.uk again, trademark and generic term

[hal]

Hi,
Well, yet another case of someone trying to register the .uk and finding that they can't. I received an email claiming trademark rights and a generous offer to pay reasonable costs but not a premium!

The one word domain in question is a type of luxury widget (generic use). There are 1000s of products on Amazon and Ebay that show up on a search for DOMAIN. There is a Wikipedia article, and several other .co.uk websites with the word in their own domain names.

Now the gentleman who emailed me is from a company that sells a completely different type of widget, nothing to do with the generic use of the word, and uses DOMAIN as their brand. I checked and they do have a UK trademark with the class specifying the type of widget they sell.

It appears to me that they are trying to over extend their trademark in order to buy the domain at a pittance. Any advice about where I stand legally and how best to respond?

Thanks,

Hans

Outline of my draft response:

Dear ... ,
Thanks for your email. I would like to make something clear before discussing any potential sale, initially proposed by yourself.

I can see that DOMAIN is a dictionary word, meaning a kind of [widget] and that your company sells [a completely different widget].

[class number and description of trademark]

[links to wikipedia, amazon, ebay]

Kind Regards,

 

[tifosi]

Just tell them an trademark implies no right to the domain. It only restricts to a certain degree the potential usage of that domain.

 

[devilsrefugee]

if they own the .co.uk then surely you dont have a leg to stand on as they retain the right to register?

 

[hal]

if they own the .co.uk then surely you dont have a leg to stand on as they retain the right to register?

No, I own the .co.uk. They were trying to register the .uk and now what the .co.uk.

 

[devilsrefugee]

ahh sorry. Yeah, I would agree with Tifosi then.