Trademark Dispute

GlasgowBob · Mar 28, 2008

Hi,

I registered a couple of domains in January and recently received an email from the director of the company that owns the dot com to say I am infringing on their trademark and it could cost me tens of thousands if I don't hand it over. Usual threats I think.

Their UK trademark is of type "Certification Mark" and the domain name is part of their mark text with the certificate. It is at a status of "Examined".

I am currently doing nothing with the domain and registered it because I thought it was generic enough. I have replied saying I don't think the domain infringes their trademark but for a donation of £175 to charity I would hand it over as I can see it was in their business interest to own it.

Does anyone know if a Certification Mark trademark and owning the dot com is enough for me to just hand it over?

If its at a status of Examined does this give them any legal rights on the name?

Any help or opinion would be greatly appreciated.

Many thanks,

accelerator · Mar 28, 2008

If it's a .co.uk Nominet will consider whether you registered the domain in bad faith and have tried to exploit the intellectual property of someone else to make a profit.

If you can build a case for it being a generic term then your chances of keeping it are better.

Trademarks at Examined status have not been granted yet and therefore in effect they don't have the trademark (I'm guessing this is UK trademark). Trademarks have to be published in the trademarks journal and this gives the chance for people to object before the trademark is actually granted.

If you haven't used the domain for anything then don't use it for anything until this is resolved as using it could weaken your case.

Beasty · Mar 30, 2008

accelerator said:
If it's a .co.uk Nominet will consider whether you registered the domain in bad faith and have tried to exploit the intellectual property of someone else to make a profit.

If you can build a case for it being a generic term then your chances of keeping it are better.

Trademarks at Examined status have not been granted yet and therefore in effect they don't have the trademark (I'm guessing this is UK trademark). Trademarks have to be published in the trademarks journal and this gives the chance for people to object before the trademark is actually granted.

If you haven't used the domain for anything then don't use it for anything until this is resolved as using it could weaken your case.

Sorry to sound like a lawyer, but "bad faith" is dot com - dot uk is "abusive registration". It may sound trivial, but it is quite deliberately a different standard.

If the TM is only "examined" then it is not yet registered and as yet they have not rights in respect of a registered mark. That does not mean they have no rights - but they would have to show common law rights based on use, etc.

GlasgowBob · Mar 31, 2008

thanks a lot for you replies.

I think I'll wait and see if i get the lawyers letter.

Seems petty but I think I'm only holding off because of the persons arrogance. I didn't buy the domain to hold anyone to ransom but their threats and accusations in the emails has got my back up.

Will probably close all communication and surrender the domain with nominet.

Anyone want it -