First DRS Dispute, Options?

[DisputeHelp2021]

Hi there,

I've just been sent a DRS dispute for the first time and am curious about the process/what to expect. Here are the key facts from my side.

In early 2019, I acquired a domain which is a plural form of a generic word. E.g. examples.co.uk, I then started developing the site in the autumn of 2019 with content around the most obvious topics associated with the word.

In Dec 2019, another company incorporated and Trademarked the brand name which is the singular. E.g. Example. They also own example.co.uk (which was not in use when I set-up my site), but it redirects to a non fully branded .com (e.g. tryexample.com)

The trademark does not cover the most obvious content topic area, but does cover an adjacent topic area. I have also written content in this area as well, but was published before I knew this other company existed. I should also note this topic area is a small % of the total content on my site.

The company then contacted me out of the blue in Dec 2020, at first wanting to explore options how we could keep our brands further apart. At the time they also floated the idea of buying the domain, but when I stated my price they declined and shortly afterwards blocked me on the platform they used to contact me.

I did manage to get a hold of someone there asking them what happened via e-mail. But they informed the matter was closed on their end as they did not think we were close enough on price to buy the name.

I assumed that's where we were and didn't give it much more thought. Therefore, I was a little surprised to get a DRS notification about the whole thing last week.

I've already drafted up a reply, but am just wondering if there's anything in particular that's helpful in cases like this?

Don't want to lose the name as I've invested a significant amount of time and money into it. At the same time it's not the only thing I have going on. Ideally I just want a solution we're all happy with, but I've found dealing with this company very confusing.

Anyway any advice is very much appreciated.

Thanks

 

[JMI]

Hi there,

I've just been sent a DRS dispute for the first time and am curious about the process/what to expect. Here are the key facts from my side.

In early 2019, I acquired a domain which is a plural form of a generic word. E.g. examples.co.uk, I then started developing the site in the autumn of 2019 with content around the most obvious topics associated with the word.

You mean you slapped a 1 page wp site up

In Dec 2019, another company incorporated and Trademarked the brand name which is the singular. E.g. Example. They also own example.co.uk (which was not in use when I set-up my site), but it redirects to a non fully branded .com (e.g. tryexample.com)

You mean your domain is actually confusingly similar

The trademark does not cover the most obvious content topic area, but does cover an adjacent topic area. I have also written content in this area as well, but was published before I knew this other company existed. I should also note this topic area is a small % of the total content on my site.

You wrote a few hundred words of fodder being careful not to rock the boat being "clever"

The company then contacted me out of the blue in Dec 2020, at first wanting to explore options how we could keep our brands further apart. At the time they also floated the idea of buying the domain, but when I stated my price they declined and shortly afterwards blocked me on the platform they used to contact me.

You went back with a silly price and they thought cheaper to DRS this punk

I did manage to get a hold of someone there asking them what happened via e-mail. But they informed the matter was closed on their end as they did not think we were close enough on price to buy the name.

You realised you over egged it and went begging to get a sale when realising your silly price expectation

I assumed that's where we were and didn't give it much more thought. Therefore, I was a little surprised to get a DRS notification about the whole thing last week.

Oops

I've already drafted up a reply, but am just wondering if there's anything in particular that's helpful in cases like this?

Don't want to lose the name as I've invested a significant amount of time and money into it. At the same time it's not the only thing I have going on. Ideally I just want a solution we're all happy with, but I've found dealing with this company very confusing.

The only thing confusing is your "confusingly similar" domain with some fodder on it.

Anyway any advice is very much appreciated.

Get ready to spend some money

Thanks

 

[ian]

Trying to be more helpful, if you purchased and developed the domain before they started their brand, domain and trademark; and nothing you've said in subsequent correspondence conflicts with that, then I'm not sure how you could of predicted the future and should make that clear in your defense.

 

[webber]

In early 2019, I acquired a domain which is a plural form of a generic word. E.g. examples.co.uk, I then started developing the site in the autumn of 2019 with content around the most obvious topics associated with the word.

In Dec 2019, another company incorporated and Trademarked the brand name which is the singular. E.g. Example. They also own example.co.uk (which was not in use when I set-up my site), but it redirects to a non fully branded .com (e.g. tryexample.com)

So you bought the domain before the complainant started trading/trademarked the name.
The domain was potentially registered even further back.
This should fail the DRS dispute easily. Ordinary dictionary words can be used legitimately in connection with their natural meaning.
You could even argue this is a reverse domain name hijacking attempt.

Are you sure it is a generic word? You cannot trademark a generic word for its natural meaning.
If the name is 'apples' and the complainant is Apple then they have no chance.
If the name is 'googles' and the complainant is Google then you should give them the domain.

There are some simple tests for a DRS to succeed:
• does the complainant/responded have rights in that name?
• is the domain identical or confusingly similar?
• is it an abusive registration/bad faith?

I am not an expert nor have I dealt with a DRS directly (one was initiated against me then dropped).
Do have a read through past decisions which could be similar to yours, some patterns will emerge.
A lot of people recommend adlex solicitors for DRS issues

 

[armistice]

There are some simple tests for a DRS to succeed:
• does the complainant/responded have rights in that name?
• is the domain identical or confusingly similar?
• is it an abusive registration/bad faith?

