My domain is close to another - owner has sent threatening email!

LumpyBumps · Nov 4, 2010

Hi guys, after a bit of advice here.

I've been contacted by the owner of the website XandY.co.uk (not the real domain name obviously) as I've been using X-and-Y-uk.co.uk for the last three years as an eBay affiliate site.

Apparently their domain XandY is trademarked (is this possible ?) and my domain, even though it ranks for bugger all, is apparently confusing their customers. Oddly though they don't own X-and-Y.co.uk (no-one does).

I bought my domain when it dropped so there was no intention of infringing any trademark.

What should I do ? I'm a reasonable person but don't like being threatened. They have given me 48 hours to "transfer it to us we will pay the cost of the domain" or else they will involve their trademark attorney

Should I offer to sell them the domain, or do I have no choice but to hand it over ?

Thanks in advance

Phil

Blossom · Nov 4, 2010

I'm assuming X and Y in your example are dictionary/common words?

j13 · Nov 4, 2010

Search for the trademark on the ipo site here

If it does exist, is it in the same class that your EPN site is? (e.g. clothing)

Ashton · Nov 4, 2010

Also if they have TM, when was it regged? If your domain came before the TM its a big advantage.

LumpyBumps · Nov 4, 2010

Thanks for the replies guys. As far as I can tell the they don't have the Trade Mark on the words in their domain name (mind, I'm not entirely sure if I'm searching correctly) so it looks like they are grandstanding in their email.

My domain was first registered in 2007, theirs in 2003 so they beat me there.

To be honest, I'd be happy to sell them the domain (and remove all the links pointing to it

). I just don't want to give it to them for nowt !

I guess that I'll go back to them with an offer . . .

Ashton · Nov 4, 2010

LumpyBumps said:
Thanks for the replies guys. As far as I can tell the they don't have the Trade Mark on the words in their domain name (mind, I'm not entirely sure if I'm searching correctly) so it looks like they are grandstanding in their email.

My domain was first registered in 2007, theirs in 2003 so they beat me there.

To be honest, I'd be happy to sell them the domain (and remove all the links pointing to it ). I just don't want to give it to them for nowt !

I guess that I'll go back to them with an offer . . .

I would advise against going back to them with an offer, that just gives them more material if it comes to DRS and it also means they are less likely to purchase it off you.

If you can, try and find similar sales situations etc, or point them in the direction to make an offer (so it seems like it was their idea)

If you pm me the names ill look through the TMs and point you in the right direction, it does kind of depend on them. For example:

BooksandStationary.co.uk
BooksandStationaryuk.co.uk

Is a lot better for you, than if it were something similar to:

LegalandGeneral.co.uk
LegalandGeneraluk.co.uk

Mostly however, it would boil down to the trademark they claimed and when it was registered. The fact it has taken them 3 years to 'pursue' this name shows that they probably didn't feel they had grounds to before.

Good luck and feel free to pm! (confidential ofc.)

wb · Nov 4, 2010

Ask them to confirm and provide proof whether they think they have a right to claim their name is trademarked or an actual registered trademark.

It's a criminal offence if they claim it's a registered trademark and it's not, could help your position out too.

redbird · Nov 4, 2010

If the "x" and "Y" are two dictionary words then you should have a strong case. It may just be a bluff but it's a bit difficult without knowing exactly what the domain in question is.

However....

"...I've been using X-and-Y-uk.co.uk for the last three years as an eBay affiliate site..."

You don't say what the products were. If the ebay links were to website XandY.co.uk's products and you are in effect benefiting from using their name, then that is going to weaken your case whether they have a trademark or not.

I also agree that you SHOULD NOT offer to sell it to them (at least not at this stage), it could backfire.

Bailey · Nov 4, 2010

Not many country level domains out there with three hyphens . I'm interested why you identified this domain from the drops, when as you say the double hyphen X-and-Y is available

And for them to think it worthwhile to come after you. - I very much doubt that is a bluff, Ignorance maybe ? Take up the offer for one of the old hands at Acorn to give it the once over. (myself included)

Was this an email or written complaint ?

