Trademark/Domain registration

peter_w · Sep 13, 2011

A friend has asked me to help acquire a domain on his behalf. It's a bit complex, but in summary the company he sells products on behalf of operates on the .com extension (a made up word, none common usage). A third party currently owns the .co.uk domain.

The .com domain was registered on, let's say, the 5th of Month. The .co.uk was registered on the 6th of Month. Also on the 6th of Month, a trademark was filed for the term. It was granted a few months later.

The company who owns the trademark and .com now also want to get the .co.uk. Do they have any "right" to it?

Rob_F · Sep 13, 2011

peter_w said:
A friend has asked me to help acquire a domain on his behalf. It's a bit complex, but in summary the company he sells products on behalf of operates on the .com extension (a made up word, none common usage). A third party currently owns the .co.uk domain.

The .com domain was registered on, let's say, the 5th of Month. The .co.uk was registered on the 6th of Month. Also on the 6th of Month, a trademark was filed for the term. It was granted a few months later.

The company who owns the trademark and .com now also want to get the .co.uk. Do they have any "right" to it?

Looks like a clear cut – Yes, the .com owners/TM holders would have a right to it.

- It's a made up word that couldn't be realistically used in another TM class? Something totally unique to that company, right – something along the lines of Google?

- The timing of the .co.uk registration, and your mates connection to and knowledge of the company would work against him from a legal/DRS standpoint.

- Rob

namealot · Sep 14, 2011

peter_w said:
A friend has asked me to help acquire a domain on his behalf. It's a bit complex, but in summary the company he sells products on behalf of operates on the .com extension (a made up word, none common usage). A third party currently owns the .co.uk domain.

The .com domain was registered on, let's say, the 5th of Month. The .co.uk was registered on the 6th of Month. Also on the 6th of Month, a trademark was filed for the term. It was granted a few months later.

The company who owns the trademark and .com now also want to get the .co.uk. Do they have any "right" to it?

Does your friend actually own the trademark or .com ?
If the co.uk was registered before the trademark then they are very unlikely to be in breach as it did not exist?

How made up is the word? Do they sell the same type of product?,
Does other site sell products services trade etc?
Were both trading prior too domain names registrations,
Which company was registered and trading first,
Time between registration of the .com and them wanting the co.uk? etc can come into it talking legal as opposed to other actions...? seams strange with both coming up with the same made up word?

Bailey · Sep 14, 2011

I agree with namealot. Without all the facts its nigh on impossible to give even an indication of an outcome. From the basics given it certainly reads like a suspicious registration but there could easily be 'one missed fact' that turns everything on its head.

Have you had a response from the .co.uk owner regarding your friends request "to acquire"

peter_w · Sep 14, 2011

Thanks for the responses. It's quite difficult to post all the facts for a few reasons. Publicly I'll just close the thread but if anyone has a few minutes it would be great to get an opinion based on the full facts via PM.