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Trademarked domain name...

Discussion in 'Domain Name Disputes' started by workshy, Apr 26, 2015.

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  1. workshy United Kingdom

    workshy Active Member

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    Sorry if obvious ...Been out of the game for a while!

    If I regged (for example) bluewidgets.co.uk and a company called 'bluewidgets' contacts me and says "I have the trademark for the words bluewidgets, I'll pay £100 to cover your expenses to transfer the name to us"

    What's the likely outcome?
     
  2. Domain Forum

    Acorn Domains Elite Member

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    articles.co.uk
     
  3. Murray

    Murray Well-Known Member

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    I wont pretend I know too much, but I think you would need to give a much more specific example to get a better idea.

    Depends on dates of when things were registered, how generic it is, if its had a site on it and what was on there

    Stuff like like that.
     
    Last edited: Apr 26, 2015
  4. accelerator United Kingdom

    accelerator Well-Known Member

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    Why do you want to know?

    I would advise against attempting to profit from other people's Trademarks.
     
    Last edited: Apr 26, 2015
  5. foz

    foz Well-Known Member Exclusive Member

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    Was bluewidgets.co.uk registered before TM date?

    Is "blue widgets" used by others? How unique is the term?

    Does bluewidgets.co.uk form a pattern of registrations in your ownership? e.g. domain registrations with "blue" or "widgets" in them.

    Complainants expense will be £750 plus legal fees and time.
     
  6. workshy United Kingdom

    workshy Active Member

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    I worded the post as a scenario to keep things simple, hoping there'd be a quick easy answer...
    In actual fact, the boots on the other foot. It's me who holds the trademark.

    'Bluewidgets.co.uk' has been registered about 15 years and is a well known two word phrase (not immeadietely obvious as a business name)
    The co.uk has never been developed and I registered the .me.uk and obtained the trademark earlier this year.
    The .com, net, org, biz, info, etc., have all been taken and are holding pages.

    .co.uk is now in 'renewal required' status and (unless renewed) is certainly going to be picked up by a dropcatcher.
    So, if I approached the new registrant with the trademark under my arm...?
     
  7. Edwin

    Edwin Well-Known Member Exclusive Member

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    There's your answer.

    Since even you (the trademark holder) admit "blue widgets" is a well known two word phrase, any claim as a result of that trademark would be very very weak (unless there are other circumstances e.g. a deliberate attempt at "passing off" because of the content of the site, etc.)

    A trademark isn't a magic winning lottery ticket to take the rightful property of somebody else. It's a defensive mechanism meant to protect something truly original and distinctive. In your example, it sounds like "blue widgets" certainly isn't that.
     
  8. foz

    foz Well-Known Member Exclusive Member

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    Well known phrases can be defended. If you haven't traded with the TM to any reasonable extent it's hard for you to claim any goodwill generated in that term nor expect any new Registrant to know about it.
     
  9. accelerator United Kingdom

    accelerator Well-Known Member

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    Thinking aloud here:

    An interesting question is, at what stage do you apply for a Trademark?

    A Trademark is supposed to protect the brand image you have built up through trading. So, should you have to trade before you can apply for a Trademark, or should you be able to apply for Trademark before you start to trade and use it?

    I think this is quite an interesting question. I am sure that many Trademarks get awarded without anyone ever trading using them, but is that really fair?
     
  10. workshy United Kingdom

    workshy Active Member

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    'Rightful property' ...That's exactly what I'm trying to determine.
    If the domain does drop, does it automatically becomes the new registrant's rightful property, even if a business is trading under that name and has the trademark?
     
  11. newguy United Kingdom

    newguy Well-Known Member

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    Lots of unknowns here, but if it's a "well known two word phrase" I don't see how your trademark would matter here. You ought to try to catch the domain yourself and if unsuccessful make an offer for it.
     
  12. tk-hassan United Arab Emirates

    tk-hassan Member

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    have you checked with Nominet rules and their support? i think they are the best people to answer your concerns.
     
  13. Retired_member41

    Retired_member41 Retired Member

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    Absolutely spot on again. Why mess around with all this tm and legal stuff. Just call nominet.

    I bet you feel daft about posting now when it was so obvious.

    Hey tk do you have a business or service that you offer cod you certainly seem to know your stuff.
     
  14. workshy United Kingdom

    workshy Active Member

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    Yes, that's exactly what I did before I posted here.

    Being advised by Nominet to use a dropcatching service didn't strike me as being a definitive answer though.
     
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