Trademark question

[spiderspider]

I picked up a dropped .co.uk about a month ago. The term itself is pretty much 'general'. I whacked a WP site on there, and just use it as part of a blog network (as it has links and PR).

I've just had an email from a South African company, who have the same name as the domain. They say:

Please note that the name ****** is trademarked by my company - we hold all intellectual rights to this name and have been actively trading around the world for more than 20 years. Your use of this name is therefore illegal. Please remove this web site, failing which we will take the necessary legal action.

Now my site content has nothing to do with there business / niche etc.

I checked the IPO and can't see this name trademarked there. Where can I check for South African companies, and see what reach they have on it?

Thanks

 

[spiderspider]

I was able to get some assistance elsewhere, as to where to look for the SA IPO office.

I found that yes his company has a trademark. However, its domain word 1, domain word 2, extra word. Also, on the SA IPO (Its called the CIPC if anyone is interested), there is a handy little FAQ, and one of them is:

Does a South African registration give protection overseas?
It does not. If you want to apply for overseas protection you must approach a trade mark attorney in the relevant country to register the trade mark for you

So, do people think, with no UK protection (as in IPO), and his trademark being just for South Arfica, am I well within my rights to tell him to go away?
My understanding is that if this were a 'Brick and Mortar' company I could quite easierly, just not sure how it works in the world of domains.

 

[namealot]

Usage alone of a business name or identity affords a certain amount of protection under common law so you don’t actually need a trademark? Without knowing the name class etc its pretty hard to tell but from what you have posted I'd say chances of them winning a DRS or legal action are very slim personally I ‘d just ignore them, Or counter with them sending harassing email etc

 

[Skinner]

If your blog is nothing at all to do with their market (or SA TM Classes) then I'd prob ignore them.

 

[spiderspider]

Thanks for the help.

I will email back, and explain what I have found out, and see what they say. The email will end with 'if you wish to purchase this domain..........'

 

[Ghengis]

Thanks for the help.

I will email back, and explain what I have found out, and see what they say. The email will end with 'if you wish to purchase this domain..........'

What ever you do do not offer it for sale to them or that will be seen as you have registered the domain to make a profit from them.

 

[Skinner]

I would email back diplomatically, explain you understand their concerns, and are happy to discus any legitimate ones and work on a solution, however you are not operating in their target markets according to their trademark, and you have invested a reasonable sum of money into this project, thus you won't be leaving it.

end with, I look forward to working through your concerns.

You mentioning you have money (in actual cash or time) in it, you've researched their claims, you're willing to work through, it also leaves them open to say how much have you invested, and long as you keep reasonable and ideally below a DRS (£750, so say £500) they may just give you the money for you to find another name

 

[stellar73]

If it's not showing as a registered trademark on ipo.gov.uk then as I understand it they will not be covered for the UK. I would simply email them back and ask them to provide a link to the trademark's UK documentation.

 

[spiderspider]

Thanks for all the input. The reply I sent was:

I have had the opportunity to research your claim, and would like to ask a few questions, prior to any action being taken with regards to the website. As you are aware, the domain is an .co.uk, based in the UK, and subject to UK law.

I have conducted a search of the UK IPO (http://www.ipo.gov.uk) and cannot see any trademarks there that relate to *NAME*

I have also been on the CIPC website, to get some clarification for this. I could see that 'NAME + WORD' was there, but not '*NAME*'. .............

The difference between your website and mine is also quite apparent. ..........

Until I receive further evidence that the name '*NAME*' is trademarked worldwide, including the UK, the website will remain in place.

I have summarised that a bit, to take out some details, that may give things away.I did then get a reply, but without evidence. It has also been summarized, but here it is:

But you should be aware that intellectual property extends beyond registered trade marks. I won't say any more about that, other than to advise you that we have traded actively in the UK under our name for many years, and have very entrenched rights in that regard. In the end my duty was to inform you, the rest I leave to our lawyer. You may be interested to know ..... our ultimate holding company is in the UK.
.............

You purchased our UK domain recently when our SA-based domain registrar slipped up while transferring the domain to an offshore domain registrar. In my view that shows quite clearly that yours was an opportunistic attempt to take advantage of our good name and SEO strength.

I am not in a position to offer you any money to return our property. If you want to suggest a price do so - I will discuss it with my lawyer and let you know.

I think the middle paragraph is the most important. I'm starting to get the feeling that the trademark isn't the issue here, and is used as a way of scaring me into handing them the domain. Unfortunately, bully boy tactics won't work with me, until I start seeing real proof.

Not sure what I'll do next, as I can't find anything in the UK on them. Companies House, IPO, searching the company name, nothing that relates to UK. I think I'll sit on it for a few days before doing anything.

 

[bulkcorn]

You purchased our UK domain recently when our SA-based domain registrar slipped up while transferring the domain to an offshore domain registrar. In my view that shows quite clearly that yours was an opportunistic attempt to take advantage of our good name and SEO strength.

I am not in a position to offer you any money to return our property. If you want to suggest a price do so - I will discuss it with my lawyer and let you know.

The bolded is so funny! :lol: :lol: He sounds quite angry and desperate. :lol: I lost a domain recently due to a Registrar 'slip' but I wouldn't think of harrassing and blaming the new registrant! :lol: I'd pay him for his trouble.

 

[grantw]

If it's a generic term and you're not using it in a class that their similar trademark is registered in and your website is unrelated to whatever their business is then I don't think they have a hope of taking it from you. Having said that though, it doesn't stop them trying and starting legal action against you, which could get costly if you're going to need legal advice yourself.

Grant

 

[stellar73]

It sounds like they're grasping at straws. They must have known they did not have a registered trademark in the UK which makes it rather desperate of them to imply that this was the initial reason for their claim against you.

I think that they would only have a case against you, irrespective of any trade mark, if they could prove that you had bought the domain with prior knowledge of their company with the specific intention to make money from their name. It sounds like they would have a hard job doing this, particularly if the name is general (and not NAME + WORD as you say their company is) and especially if you are using it for an unrelated blog.

I like how he tries to slip in the bit about you “suggesting a price” in a casual manner. He is obviously desperate for you to suggest a price and hoping you are going to be scared into giving it to them for a miniscule amount.

If I were you I would reply firmly stating that you bought the name because of it's generic appeal for your blog and that you have never heard of their company. Invite him to take legal action if he wishes. The fact he referred to you "returning their property" is hilarious since it ceased to be their property when they let it drop. I'm not too sure about the price issue but I would have thought since he has invited you to suggest a price they can't now turn round and claim you only bought the domain with the intention to hold them to ransom if you do decide to ask for a certain amount.