SALAD
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| posted on 4/9/13 at 04:59 PM |
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Legal Advice
Hi chaps, been away from here for a while as I'm still setting up my business which is where my question is concerned.
I have been waiting for two domain names to expire, both the same name but one .co.uk and one .com. They are owned by two different
people/companies.
I own the trademark for a made up word and that word is the domain name/names.
I have been patiently waiting for them to expire and the .co.uk one expired today. I set up a backorder on the domain as I know they can take up to
something like 90 days to drop, but it was actually renewed by the company that had it before.
The company trade under a different name and do not use the domain. The .com version of the name expires in a few months and that too is not used by
the company/owner.
I know I could send a cease and desist letter and my solicitor would happily put one together for me but I want to avoid the cost of doing that and
politely say to the two companies 'Look, you're not using the domain names and I own the trademark on the name so let me buy them at the
price you paid for them'.
I don't want to pass the legal costs on or go about it in a nasty way but I doubt a polite letter will have any clout!
What do we suggest?
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britishtrident
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| posted on 4/9/13 at 05:20 PM |
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This is the sort of thing only lawyers profit from, much as I hate domain name squatting if they are not trading or "passing off"
from the website as a lay person I can't see how you could make a case they are infringing your trademark.
[I] “ What use our work, Bennet, if we cannot care for those we love? .”
― From BBC TV/Amazon's Ripper Street.
[/I]
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SALAD
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| posted on 4/9/13 at 05:34 PM |
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That's what I thought. If they were trading under the name or using the domains then I wouldn't be concerned about telling them to stop
but as they are not I feared it would be costly and useless pursuing it.
As they aren't using them though I hoped that stating that I own the trademark would be enough.
To throw another spanner in the works, when setting up my company I found someone had set up a limited company using the name so I had to add another
word to my company name. (This is difficult to explain without actually using the names/words, but I don't want to at this point)
The guy works in the same industry as my business but doesn't appear to be trading, yet. Even though he set up his limited company before I had
the trademark, a trademark supersedes an incorporation...especially as he's not trading yet.
I'm only concerned about all this as it makes searching for my company messy on search engines and could cause confusion if and when the domains
are used or the other limited company starts trading.
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cliftyhanger
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| posted on 4/9/13 at 05:58 PM |
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So he had the name for a company before you got the trademark, but your trademark trumps his company name. And teh domain names belong to somebody
else altogether?
I suspect they will want to profit from this (and maybe that is how they make a fair bit of their income?)
It all sounds very complicated, and expensive without any guarantee of success.
probably better to change he name to something unique.
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SALAD
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| posted on 4/9/13 at 06:10 PM |
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Yes a trademark trumps the company incorporation. The name is unique as in it is a made up word but evidently it is ideal for the industry I'm
in.
I can't now use another name as I have a limited company set up, the trademark on the name, two domains the same as my company name and many
other reasons including all the networking and setting up I have already done....plus a prototype nearly complete.
I trademarked the word because it is such an ideal name and no one else was actually using the domains or trading. I just wanted to know if anyone had
any first hand experience of such a situation...?
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02GF74
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| posted on 4/9/13 at 08:14 PM |
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hmmmm unless you are macdonalds, I doubt you can force them to sell the domains.
depending on how much you want to spend, legal advice would be the way to go.
You could write a polite letter to both domain owners asking about the selling of the names - do not mention you are trademarked etc so as not to give
away your desperation for the names.
can you not get a domain with <mysteryName>UK or some other variant that is the trademant plus some extra characters?
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nick205
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| posted on 4/9/13 at 08:14 PM |
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I would start with a polite letter inquiring as to their use of the domain names and whether they would consider selling them. Many companies
register domain names they may want in the future and automatically renew them without much thought. Much more likely to extract a good response than
thundering in with a cease and desist letter.
One other approach, if they are not actively using the domain names, would be to ask if they would point them towards another domain. i.e. if you
have the name with .net or .tv they might be prepared to simply point the .co.uk and .com names at your site.
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dhutch
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| posted on 5/9/13 at 03:58 AM |
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I approached a domain name squatting company who where holding the .com that matches the .net I own, they are again not using it, and have had it a
long time, but as our site expands it was something I was interested in.
They said they where happy to sell it, that the asking price was $170,000, but that the company would consider monthly payments around the $500
mark.
I laughed, composed myself, and very formally offered them 100GBP and the opportunity to enter a discussion, which they have declined.
Also, helpful other otherwise (probably not) I found this which if true, and it appears to be, is amusing.
http://www.philly.com/philly/blogs/trending/This-is-the-best-response-to-a-cease-and-desist-letter-youll-ever-see.html
Daniel
[Edited on 5/9/2013 by dhutch]
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britishtrident
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| posted on 5/9/13 at 07:23 AM |
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The problem really is the fault of the domain name registrar organisations and the hosting companies for making it just a bit too easy and cheap to
register and squat on a domain name.
I know stories (give the nature of the internet almost certainly true) that web sites existed offering free domain name checking but if you
simply enquired about the availability of a .com name the site automatically reserved the name for themselves to squat on.
[I] “ What use our work, Bennet, if we cannot care for those we love? .”
― From BBC TV/Amazon's Ripper Street.
[/I]
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britishtrident
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| posted on 5/9/13 at 07:45 AM |
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Going off at a tangent I have never been able to understand why tinyUK companies feel the need to have .com rather than *.co.uk addresses, when
buying stuff over the net I feel more trust in dealing with a .co.uk as a small outfit with a .com address smacks of a market trader with yellow
Reliant Regal van.
[I] “ What use our work, Bennet, if we cannot care for those we love? .”
― From BBC TV/Amazon's Ripper Street.
[/I]
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puma931
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| posted on 5/9/13 at 10:31 AM |
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Trademarks have nothing to do with domain names. The infringement happens when you create a site that uses trademark material. You will really
struggle to get them surrendered especially the .com (unless you have a worldwide trademark).
I remember a number of years ago our parent company Bombardier inc (they make trains and planes) asked the UK business to stop the Bombardier (the
bear company) using Bombardier.co.uk! Our Canadian colleagues were informed that the bear company existed before Bombardier started making
Skidoos....
Good luck, but you will find it costly to get the domains released to you.
[Edited on 5/9/13 by puma931]
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SALAD
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| posted on 5/9/13 at 09:37 PM |
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Thanks for the replies chaps. It's not really a problem at the moment as they are not using them and I/the business can't afford to worry
about it yet.
Would be nice to keep everything tidy under one roof but as suggested that could prove expensive.
I'll see what my solicitor suggests next time I see him.
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