Can they force me to transfer a domain name

[chuckylefrek]

I received a letter today from a trade mark attorney representing a large organisation demanding I stop forwarding 2 of my domain names to one of my websites and also that I transfer the domain names to their client within 14 days.

The domain names are what I would consider generic and I have quite a few such generic domain names pointing at one particular site. I bought most of these domain names out of naivity thinking the more domain names the better.

Anyway I have immediately stopped the domains forwarding just to be on the safe side however I would prefer not to have to transfer the domains.

Anyone advise me on my position? One of my domains is .co.uk and the other is .com. The person making the complaint has the .org.uk and is currently forwarding this to another website.

Thanks

Paul

 

[retired_member13]

100% depends on the names in question. Feel free to PM them across if you want an opinion.

 

[chuckylefrek]

Thanks TY - I have sent you a PM

 

[Ashton]

1) Do they have a trademark (or typo of) for any part of your domain name?

2) Are you making profit from their business?

3) Could your business be considered 'bad' in intent?

If the answer for these is no, then you could be safe.

 

[chuckylefrek]

1) Do they have a trademark (or typo of) for any part of your domain name? NO

2) Are you making profit from their business? NO

3) Could your business be considered 'bad' in intent? NO

I think I scored pretty well. My site doesn't make any profit but I would like it to

 

[Ashton]

I am pretty sure your safe then.

I also think that someone might be able to help you write a letter back explaining the situation and offering them the domain for a price

Looking at you:

- You aren't breaking trade mark
- You aren't making money off them
- Your business is not bad in intent


Now lets look at them:

- They aren't using the matching domain properly (its forwarding)
- They are willing to hire a lawyer to try and scare you into releasing the domain.

I love that second fact, that means they want it, and they want it badly. Deny them the easy route and they will take the hard route and probably make you a decent offer for it.

 

[retired_member12]

Tread carefully, a trade mark attorney will know his/her stuff!

 

[chuckylefrek]

Thanks. Yes the fact the letter is from a reputable trade mark attorney did make me think they may have a good case but thought it was worth getting some advice before I bend over backwards.

 

[Ashton]

Thanks. Yes the fact the letter is from a reputable trade mark attorney did make me think they may have a good case but thought it was worth getting some advice before I bend over backwards.

Anyway, like ty_ said, all depends on the domains.

What reasons should they have that it belongs to them...

Just wondering... did you register the .co.uk first? or after? and was it in direct response to their .co.uk registry?

 

[chuckylefrek]

I own the following extensions:

.com
.co.uk
.net
.org

they own .org.uk

It looks like I registered after them but probably just thought it was a good generic term that related to my site. I have made the usual mistake of buying lots of domains thinking they would help my site get more traffic but now realised my mistakes and letting lots of them expire. I would probably have just let these expire too in all honesty

 

[namealot]

Depends on the name (the classes they have registered) what country the trademark is registered in, The time at which they started trading in relationship to your registration, who owns the other TLD, s among other things

e.g

2370919 Money 18/08/2004 Registered

2498347 MONEY 23/09/2008 Registered

one as text one as image different companies different good services etc in they both could try and go for money .co.uk if the dates were ok chances of winning would be pretty slim but that doesnt mean they don't have trademarks just they are not always what they seam.
You can have the same word trademarked buy a number of different companies it’s the product, service items etc they offer that differentiates them…
Also they issue trademarks very easily in some parts of the world and … Personal experience 80% + of the letters I have received are absolute bull, what,s the name?

 

[Ashton]

In my mind domains are only as valuable as what someone will pay for them, this company wants them so they are worth something.

Why not contact them directly and discuss a small settlement to reimburse you for your time? They clearly are very interested in them and an easy small settlement would probably be ideal for them. Failing that just transfer I guess.

Interesting situation, if you could pm me the domains to sate my curiosity I would appreciate it.


Could just be trying to scare you, research into the TM attorney some more, like google "Attorney name +domain +transfer" and see what you find out.

 

[chuckylefrek]

Ok I have just found out the other party has an application for a community trademark dated august this year. The "Mark Text" is the same as my domain name without the extension.

I guess that means game over?

Thanks

Paul

 

[Takwa]

Well it really depends who did it first, if you had it reg before that TM and they don't own any other tld before you reg, then they have no chance and that's "reverse hijacking"

 

[retired_member12]

Do you have any IP logs from say June onwards?

 

[Ashton]

As for the TM after you regged the domain, just look at this:

http://www.theregister.co.uk/2010/08/24/take_two_bioshock/

 

[chuckylefrek]

Unfortunately they registered the .org.uk before I registered the .com and .co.uk

Out of interest, at what point do I risk being out of pocket? If they want to pursue this, can I hold tight for their next step or will it be too late by then and I will have to incur charges? I guess to obtain the .co.uk they need to file a DRS which I assume costs money. And I guess if they succeed they could ask me to repay these costs in addition to any other costs they have incurred.

Or if they file a DRS, can I simply agree at that stage to hand them over and not be out of pocket?

 

[chuckylefrek]

IP logs? Hmm I don't really know what you mean. I guess that probably means no

 

[namealot]

they have a trademark ? registerd after your registration of the name but had the other name before you then " ignore reply I sent well parts then ..?"

 

[Takwa]

You have a chance as your domain is generic, you seen the Oasis case?
It depends how good is your domain, if it's just cheap then I won't brother fighting.

That's brings up a question, do anyone know if you can buy insurance to cover UDRS case?