Trademark Domain

[daveg72]

I registered a domain name that is a trademark, and have recieved a polite letter with regards to handing it over:

I am contacting you regarding xxx.co.uk. You currently have this domain name and we would like to have the name transferred as it is one of our registered trademarks.

Could we please discuss the possiblity of transferring the domain over to us. If you could please resond by telephone, e-mail or letter in the next 14 days it would be much appreciated. Failure to do so will result in us having to contact Nominet directly.

Many thanks for you co-operation.


What would you do?


Any suggestions much appreciated.:???:

 

[bb99]

a) when did you register the domain name?

b) what have you done with it since registration (parked, website, what?)?

 

[retired_member6]

Tell them to contact nominet directly and give them the address [email protected] :-D

Oh and give them my love

Cheers
Lee

 

[daveg72]

a) when did you register the domain name?

b) what have you done with it since registration (parked, website, what?)?

Thanks for the reply. Only recently registered, there was a parking page on it up until recently.

 

[daveg72]

Tell them to contact nominet directly and give them the address [email protected] :-D

Oh and give them my love

Cheers
Lee

Thanks for that but everything seems to have changed recently, if they go down the DRS path, who pays the costs? Don't want to be out of pocket..

I haven't offered it for sale anywhere, i have not made any monetary demands on the trademark holder and i did not approach them, they approached me.

 

[retired_member6]

Thanks for that but everything seems to have changed recently, if they go down the DRS path, who pays the costs?

They pay £750 but could sue you for it afterwards, I'm presuming the domain isn't three letters as indicated by the kisses. Ultimately it's up you whether to defend or not, depends on the name but you could claim costs and then release it to them, the fact they've emailed you points to them being open to a payment of sorts but be careful how you ask them to enter into making an offer as they could use that against you.

That's if the domain is even for sale and you're not developing it.

 

[seanc]

i had one recently from a company whos name rymes with "lada" (think designer),

i didnt give them the domain in the end, but i removed all adds and pictures.
havnt herd anymore from them.

the amount it must cost them to contact a lawyer and get them to send me a letter would have more than covered the cost i would have let it go to them for.

 

[bb99]

Thanks for the reply. Only recently registered, there was a parking page on it up until recently.

When the parking page was up, did it feature adverts/links to other companies in the same line of business as the people complaining (or even to the complainants themselves)?

 

[daveg72]

Have just emailed him and said, Thanks for your letter, what do you propose that we do?

That is then not asking for cash but leaves the possibility there.

 

[daveg72]

When the parking page was up, did it feature adverts/links to other companies in the same line of business as the people complaining (or even to the complainants themselves)?

No it was just a 123-reg holding page.

 

[retired_member2]

Go on dish the dirt

PM the domain name and the company involved so can advise you more.

Having something like this is like having a feather duster around your privates.

 

[bb99]

No it was just a 123-reg holding page.

OK. It all really depends on how much you want to keep the name and how much hassle you want to have to deal with.

Owning a trademark on the word (have you checked it - people do lie!) doesn't necessarily give them an automatic right to the domain name.

One way forwards is:

If you intend to use the name, you can write back and tell them that you will be using the domain name in the future for a trade that is in a different trademark class to theirs and that you have no intention of infringing their trademark.

Usual caveats apply - I am not a lawyer etc etc.

 

[grandin]

Legitimate Interest and abusive intent

The DRS is unreliable with many conflict decisions...

on the one hand a name like mercer.co.uk is not generic ie. people are looking for a rights holder when searching (on the balance of probability) BUT it does not belong to one rights holder more than another cause there are many rights holders with the name ie. mercer.... the complainant failed cause the seller could have had many rights holders in mind when offering to sell the name not particularly the complainant....Furthermore, the respondent regstered with the intent to use as a email provider for rights holders....which is still taking advantage of rights holders but noone person can claim it as it belongs to many .... similar to the barcelona case.

If the experts are true experts then more cases should end up with the name cancelled and made re-available...not transferred..... but the judge in the marks and spencers and the likes transferred the names, in my opinion (on a techicality) that was a wrong decision and the names should have been cancelled.....

Lee

 

[daveg72]

I have received an email explaining that the company are willing to pay reasonable costs that may have/ will be incurred. What are reasonable costs? Anyone had to come up with a figure before for this?

 

[retired_member6]

I have received an email explaining that the company are willing to pay reasonable costs that may have/ will be incurred. What are reasonable costs? Anyone had to come up with a figure before for this?

I was hoping you'd get info back as I don't like advising others on what they feel they should do. Again think how much you'd like or you feel the domain is worth. I have a figure inside my head as I know the domain but just don't be greedy.

Go with what you feel is right, my standard fee to companies with close or matching domains with tm and non generic is £500 as that's what usually works for me, but you're the one who's got the domain and who has got to make the decision and not lose out.

Cheers
Lee