Can they force me to transfer a domain name

[chuckylefrek]

Perhaps a bit cheeky but it seemed like a great way to end the matter asap.

 

[unusualdomain]

Thanks!

What surprises me is the name ("mark text") that they are trade marking seems to contravine the names that are allowed to be trade marked in the UK. I was under the impression you could not trade mark a name that describes the service.

According to the IPO site

We will not accept marks which:

* describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;

So it is perfectly understandable how a name like "WH Smith" can be trade marked but this trade mark to me seems like the equivalent of a bread maker trying to trade mark "we make bread".

I assume that if they were able to succeed then no other bread making company could use the text "we make bread" on their website or other material.

I am no expert on trade marks so perhaps I am misunderstanding the rules.

Anyway it is great news to hear that it is possible to object to trade marks

It is possible to object to trademarks and you pay £100 or something to object.

If the trademark is generic(descriptive) they will have argue strongly with the TM office to get it passed. And maybe the TM office hasn't even made a report about it(ie to say it's refused). Also, you need to check the scope of their trademark. If they get a trademark say in the category of beers, wines and spirits, that does not entitle them to the web domain.

 

[Ashton]

Chucky, since the domain is released do you mind sharing the name? I think people will agree with me its very generic. I really wouldn't have let this go ^_^. They don't have any claim to it really.


EDIT: Actually wait until they reg it! Or some canny domainer might get in there before hand!

 

[woopwoop]

They don't have any claim to it really.

Ashton I have to disagree. Chucky shared the name with me and i think that letting it drop/transferring the names to them is the best thing to do.

I know that an example of a similar name was 'freerefillsrestaurant.co.uk' and I can see why that example was given, but it misses out on the feeling I got from the actual domain/circumstances. The main point being that this (well known) organization has invested in a campaign and put money behind their catchphrase. They have stickers on windows, posters, web videos all with this motto.

I see how it's kind of generic, but maybe a better example than 'freerefillrestaurant.co.uk' would be 'everylittlehelps.co.uk'. Again this is just an example. Maybe it's generic and a common phrase, but people associate it with Tesco who have spend a lot of money on it.

I have domains too that I feel are generic/common phrases, but that might be a risk. So when a company comes knocking you have to consider the risk and potential payoff or payout.

Many years ago, and something unrelated to domains, I received a solicitor's letter, and I felt that I was right so engaged in a back and forth. Plus they were overly aggressive making all kinds of ridiculous claims. I think I got sucked in because of all of the additional claims beyond what I considered a minor infraction.
After a few letters/emails I saw the light that I had done something wrong. The something was very small and easily avoidable, but the other party's solicitor made a big deal of something, and probably provoked the naive me into engaging. By the time I wised up to the fact that I made a small mistake and fixed it, it was too late to get off scot free. Their solicitors wanted £1000 for their client's fees (basically 3/4 solicitors letters/emails) and £50 damages for their client (based on £50 I made). I ended up paying it and moving on as quickly as possible - learning experience.
It was actually a stranger who made me see sense. I was working at a technology event and got chatting to a guy who was a lawyer for a record company (his job was to search the web for people using bits of music that aren't theirs and make them pay). I told this guy my story and this was his advice:

Sometimes the best thing to do is to hold your hands up and say you F'ed-up, do whatever you need to do to get out of a situation, and then once out of it, do everything you can to destroy your competitor (in a legal way)

You might feel like you rolled over, but that's a better feeling than rolling over a few weeks later and losing a grand (or worse)!

"Don't let any emotion drag you down the wrong road" - woopwoop, 2010

 

[Ashton]

Aye very true, I would just be stubborn and hold out to be paid off or pay up. Purely because I would enjoy the ride ^^

But still, pubs / restaurants / hotels use this phrase all round the country. They should have secured the domain before making a major campaign.

 

[woopwoop]

Aye very true, I would just be stubborn and hold out to be paid off or pay up. Purely because I would enjoy the ride ^^

LOL - I wanna play you at poker heads up.

But still, pubs / restaurants / hotels use this phrase all round the country. They should have secured the domain before making a major campaign.

Very true. They did have the .org.uk !?!

 

[retired_member16]

What are the names?

I will reg them this afternoon and split the profit with you

PM me if you like.

 

[Jaffaman]

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.

I think they're actually trying to get him to bend forwards.

I've had copyright solicitors chase me 3 times for domain names that I have owned or still own. Each one of them threatened me with everything, unless I surrendered the domain name to their client.

The first one was the biggest firm of attorneys in America, who also represent the USA Administration and some of the biggest household name companies in the World. They ended up offering me (and I accepted) $9000 for the domain. I had to sign a confidentiality agreement, so I can't reveal any details. I'm not picking a fight with this Firm!

The second one was a firm of solicitors acting on behalf of Orange (Yes! That Orange) The usual threats, but I've still got the OrangeCare.com domain name they were trying to scare me out of keeping. They are keeping a regular watch on the website, to ensure that I don't infringe on any of their clients rights though.

The third one was a London firm of copyright solicitors, acting on behalf of one of the biggest football teams in the Premier League. They cited the LiverpoolFC.com case that was resolved in favour of Liverpool FC and ordered me to surrender the name, or else! I quoted them six of the 12 points I would defend my case on, telling them also, that the six other points would be held back until my case was being heard.

I also informed them that it would cost me nothing to defend my case at an ICANN hearing, as the plaintiff picks up the tab of $1500 even if I choose not to defend my case. The better option for defendants who really belive in their defense is to opt for a 3 man panel where both parties share (equally) the costs for the hearing which was set at a maximum of $5000. You would still have to pay up to $2500 to defend your domain name, but there is a massive up-side to making this choice, especially if you tell the Plaintiff that this is the route you will be taking, and why!

