Trademark Infriging Domains - Help and advice wanted

[EyeOfTheTiger]

Hi all,

Firstly, apologies if this is posted in the wrong area...but I'm after some advice.

I've very foolishly registered 5 domains almost two years ago (set to expire end of may this year) that contain trademarks of the worlds largest software company.

Now their laayers have sent me legal papers asking to hand the domains over which I quite obviously am glad too, but they've also asked for me to sign a declaration of intent to pay legal costs and damages to the the company.

On one of the domains i had set to point to godaddy cash parking and have earnt exaclt nothing from it, the other 4 just went to a nothing page as well with no competing ads and nothing on, so in owning these domains I have earnt diddly squat.

My question is whether or not i should sign the papers ? I have spoken to their lawyers over the phone who suggested that the software co is seeking at least £2K damages per domain name and with 5 names i could be looking at a £10K damages bill plus legal costs ? Is this fair, I havent really caused them any damage, and I'm willing to transfer all domains to them at my cost. So should I sign the papers and agree to pay damages to the company ? Do they need to prove these damages ?

I'm wondering whether or not to get a laywer of my own involved but I'm worried about the costs of them as well getting involved.

I'm not going to list the domains here but was just wondering if anyone else had any issues like this and could advise...(any lawyers out there would be great to hear from you too.)

Thanks in advance

Tiger

 

[grantw]

DO NOT sign the undertaking in it's original form as you will be agreeing to pay an undisclosed amount of costs/damages.

You honestly need a solicitor, if you need a recommendation of someone who has dealt with a few of these exact same cases drop me a pm.

Grant

 

[GreyWing]

They have to show loss of earnings to claim damages in the UK, if they can't proove loss of earnings then they can't claim it.

Ask them why if they realised it was costing them 2K in damages they never contacted Nominet and followed their DRS procedure (I presume .co.uk's when you say 2 years ago).

Tell them they have not mitigated their losses as required by UK law on legal costs and have chosen a more expensive legal option when a simple and cost effective solution was available.

Then tell them to pee off

 

[grantw]

They have to show loss of earnings to claim damages in the UK, if they can't proove loss of earnings then they can't claim it.

Ask them why if they realised it was costing them 2K in damages they never contacted Nominet and followed their DRS procedure (I presume .co.uk's when you say 2 years ago).

Tell them they have not mitigated their losses as required by UK law on legal costs and have chosen a more expensive legal option when a simple and cost effective solution was available.

Then tell them to pee off

You are honestly advising this chap (who I'm guessing has no legal experience) to go back to them with the above without taking any legal advice himself??

Grant

 

[GreyWing]

Just given him some legal advice, I used to work in a solicitors. Is that not legal advice?

People have to understand that comments on here do not constitute paid for legal advice and that is different from free legal advice.

If they can't work that out then you may aswell close this section and have a standard answer to every question saying "seek paid for legal advice".

 

[grantw]

Just given him some legal advice, I used to work in a solicitors. Is that not legal advice?

I suppose it depends if you were a solicitor or worked as a cleaner or something in the solicitors

Grant

 

[GreyWing]

I worked in a place to know that some solicitors are thick as pig s****,

I worked recovering costs and taking legal actions from third parties. There are strict limits on what are reasonable costs to claim from 3rd parties.

What is treated very strictly by a court is "Mitigation of costs" if one side has not mitigated their costs then it gets thrown out.

They can't just go round making costs up, ask them to break down the 2k costs because your solicitor wants to see it, and if it isn't justified then you will counter claim for the costs of your solicitor.

Maybe it needs rewording then my advice, "ask them why they haven't mitigated their losses by going direct to Nominet"

Ask them if they have previously had disputes in this country and why they continue to not take the cheapest path to settlement?

Might be wise to forget the pee in the wind stuff at this point

 

[accelerator]

I've very foolishly registered 5 domains almost two years ago (set to expire end of may this year) that contain trademarks of the worlds largest software company.

My understanding is that this company has regular abuses of its trademarks and is therefore very litigious in protecting them. If you do some further searches on the company name on this forum and on the wider internet, I am sure you will find a few examples of people being prosecuted by them, so you will gain a better understanding of how to minimise damages claimed against you.

FWIW my non-professional view would be that you are in quite a weak position. I too would say don't sign anything they send you as this will put you in an even weaker position. You might also find some useful info at:

OUT-LAW.COM: IT and e-commerce legal advice and support

Rgds

 

[jasman]

I am not a lawyer but I would like to point out something here - solicitors and lawyers sometimes like to drag things out and make mountains out of molehills as it's effectively a way of generating more revenue for themselves. So if you are going to see a solicitor, make sure you are well prepared before the meeting and have a list of questions written down before the meeting i.e. do they have a leg to stand on in UK law to try and 'extort' money out of you in this way? what if you simply cancel the domains - would they have a leg to stand on in getting compensation? etc

Also some solicitors partake in a scheme whereby they give you the first half an hour of legal advice for free (ask your local enterprise agency for a list of local ones). They do this basically because they know half an hour is not enough time for an indepth chat or to analyse the legal situation you are in fully. So really it's a con - it's not intended as legal advice at all - they do it as an intro intended to rope you into hiring them for a subsequent meeting (at £200+ per hour).

However I twisted this round to my advantage once by doing as much research into the legalities of the situation I was in first so I didn't need to go round the houses explaining the ins and outs of the situation and giving details of all correspondance (which no doubt they would insist on reading - probably slowly!) etc.