Just to add to the above, the complainant has to prove (on the balance of probabilities) all the above.

Its hard to prove an abusive registration / bad faith if the domain predates the claimants use of term.

 

[JMI]

Touched a few nerves

Anyone who starts off asking for DRS help with "I acquired a domain.." says it all.

 

[DisputeHelp2021]

Hi there,

I've just been sent a DRS dispute for the first time and am curious about the process/what to expect. Here are the key facts from my side.

In early 2019, I acquired a domain which is a plural form of a generic word. E.g. examples.co.uk, I then started developing the site in the autumn of 2019 with content around the most obvious topics associated with the word.

You mean you slapped a 1 page wp site up

In Dec 2019, another company incorporated and Trademarked the brand name which is the singular. E.g. Example. They also own example.co.uk (which was not in use when I set-up my site), but it redirects to a non fully branded .com (e.g. tryexample.com)

You mean your domain is actually confusingly similar

The trademark does not cover the most obvious content topic area, but does cover an adjacent topic area. I have also written content in this area as well, but was published before I knew this other company existed. I should also note this topic area is a small % of the total content on my site.

You wrote a few hundred words of fodder being careful not to rock the boat being "clever"

The company then contacted me out of the blue in Dec 2020, at first wanting to explore options how we could keep our brands further apart. At the time they also floated the idea of buying the domain, but when I stated my price they declined and shortly afterwards blocked me on the platform they used to contact me.

You went back with a silly price and they thought cheaper to DRS this punk

I did manage to get a hold of someone there asking them what happened via e-mail. But they informed the matter was closed on their end as they did not think we were close enough on price to buy the name.

You realised you over egged it and went begging to get a sale when realising your silly price expectation

I assumed that's where we were and didn't give it much more thought. Therefore, I was a little surprised to get a DRS notification about the whole thing last week.

Oops

I've already drafted up a reply, but am just wondering if there's anything in particular that's helpful in cases like this?

Don't want to lose the name as I've invested a significant amount of time and money into it. At the same time it's not the only thing I have going on. Ideally I just want a solution we're all happy with, but I've found dealing with this company very confusing.

The only thing confusing is your "confusingly similar" domain with some fodder on it.

Anyway any advice is very much appreciated.

Get ready to spend some money

Thanks

Thanks for your post, just FYI I won the initial dispute and the the appeal. So I guess I didn't need to spend some money.

 

[DisputeHelp2021]

So you bought the domain before the complainant started trading/trademarked the name.
The domain was potentially registered even further back.
This should fail the DRS dispute easily. Ordinary dictionary words can be used legitimately in connection with their natural meaning.
You could even argue this is a reverse domain name hijacking attempt.

Are you sure it is a generic word? You cannot trademark a generic word for its natural meaning.
If the name is 'apples' and the complainant is Apple then they have no chance.
If the name is 'googles' and the complainant is Google then you should give them the domain.

There are some simple tests for a DRS to succeed:
• does the complainant/responded have rights in that name?
• is the domain identical or confusingly similar?
• is it an abusive registration/bad faith?

I am not an expert nor have I dealt with a DRS directly (one was initiated against me then dropped).
Do have a read through past decisions which could be similar to yours, some patterns will emerge.
A lot of people recommend adlex solicitors for DRS issues

Really appreciate your help and advice. I won both the intimal judgement and the appeal. You can read about the cases if you do a search for the complainant: FF Bequest Limited.

 

[DisputeHelp2021]

Finally, just wanted to say thank you to everyone who posted here giving advice. I really appreciate you taking the time. Was obviously quite stressful, but was able to prove that it was not done in bad faith. Not happy about the amount of time and effort I had to spend on it, but feel a little better knowing the other side wasted over £3k on a case they couldn't win.

 

[webber]

I suspect your domain is bequests.co.uk? I was reading the appeal summary last night.
I'm surprised of the first DRS decision to be honest, but glad you got there in the ned on the appeal.
Did you get legal help or did you handle this by yourself?

 

[DisputeHelp2021]

I suspect your domain is bequests.co.uk? I was reading the appeal summary last night.
I'm surprised of the first DRS decision to be honest, but glad you got there in the ned on the appeal.
Did you get legal help or did you handle this by yourself?

Yes, that's right. What surprised you about the first DRS decision? I ended up doing it myself. Nominet makes things pretty clear if you just read through their guidelines carefully (something the other side failed to do despite the CEO of the company having a legal background).

 

[rob]

Finally, just wanted to say thank you to everyone who posted here giving advice. I really appreciate you taking the time. Was obviously quite stressful, but was able to prove that it was not done in bad faith. Not happy about the amount of time and effort I had to spend on it, but feel a little better knowing the other side wasted over £3k on a case they couldn't win.

Add it on to a future sales price to that entity - I have recently done similar, and specifically detailed it as the "$legalcounselname Tax" where they paid initial ask, plus DRS costs / fees.

Nominet needs to reform the system but that is a different thread.

 

[webber]

What surprised you about the first DRS decision?

Apologies, for some reason I assumed you lost the DRS and brought the appeal. Having read both cases more carefully, I think they are indeed correct. Good job and doing all this by yourself.