Protecting a .co.uk

murph · Jun 21, 2010

I'm about to acquire a .co.uk and am concerned that a big company could set up business and get Nom to force me to give it up!

What are my options to protect it?
Should I set up a UK ltd company and/or apply for a TM? Or would a decent website and "trading name" be sufficient?

The .com of the same domain is parked by a big company and as such can see the potential for a large fee to be paid for its acquisition in the future.

Regarding a TM. The name is a 2 word phrase: "UK" followed by a generic. Would this likely get refused?

crabfoot · Jun 22, 2010

If you know someone has the .com parked, you are at a distinct disadvantage with plans to sell the UK domain to them. THEY obviously have the earlier claim - but if they are not actually using it, you have a chance.

Trade Mark = If the mark is a generic with UK added, the UK patents people may just get a bit sniffy about it. There were some old restrictions on TM names using words like UK, British, Imperial, before Europe widened things out. And remember, for a TM you have to say why your TM is unique on the application form - so the phrase may be "too commonplace".

If you have checked that THEY have not trademarked the term, you might have a chance with this strategy.

Given that THEY haven't used the domain or the TM, you would have to be seen to be trading, even in a limited way, using the mark, and in their trading area. You would register the TM through the European office in Alicante = it costs a bit more, but you can register a "text mark" rather than a "logo" (and they ask less stupid questions).

So you would need to simultaneously buy the uk domain, apply for a TM registration, set up a limited company, and start trading in their market VERY quietly - just enough to show that you are "in business", not enough to excite interest.

After the TM has been awarded, you can propose that they either surrender the .com, or buy your uk domain, the TM and your barely functioning company at a significant profit to you.

It is a gamble to try this for profit, because they might just hand over the ,com and walk away. But if you just want to use your domain for trade, it could be the best approach - or you might make a nice profit and stop working.

The key is the TM - if you can show that TM registration, you are in a position to have any site they put up on the .com taken down, and they know it. But if it comes to a legal showdown, you have to be able to show that the name is being used for business.

namealot · Jun 22, 2010

Depends a lot on what you do with the name and why you’re registering it..?

If you’re registering to start a business, Worried about them taking your name. No way is 100%..? Trade Mark, company registration, company stationary, Proof of advertising the name, client base, can be better to have lots of customers shows the company is growing (the loss would adversely effect your business) rather than just a few (purely paper exercise) charity donations, letters addressed to your company(anything quotes, estimates request for brochures etc) more you show the business is real, established and trading and known buy the name? the better chance you may stand.

If you’re just registering it because you want to sell it to them you could be on sticky ground..?

Why they have not purchased the co.uk themselves…...

Just because there not visibly using the domain(Could just be using email services etc ) does'nt mean they are not trading…

Trademark route for a better case.. should be 100% (not in reality) Lots of classifications (Even if the words are trademarks, it may be possible for someone to register them in another class.) How well they work when going up against a large corporation is not so clear cut …
Some examples of UK trademarks being used by the non UK trademark holder
Afilias use - about.info –check uk trademark E1216811 ABOUT
Afilias use- address.info - check uk trademark 1443487 ADDRESS
Afilias use- directory.info - check uk trademark 276801 DIRECTORY
There are many others too...?

If its an aged name check its history, Check the other company details as much as possible (helps to know what they can spend and when etc). Check udrp drs cases, Do your homework if you paying a decent sum for it... If its a new registered domain doubt it would be worth all the effort ...

murph · Jun 24, 2010

Sorry only just seen replies!
The .com is owned and parked by a large domain holding company so it's not currently owned by a company trading as that name.
I now own the .eu and the .org.uk.
There isn't currently any trading company under this name so I can set up a ltd company straight away.
I have a feeling that this won't be trademarkable. In which case, surely nonone can force a DRS on me??
But do I actually need to register the UK company in this name for the protection? I mean it's adding some extra hassle in terms of paperwork etc!!