The reason why you should consider this route (and you don't even actually have to follow up with your threat) is that you get to choose the 3 Panel Members!

This article will explain why you should condider a 3 Man Panel whenever you have to have to protect your domain from Corporate Domain Name Stalkers

It's an article that should be read by anyone who ever registers a domain name!!

In the latter 2 of these 3 cases, I also threatened to charge the solicitors clients with "reverse domain name hijacking" which tends to put them on the defensive, or come back with a monetary offer for the domain.

"You pays your money, and you makes your choice".

You can own domain names which contain Huge Companies Trademarks, and you can use those domains. As long as you don't affect the reputation or income of those companies.

TY Beanies took this woman to ICANN and lost!

Do some reading on domain name disputes and prepare to fight for your domains.

Cheers.

 

[Ashton]

Great post jeffa. I maintain its a rediculous claim and I was tempted to reg the domains when you dropped them, merely out of respect that I didn't!

Btw, the end user has now registered the .co.uk game over.

 

[woopwoop]

You can own domain names which contain Huge Companies Trademarks, and you can use those domains. As long as you don't affect the reputation or income of those companies....

Do some reading on domain name disputes and prepare to fight for your domains.

People should always keep in mind it isn't black and white. I don't believe that it is enough to just try to avoid affecting their reputation (in this case it might have been - who knows). But blanket statements like fight for your domains (when trademarks are involved) are dangerous.

I'll repeat 'keep emotion out of it' (don't be angry/stubborn/feel bad about giving in if you have to)
Also think:
1. Why you registered the name? If it's because the other company has another TLD, or because you may benefit from their brand/slogan, then you have it for the wrong reason.
2. What would the domain be worth if the complainant didn't exist? If the answer is reg fee or less (in your own opinion) then why fight it? Even if there's a 1% chance of losing...
3. If you have the domain for reasons that are for a project or because you think the name holds value despite the complainant's comany - then do research. Be smart about it:
Check the definition and description of what a trademark is. Look at the investment (if any) the complainant has made in the mark. Look at previous DRS cases. Think about the size of the company. What is your gut telling you? What are the chances you think you'd win/lose this case? What are the potential money in vs money lost? Also how busy are you? Is this just a distraction from making money elsewhere? Are you married/have kids? How much would it hurt to lose 1k? 5k?

After considering all of this (and the stuff I'm forgetting) then at least you're making a smart choice with all of the information available.

Great post jeffa. I maintain its a rediculous claim and I was tempted to reg the domains when you dropped them, merely out of respect that I didn't!

Btw, the end user has now registered the .co.uk game over.

Ashton - it isn't a game. People have been crushed financially by running into a situation head first.

I also think that it's one thing to operate in this way privately (buying questionable domains and fighting any solicitors letters, but publicly, your advice can get someone into trouble.

I'm not saying don't offer your advice - your opinion on this domain might be correct, but things like 'game over' or jaffaman's 'they're trying to get him to bend forward' comments could get people into trouble, fighting for domains that they should give up.

I'm not a complete domain saint, and I kinda mentioned in an earlier post, I got into a legal tangle about something unrelated to domains, it's just made me wiser and smarter.

I really feel that at worst chucky has lost £200 and at best has avoided lost £££/££££ and a loss of time, and all the stress that would come with it.

 

[Jaffaman]

Misinterpreted

Hi Woopwoop,

Quote
People should always keep in mind it isn't black and white. I don't believe that it is enough to just try to avoid affecting their reputation (in this case it might have been - who knows). But blanket statements like fight for your domains (when trademarks are involved) are dangerous.
Quote Ends

If you read my posts and then comment on them, please do so accurately.

Nowhere did I make a blanket statement telling people to merely "fight for their domains".

I advised them to "Do some reading on domain name disputes and prepare to fight for your domains."

I also provided some links for them to get an idea on what help is available to them. Then they can decide if they are likely to be successful in defending their domains.

No blanket comment of mine ever suggested that domain owners should just jump in blindly against solicitors. I was just highlighting the fact that a threatening letter from a solicitor, doesn't always mean that you should capitulate and surrender a name that you may legally be entitled to keep.

If you believe that you are the victim of an attempted reverse domain name hijacking by anyone, look at previous ICANN decisions that are comparable to your own case and make an informed decision on whether or not to relinquish the possibly legal ownership of your domain.

You may end up receiving $9000 for stance, as I did.

If the USA solicitors had taken action against me with an initial "Cease & Desist" notice, I could have simply backed off when I knew the lengths they were prepared to go to and surrendered the name, or I could have taken it a small stage further.

My posting was to encourage people to arm themselves and prepare for any domain name defense, by using precedents that have already been set by ICANN in previous cases.

Read & Prepare.

Or, you could always just drop your best domains, whenever anybody's solicitor asks you for them!

 

[woopwoop]

Jaffaman - I'm not trying to offend. Sorry if you were offended.

I did read your post and your situation may be different to the next guys. Who knows? Thanks for providing the links they are an interesting read.

In some cases it may be worthwhile preparing to fight for your domains but not in every case. That's what i was referring to when I said blanket statement.

In my opinion there are some new domainers who would hang on to a dangerous name oblivious to any danger (even when it doesn't make business sense to keep the domain - unless it's to get paid by the person complaining).

I just don't want anyone to get shafted. There are safer and more sustainable ways to make money out of domaining/developing.