Trademark Infriging Domains - Help and advice wanted

rob · Apr 28, 2009

If that landed on my doormat I would ring up and as them if Coco or Perky the clown wrote it.

However, if you are likely to have difficulties with payment, then you will be aware that you may be able to obtain bank loans which can be repayable over time.

How nice of them

GreyWing · Apr 28, 2009

rob said:
If that landed on my doormat I would ring up and as them if Coco or Perky the clown wrote it.

However, if you are likely to have difficulties with payment, then you will be aware that you may be able to obtain bank loans which can be repayable over time.

How nice of them

Good point Rob, write back and ask if they have heard of the credit crunch and that we are now lending the banks money

jasman · Apr 28, 2009

EyeOfTheTiger said:
just received an email from the lawyers

Given your prompt response to our letter, however, I confirm that ******* would be prepared to accept a substantially reduced contribution to its costs and damages, namely the sum of £10,000, if we are able to conclude this dispute quickly and without further cost. Our client is not prepared to accept a payment in instalments - it is not for ******** to provide credit in that manner. However, if you are likely to have difficulties with payment, then you will be aware that you may be able to obtain bank loans which can be repayable over time.

This offer is open until 4pm on 5 May 2009. Our client's costs increase with every email or letter we write, and accordingly, should you reject this offer now our client reserves its rights to seek recovery of the full amount to which it is entitled.

If I were you I would not call them or email them again until you have spoken to a lawyer. You only have one week to play with so get one ASAP. But do as much research into similar cases on the Web between now and your first meeting so you are well prepared and get the most out of the meeting.

Rob_F · Apr 28, 2009

You 100% sure it's genuine?

Replying to emails in the evening?

The tone of that email you received just doesn't look right to me

- Rob

GreyWing · Apr 29, 2009

jasman said:
You only have one week to play with so get one ASAP.

Just because they say you only have a week, don't be bullied. You are allowed reasonable time to make investigation into your defence. I used to get this all the time where I worked, them saying you have x amount of time to sort it. Don't rush because they say so.

grantw · Apr 29, 2009

Rob_F said:
You 100% sure it's genuine?

> No request to transfer the names in question
> Replying to emails in the evening?
> The tone of that email you received just doesn't look right to me

- Rob

I agree, it looks a bit suss to me too, particularly the last paragraph. Did you also get documents through the post Mike? Were they sent special delivery?

Grant

rob · Apr 29, 2009

Rob_F said:
You 100% sure it's genuine?

Replying to emails in the evening?

The tone of that email you received just doesn't look right to me

- Rob

^ Agreed
...

ELIFE-MZ · Apr 29, 2009

I am guessing the law firm in question is O*****g based in the city. They took the same approach with a number of other people.

As Grant said, the company in question likes to make noise each time they do this. From what I recall they even reserve the right to name and shame the people. There are couple of stories on the beeb.

Speak to the firm Grant suggested, they handled some of the previous cases.

Good luck.

essexboy · Apr 29, 2009

Sound like a nice little earner they have going. How do you even know they are working on behalf of the claimant? Would this £10k get paid to the claimant direct or the solicitor?

What's to stop some Shister contacting any M*******t typo holders and doing the same, taking all or part of the money then either leaving domains unregged til some other person reg's or they are transferred and M******t gets a couple of quid of the £10k. Nice little earner.

EyeOfTheTiger · Apr 29, 2009

Hi all,

Documents recieved in post yeah, recorded and signed for delivery. And yes it is the stated law firm MoFo suggets.

Can you provide links via pm as to the articles on the Beeb surrounding this ?

I am awaiting reply from the law firm grant suggested via pm also..

Tks

Tiger

rob · Apr 29, 2009

Ah, in that case yes its real

A good heads up for anyone with TM names who think DRS and free handover is the worst that can happen!

grantw · Apr 29, 2009

EyeOfTheTiger said:
I am awaiting reply from the law firm grant suggested via pm also..

Tks

Tiger

Personally I'd call them, the clocks ticking.

Grant

jasman · Apr 29, 2009

GreyWing said:
Just because they say you only have a week, don't be bullied. You are allowed reasonable time to make investigation into your defence. I used to get this all the time where I worked, them saying you have x amount of time to sort it. Don't rush because they say so.

What about the £100-a-time letters they keep sending? I wouldn't want to sit around and give them an opportunity to keep sending more letters and profit from the situation even more.

GreyWing · Apr 29, 2009

What letters would they be justified in sending on a weekly basis?

The delay is not harming their client's business, they have already conceded that the domains should be handed over. They have no right to keep sending you letters over and over again whilst you look into the matter or seek help.

For example if they say "you have 1 minute to reply" does that mean they can send you a hundred pound letter every 1 minute you don't reply?

What about every 20 minutes?
Everey day?
Every week?

Just because they claim to set the time limit doesn't mean they do in reality.

The law sets the responce to these letters by saying a "reasonable amount of time", if they send you letters for no reason and don't mitigate their costs it isn't the defendants responsibility and will be thrown out by the court.

So whilst one letter a week would be reasonable if you were still in ownership of the names, it would not be responsible in sending a letter once a week whilst seeking an admission of costs!

essexboy · May 1, 2009

Send them back 100 letters at £100 a pop saying money on it's way and hey presto they owe you £10k! sorry not a funny matter.

RedRichard · May 3, 2009

Hi,

You clearly need the advice of a trade mark solicitor, if the firm that Grant has advised can’t resolve this send me a PM and I will provide you with details of a Trade mark solicitors we use that have exceptional experience in these matters, they have resolved various TM issues for our company – this is a specialist area.

My own thoughts on this are as follows:-

To be in breach of a trade mark the following normally have to present:-

1. Your mark used and the registered mark have to be identical – exactly the same.
2. You are using the mark for the exact same services or business nature
3. The public would be confused by your company and that of the registered owners business

Based on what you write, yes it was perhaps foolish to register a similar domain name but it’s not exactly the same, only similar and I’m not sure parking it with adwords on or whatever would constitute passing off, also i doubt a judge if it went to the high court would rule that there was any public confusion, but I’m no legal expert.

The other thing that bothers me with this is I can’t see how they have arrived at the compensation level they claim. Yes if a company were to sue you for damages and win they could recover their outlay but this is a solicitor making a figure up with a restricted time frame to respond in and that doesn’t sound right to me. In fact it smells like a try on to me and it’s not up to them to suggest how you finance the compensation that also doesn’t sound right.

Best advice for you is to get an expert opinion.

In the meantime do not answer this firm directly that would be very foolish, you could say something to them that could be used against you in this case and don’t sign anything!

You are prepared to sign the domains over to their client and I would have thought that would resolve the issue, that’s if it is their client that has raised the objection and this is not some two bit practice looking for quick bucks from situations like this where they are not officially appointed by the client.

If their client had issued a WIPO against you it would have cost them circa £1500 x 5 domains to achieve this, i.e. getting the domains off you and that would have been the end of it. To then sue for damages is often more than it’s worth because they would have to establish financial loss and for parking a domain its hardly the same as setting up a similar business in computers using their name on a website and that’s if proof can be established that you are in breach of the three points I’ve mentioned.

Anyway, good luck on this, get the legal help and hopefully it can be resolved quickly and you can put the matter behind you.

Rich