You don't mention the terms as being generic - I'm thinking you tried to come in under the radar - please tell me i'm wrong

denchomsky · Nov 4, 2010

I agree ignorance is probably the case here, a client was involved in a similar situation where someone claimed that because they owned the ltd company name they were entitled to the domain names even thought they were registered before the ltd company, they were threatening this and that, saying stuff like "my lawyer says there is a law against this type of thing" and when my client kindly offered to let them have the domains for a very reasonable price, and said they would have to pay the transfer fee they replied :

"I don't understand cost re. transfer - if I pay for the domain I would do it via paypal which is the only safe/secure way."

Bailey · Nov 4, 2010

Nice example denchomsky. I've been at the end of a couple of similar attempts myself. But, sometimes you also have have to watch out for those playing innocent. My guess is lumpybumps knows this is a can of worms - And I'll be the first to apologise if I'm wrong

LumpyBumps · Nov 5, 2010

I'm interested why you identified this domain from the drops, when as you say the double hyphen X-and-Y is available

I went through a phrase of buying keyword rich domains with backlinks and throwing EPN sites up on them. This was one that I bought.

You don't mention the terms as being generic - I'm thinking you tried to come in under the radar - please tell me i'm wrong

Not sure what you mean - but basically the terms are generic so I was hoping to make some sales as an eBay affiliate. My intention wasn't to pass off as this company. When I registered the domain I didn't even know that they existed !

I'll drop you a PM now.

Thanks

Bailey · Nov 6, 2010

Thanks

I have all the details - And I am getting ready to eat a big portion of humble pie, the advanced searches for the UK DB are off overnight so rather than give you half an answer - I would rather give you a conclusive answer late tomorrow or monday morning. Once i have had time to view refused marks. US database etc.

I have to admit the give-away was that don't even claim the Mark as "registered" on their site or in the communications. PS if you wanted to be smart in the short term you could say your looking into the matter and perhaps they could direct you to their 'registered mark'

The term is far too generic to have any distinctiveness or historical usage rights. And if you really want to get their back-up point out theres no letter "U" in Attorney.

Only joking the best response is not to bite - I will Pm you tomorrow or Monday at the latest

namealot · Nov 7, 2010

LumpyBumps said:
Hi guys, after a bit of advice here.

I've been contacted by the owner of the website XandY.co.uk (not the real domain name obviously) as I've been using X-and-Y-uk.co.uk for the last three years as an eBay affiliate site.

Apparently their domain XandY is trademarked (is this possible ?) and my domain, even though it ranks for bugger all, is apparently confusing their customers. Oddly though they don't own X-and-Y.co.uk (no-one does).

I bought my domain when it dropped so there was no intention of infringing any trademark.

What should I do ? I'm a reasonable person but don't like being threatened. They have given me 48 hours to "transfer it to us we will pay the cost of the domain" or else they will involve their trademark attorney

Should I offer to sell them the domain, or do I have no choice but to hand it over ?

Thanks in advance

Phil

Don't offer to sell it to them let them make any offers, If they had not consulted a legal advisor already they should be careful sending out letters demanding things could be conceived as harassment, intimidation etc (slim but always an avenue to look at…? ).

If they have the trademark and you advertising selling etc the same class of goods, services etc you lose, (chances of nominet not awarding them it pretty slim) Even different class etc nominet if they have a trademark could go in there favor…? The fact they have not registered the x-and-y.co.uk doesn’t really matter bad business practice but if they have the trademark anyone that did would likely have to hand it to them anyhow…?

If the letter sent you has error’s that’s interesting from a legal view point it’s there to set out the facts that form the basis of the case they intend to present and therefore should be error free (There are legal implication for it being incorrect)

There are some strange things afoot..?

Ashton · Nov 7, 2010

I have also seen the domain and the site requesting the transfer and I have no idea why they think they have a right to the domain. The term is very generic, as I asked earlier, the similar example would be booksandstationary.co.uk but this term is even more generic. I will leave it to bailey to suggest a fitting reply I am sure it would be better than anything I could cook up.

Bailey · Nov 8, 2010

I will also add, that anybody that comes at you with a 48 hour deadline has been watching far too many movies anyway.

Seriously these things do happen occasionally with inherent rights, sometimes with misplaced egos. Always best to treat them all professionally. And this particular instance looks like it may have an all-round positive outcome after all. (before my or any others involvement)