Writing a DRS document

[nickynoodles]

Hi guys,

The company I'm consulting for at the moment wants to start a DRS regarding a co.uk that they obviously(?) have rights too. They own the tm, the .com, have been in business for years and the registration, I would guess, would be construed as abusive given that they're running AdSense on it. (The top add is usally for this company).

What's the best way to go about writing the document to send to Nominet? Is there a template to follow, or does anyone know a good solicitor / professional that can do it for me. Not sure where to start.

Any advice appreciated as I want to give them the best possible chance of getting the domain.

Cheers.

 

[Admin]

I would read previous DRS results and look at the criteria used by the person making the judgement on why they gave a favourable result.

The main thing is to show you have rights to the name, with brochures, reg'd TM, etc. basic company materials showing your use of the name in your business

I've never done one but that's the approach I'd take.

Admin

 

[James]

...they obviously(?) have rights to

What makes you so sure?

They own the TM

> This will not be very relevant if the TM is a generic keyword unless they are using it exclusively in a class you have trademarked. Otherwise your case may be pretty weak.

They own the .com

> This would again could be irrelevant if the .com/.co.uk is a generic keyword.

The registration, I would guess, would be construed as abusive given that they're running AdSense on it

> You sound like you're guessing... and that makes me concerned that the company in question might be about to target the owner of a generic domain. If the domain owner is not exclusively targeting your business then your case may be weak.

If the domain is generic, but your company advert is the top listing, you need to ask how it is that that advert appears on the parking page at all. Is the company in fact targeting the domain owner's generic keyword in its PPC advertising? If so, that could be construed as a reverse hijack attempt.

 

[nickynoodles]

Thanks for the input guys, also via PM.

@James .. The domain isn't in any way generic, it's a trading name that has been used for many years.

 

[James]

Ah, sorry... feeling a bit touchy about this subject at the moment. Currently being harrassed by a company who want one of my .com domains.

 

[keys]

Has your client made any contact with the alleged offender? Can you be sure that they are aware of your client and the TM?

 

[nickynoodles]

The registrant is abroad. Contact hasn't been made, as I would guess they'd want more than the cost of a DRS to give up the domain.

They're probablly making £xxx a month from the AdSense as my client is a big offline advertiser and I believe many people are going to the co.uk first.

 

[foz]

Are their multiple marks for the term?

Does the site contain advertising relevant to your clients TM class?

Have you explored the direct approach by purchasing the domain (DRS cost (£200-£750) plus legal fees can soon add up)?

 

[keys]

Assumptions and lack of evidence are usually a benefit to defendants in DRS. You ony get one chance to prepare a complaint. On the sketchy details that you have given a favourable decision might be a formality, but some strong cases have been lost as a result of poor preparation.

 

[afx]

Thanks for the input guys, also via PM.

@James .. The domain isn't in any way generic, it's a trading name that has been used for many years.

A "trading" name is a little vague. Are you saying it is a made up word, ie. definitely not a dictionary word ?

Also is your clients TM a CTM with rights for use in the UK or do they have UK trademark ? Or is it a US TM only ?

Could another company other than your clients assert rights to the name ?

 

[nickynoodles]

The 'abusive' site does contain advertising releavant to the TM class. Infact the top ad is one for my client's site. (via AdSense)

Cost is not an issue for my client and the domain is worth at least five figures in lost business. The issue is more making sure that we do the DRS right the first time.

 

[nickynoodles]

A "trading" name is a little vague. Are you saying it is a made up word, ie. definitely not a dictionary word ?

Also is your clients TM a CTM with rights for use in the UK or do they have UK trademark ? Or is it a US TM only ?

Could another company other than your clients assert rights to the name ?

It contains a dictionary word. For want of a better example, think 'Andersen Consulting'. (Totally different sector though) It's a UK trademark.

I don't think another company could assert strong rights to the domain as my client has used the trading style for 20+ years.

 

[retired_member12]

...Contact hasn't been made, as I would guess they'd want more than the cost of a DRS...

...They're probablly making £xxx a month from the AdSense...

I'd stick to the facts for a start, and not assume anything you can't prove.

 

[foz]

If it is an obscure TM and the Respondent is located outside the UK, it could be argued that the Registrant had no prior knowledge of your clients rights (if any) at the time of registration. You must prove that the current Registrant was aware of your clients TM prior to registration.

In effect two parts to a DRS - Your clients rights and the Registrants bad faith. You have to prove both aspects to ensure success.

 

[foz]

I'd stick to the facts for a start, and not assume anything you can't prove.

Agree with that, it could be only making £10 per month.

 

[keys]

If it is an obscure TM and the Respondent is located outside the UK, it could be argued that the Registrant had no prior knowledge of your clients rights (if any) at the time of registration. You must prove that the current Registrant was aware of your clients TM prior to registration.

An innocent registration can become an abusive one when a domain is put to use. Informing the registrant of the TM could confirm this if they persist with the current site.

Conversely, a TM granted after the registration date of a domain would only support a DRS claim if abusive use can be established.

 

[nickynoodles]

My hesitation with contacting the current registrant is that they may take down advertisting, weakening the case in Nominent's eyes.

To my eyes the domain seems to tick one of the 'Absuive' boxes in Nominet's guidelines:

"Has been used in a manner which took unfair advantage of or was unfairly detrimental to your [the Complainant's] Rights"

I think it's very, very unlikely that it would have been registered in good faith.

Some one kindly recommended a solicitor via PM so I'll be taking things forward for my client through them.

 

[bb99]

My hesitation with contacting the current registrant is that they may take down advertisting, weakening the case in Nominent's eyes.

Get a screenshot of the abusive use beforehand, and then it's irrelevant whether they take it down or not.

In any event you could argue that them taking it down in response to your communication was an acknowledgement of their abuse.

Given you say that money is not an issue for your client and that you want to get it right, I think you should see a solicitor about it.

However I do find it regrettable having to say that because the DRS is meant to be a non-legal process accessible to the layman rather than a solicitors picnic.

 

[foz]

If the use is in-keeping with the second keyword and the domicile of operation is outside the UK. Abuse and TM infringement could be argued against. I'm assuming its a UK TM only?

 

[nickynoodles]

If the use is in-keeping with the second keyword and the domicile of operation is outside the UK. Abuse and TM infringement could be argued. I'm assuming its a UK TM only?

The use is in keeping (well, 1 page of AdSense in the same sector), and it is a UK only TM.