UK Registerd Company Name Vs My Domain... Help =(

[JohnM]

OK, back in 2005 I created a website, which is adult orientated, I don't know if this changes things but anyway.

Today I received a letter stating that I am trading under their name.
They are not happy, blablabla and that they want the issue resolved.
They are basically saying I'm using their company name...

"<NAME> is a registered trade mark which has been in use since 1986"

"I have contacted company house and have been assured that you are not a registered company."

"I have been advised by my legal team to inform you that you use of my company name contradicts the identity of the goods and services offered by our company as also the influence on the reputation of our company."

The site I run is a personal website, it is not a company nor am I trading.
No where on the site do I claim to be a company, or request any funds or payments.
Its an adult directory with the domain name .net is the same as their .co.uk domain name.

They do not run an adult site.
The company is registered at Company House.
Name is TMed with an ! at the end, I think its just for within the logo?

Class 37:
Washing of linen; ironing; weed killing; window cleaning; cleaning of domestic and commercial premises; cleaning of carpets, upholstery, domestic utensils, furniture and of curtains; painting and decorating; all included in Class 37.
Class 42:
Housekeeping; gardening; baby sitting; mothers' help and nannying services; catering and cooking services; waitressing, maid and butler services; all included in Class 42.

Disclaimer:
Registration of this mark shall give no right to the exclusive use of the words "<NAME>!".

Now, am I safe?

Any advice?
Thanks.

P.S
Obviously <NAME> would be the company name and domain names.

 

[Takwa]

No you're not safe at all, and worst off they got it trademarked, you can offer it to them for a few hundreds at least that will cost them less than legal fees.

you are 99% sure will lose.

 

[Jeewhizz]

No you're not safe at all, and worst off they got it trademarked, you can offer it to them for a few hundreds at least that will cost them less than legal fees.

you are 99% sure will lose.

Bollocks.

Sorry, but until more details are known, you can't say 99% he will lose.

They could have a trademark yes, but if it doesn't cover the classes that the domain is used for, then there isn't necessarily an issue.

 

[ratboy]

Are you sure it's not a scare tactic to shock you into handing it over for free?

Have you checked up on their position:

WebCHeck - Select and Access Company Information

Trade marks

Has been known.

 

[JohnM]

Are you sure it's not a scare tactic to shock you into handing it over for free?

Have you checked up on their position:

WebCHeck - Select and Access Company Information

Trade marks

Has been known.

The company is registered at Company House.
Name is TMed with an ! at the end, I think its just for within the logo?

Class 37:
Washing of linen; ironing; weed killing; window cleaning; cleaning of domestic and commercial premises; cleaning of carpets, upholstery, domestic utensils, furniture and of curtains; painting and decorating; all included in Class 37.
Class 42:
Housekeeping; gardening; baby sitting; mothers' help and nannying services; catering and cooking services; waitressing, maid and butler services; all included in Class 42.

Disclaimer:
Registration of this mark shall give no right to the exclusive use of the words "<NAME>!".

 

[Takwa]

hard to say why don't you pm us the name

 

[JohnM]

Done.

Dose this...

Disclaimer:
Registration of this mark shall give no right to the exclusive use of the words "<NAME>!".

...Give me some ground?

 

[mojoco]

they have no TM for any adult related classification

you are using it as an adult directory

so long as the name is generic you probably have nothing to worry about

IMO

 

[aZooZa]

a) No TM in their filed classes
b) No legal letter - just an owner's gambit.

To me there's nothing to worry about. Wait until you get a letter from the stated "legal team".

 

[aZooZa]

Done.

Dose this...

Disclaimer:
Registration of this mark shall give no right to the exclusive use of the words "<NAME>!".

...Give me some ground?

Means absoultely nothing.

 

[Takwa]

got your pm, to clear everyone's confusion it's a UK company with no TM, trying to take a domain (.net) from our guy here, the .com is parked.

I think the company is just rubbish, Looks like reverse hijacking to me

 

[JohnM]

How would I reply to the letter?

I am writing to you to express concern that you are trading illegally using that name <NAME>.

<NAME> is a registered trade mark which has been in use since 1986. Your business has been brought to out attention through numerous lewd telephone calls and also concerns from our own clients.

I have contacted Companys House and have been assured that you are not a registered company.

I have been advised by my legal team to inform you that your use of my company name contradicts the identity of the goods and services offered by our company as also the influence on the reputation of our company.

If this infringement of our company name continues, we will have no hesitation in taking legal action against you.

I would like your confirmation that this issue will be dealt with immediately...

I don't mind an exit strategy.
If I have legal grounds to keep my domain I don't mind offering to sell it to the company in question.
Please take in mind my 1st post when reading the letter they sent me.

J.

 

[TinkyWinky]

Unless you want to sell it to them - don't bother replying... they probably sent letters to loads of people!

Of course if you want to selll or fancy your chances for a billy bonus - then name a price you'd really like that you think you can get away with - they may pay it... I have had a couple of those and they are satisfying to say the least!

 

[RedRichard]

Hi John,

Read my reply to Ships in the other thread on another TM issue, it might help you:-

http://www.acorndomains.co.uk/domain-name-disputes/39236-can-anyone-advise-tm-issue.html#post144266

Because you are a different business in a different field, where exactly is the financial loss? Cant see them being able to prove any passing off on your behalf. Looks like a try on but without knowing the full facts / names and TMs involved its hard to give specific opinion but my guess is you have little to worry about.

I would see if they go legal or not. If they go legal then you need to decide if you want to spend the money to defend or not. Its not always a case of whos right / wrong - sometimes its down to who wants to spend the money to go legal or not!

If they go legal on you they have to prove infringement of their trade mark and financial loss which would be hard to do. Are the public confussed between your two companies?, can they prove that? is the mark identical? are your business activities the same? - as you are using the name for a different business on what reads like a slightly different mark anyway it reads like they would have more chance of meeting lord lucan than winning a case against you.

If you feel the need to reply i would say, 1) ive never been aware of your company (i know thats no defence but i would say it anyway), 2) im using the mark ABC which is different to your mark 3) im using the mark ABC for an entirely different business to yours 4) we dont see any possible public confussion between our two companies.

You do need to note that if you reply it "could" be used in later evidence so keep any communication minimal, if they do go legal on you dont speak to their solicitor because they can try and twist what you say to their advantage but decide if you want to appoint your own to act for you or not or walk away.

My view is that this may well be the end of it anyway as i cant see them having a case here and to be totally honest if a third party was using one of our trade marks in a way that passing off was a possible issue, we wouldnt be writting a letter like that to you, we would be going in hard all guns a blazing with legals on a 7 day "cease and desist" basis! hence why this feels more like a try on.

Hope this reply helps - Good Luck

Richard