Trademarks

[retired_member16]

Simplistic view but does the owner of trademark one-two (note the -) have any claim against my domain onetwo.co.uk?

 

[Beasty]

Simplistic view but does the owner of trademark one-two (note the -) have any claim against my domain onetwo.co.uk?

Maybe - maybe not! :twisted:

Sorry for the trite answer - but it depends on all sorts of things - e.g what their mark is regsitered for; what you are using the domain for; how well known is their mark; when were the two things registered; can they show goodwill that pre-dates their mark's registration; possible generic nature of the phrase; etc.. So it depends I'm afraid.

 

[grandin]

Bad Faith

Did you register the name in bad faith?

ie.

Did you register the name because you wanted to take UNFAIR advantage of the rights holders rights?

Lee

 

[retired_member16]

Did you register the name in bad faith?

ie.

Did you register the name because you wanted to take UNFAIR advantage of the rights holders rights?

Lee

Im happy to let it go for the price offered, however I have been provided with trademark documentation as above and was just curious.

 

[grandin]

generic

the name doesnt belong to the rights holder just because they have rights. If you bought it to sell to that rights holder then under the drs policy you have acted in bad faith and therefore lose the name.

I would argue that a transfer to the complainant would be a fair remedy.

You havent given me any evidence to suggest you acted in bad faith and the name isn't a well known distinctive mark...on the balance of probability you would keep the name UNLESS you acted UNFAIRLY in your negotiations with the buyer

Lee

 

[Sequitur]

Originally Posted by firestars View Post
Simplistic view but does the owner of trademark one-two (note the -) have any claim against my domain onetwo.co.uk?

All else being equal, the hyphen would not make any difference at all to a Nominet DRS complaint or a UK trade mark infringement lawsuit. In other words, the owner of the (UK) trade mark ONETWO would have pretty much identical rights against the registrant of the domain name <onetwo.co.uk> as against you.

In UK trade mark infringement proceedings, the domain <one-two.co.uk> would be treated as identical to the trade mark ONETWO. This has a number of consequences. Most importantly, if you are using the domain name in relation to the goods or services in respect of which the mark is registered, the trade mark owner can win his case without proving that your use of the domain name has caused or is likely to cause confusion. (I.e. v easy win.) See s10(1) of the Trade Marks Act 1994.

In a Nominet DRS case then if the trade mark ONETWO is well known, or if you have been using it in a way which takes advantage of the owner's reputation or goodwill, then you'll have a very difficult time (in practice, a reverse burden of proof) showing that it wasn't registered/hasn't been used in bad faith.

Really need more info about the nature of the trade mark and your use of the domain name to say anything else.

Sequitur IPS - Domain name disputes, cybersquatting and UDRP cases

 

[grandin]

onetwo.co.uk

The words that are important USE and UNFAIRLY

Looking at your website you run a parking page....and whilst the name is generic it isnt a product....for example lets look at bounce V sandles

I have a domain name called sandles....this has been parked awaiting development. The parking page is selling sandles...ie. people looking for sandles may type in sandles.co.uk

However, bounce is different....bounce is not a generic product so to have a parking page doesnt really sit well....however in that case you couldnt truly say its use was UNFAIRLY detrimental to the complainants rights...ie. not many visitors to the site looking for bounce...they are all shopping at tesco.co.uk

Now onetwo.co.uk is slightly different....I dont know the business but if the business creates alot of traffic then yep....I personally think your parking page is UNFAIRLY detrimental to the complainants rights

Lee