible.

Are they allowed to do this?

Thanks

That'd be the last time I'd use such hosting company. If you are not passing off as this 'complainant', move your website to another hosting company, preferably one that would be reasonable enough not to block your site on sighting a letter alleging 'passing off'.

You need legal advice. This might turn out to be a very interesting reverse hijacking attempt case. Also try going through the 'Paramount.co.uk' thread, as I think one or two people on that thread might be able offer more advice.

Can you give an example of this domain?

 

[Skinner]

I'd suggest you get your own server and cage in a noc bud, almost every shared host I've known or heard of will do this, IF they have to answer the letter its £xxx and your hosting is pennies compared.

Often you can discus this with host but usually its pop.

I've enforced my legal copyright over images 100x and every single time from A to Z host the website is suspended until the images are removed (which is my demand).

That'd be the last time I'd use such hosting company.