I made a short list of key questions for which I could not find answers in my research. I then booked my free half hour appointment with a major national law firm, explained the situation in legal terms which took me about 5 minutes (as I was well prepared and I understood most of the legal implications of the situation from my research) and hit them with the questions. I got precisely information I needed and hence did not require another meeting, so I got my legal advice for nothing, and learnt a lot from the research. So I would advise put the effort in yourself and be well prepared.

 

[jasman]

I think my actions would be: I'd transfer the names over to them - without comment to them. I wouldn't admit blame or anything - I literally would not say anything to them at all. I'd just transfer the names and ignore them completely. It's quite possible they would not bother pursuing it further. If they did continue pursuing it, I'd then get a lawyer involved.

 

[GreyWing]

I think my actions would be: I'd transfer the names over to them - without comment to them. I wouldn't admit blame or anything - I literally would not say anything to them at all. I'd just transfer the names and ignore them completely. It's quite possible they would not bother pursuing it further. If they did continue pursuing it, I'd then get a lawyer involved.

Spot on apart from ignoring them, if you ignore them they can then jusitfy sending you more and more letters at £100 a pop, which they do to make money as well. Always send an acknowledgment letter saying received and under consideration. You can even bill them for your letters, but don't ignore what ever you do.

However they probably won't persue any further, but play the game until you are sure.

 

[grantw]

It's quite possible they would not bother pursuing it further. If they did continue pursuing it, I'd then get a lawyer involved.

They will most likely pursue it, they were (probably still are) making examples of people to get the headlines and send a wider message out to everyone, the unlucky ones that get hit are just being used to get the message out.

Grant

 

[accelerator]

I think my actions would be: I'd transfer the names over to them - without comment to them. I wouldn't admit blame or anything - I literally would not say anything to them at all. I'd just transfer the names and ignore them completely. It's quite possible they would not bother pursuing it further. If they did continue pursuing it, I'd then get a lawyer involved.

My unqualified view is also that the first step is to remove yourself from ownership of the domains. If they have requested transfer of the domains to them, then I guess that is what should be done.

Now purely for the sake of discussion ... if they haven't asked for them to be transferred to them, I wonder what would happen if you just cancelled them. Presumably you would incur their wrath if some other party regged them, but what if no-one then registered them. Would this be an argument for saying "Well, they can't have been that important to you"?

Rgds

 

[EyeOfTheTiger]

Update

just received an email from the lawyers

When we spoke last week, I explained that, if ******** are forced to bring Court proceedings against you for recovery of damages, it would seek to recover its legal costs (which would be significantly higher than they are currently), and additionally would be entitled to elect between recovery of (i) your profits and (ii) damages for trade mark and copyright infringement. The damages sum is likely to be very high, especially given that the Court generally has little sympathy for cybersquatters.

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.

Finally, you are unable to accept this offer and pay the sum sought, let me know. It is possible that I can persuade ******** to let you speak with them directly. However, for the avoidance of doubt, I could only arrange that if you were able demonstrate exceptionally good reasons why you cannot accept the offer, and could let me know what sum you could pay in lieu.

So now what - bend over or fight ? With risk of further costs and damages ...

I simply cant afford this...

Tiger

 

[GreyWing]

If you can't afford it, then it doesn't leave you many options, you have to fight it.

You have 2 options, as Grant says contact a solicitor (a domain trademark savy one, not your local get the scroat stealing razor blades from asda off on bail solicitor) and let him advise you.

Or you can ask them the questions that I laid out for you in the previous posts and await their response.

or you can do a mixture of both.

British law does not allow for punitive damages, only losses and costs. By the way is it a .co.uk or a .com?

Are they American solicitors looking to go through an American court because if they are then whatever advice you do get on here is worthless, because £10k might be cheap, very cheap.

 

[EyeOfTheTiger]

They are all .co.uk domains and it is a UK law fimr chasing...

 

[EyeOfTheTiger]

Have also just dropped an email to the law firm that Grant suggested to me via PM so big heads up to Grant and all of you for advice and words of wisdom. Will of course let you know the outcome.

Bit of a p*ss*r as Im getting married in July so all my monies going on that

 

[accelerator]

I am thinking out loud here, but surely if you immediately transfer the domains, then the costs incurred by them are merely those in employing the lawyers to send you a letter. You could prove very little damage to brand from the very low traffic stats on the domain.

You employing a lawyer is just going to be useful in terms of getting their claim against you reduced, but you have to balance that against your own legal fees.

Like I said ... just thinking aloud.

Rgds

 

[Skinner]

A chap I recently did some business with recently had this with a well known car company, in the end they could only prove a few hours solicitors costs in tracking him down (despite demanding 1000s in fee's and 1000s in damages), sending you a (copied from 100 other cases) letter, and was unable to prove any losses or damages, but the domains had never been parked or anything. In the end he transferred the domain and requested they send him a detailed invoice. They have yet to send the invoice, about 10 days later, but have accepted the transfer. So he's expecting a few hundred quids worth of invoice.

This prompted my recent question about returning TM names

 

[GreyWing]

Don't accept any invoices from those after the first letter when they tried to claim 2k per name.

Those letters are nulled because they didn't incur 2k worth of damages. So by lying in their first letter they have installed a barrier to you settling at that point, and you aren't responsible for any costs past that point.

Only accept an invoice for the initial letter. I would say £200'ish might be fair and reasonable.