Domain name dispute
Discussion
Afternoon folks,
I have a situation that has arisen, which I could do with a bit of advice on.
Back in 2014, I started 'informally' distributing a German product here in the UK. I say informally because no paperwork was drawn up giving me exclusivity , it was all done on a handshake. As part of getting the product to market here, I set up 'productname.co.uk' - placed a simple website on there with product information, and my contact details as the UK agent. The domain was registered and website set live in Feb 2014.
I did this as they didn't seem particularly internet savvy.
The product never really took off, my trials with it produced average results, and I stopped stocking it at the end of 2015. I took the website I made down, and setup a redirect so the domain points at my main website. The domain is still registered, I pay the £10 a year, and it just sits there pointing at my website.
The German company have contacted me with an angry email, demanding I hand over the domain. Unbeknown to me, they registered 'productname' as a UK trademark in June 2015.
So, do I hand it over? Should they purchase the domain from me for a nominal fee?
I've never been in the position, and never sold a domain, so really don't know.
I have a situation that has arisen, which I could do with a bit of advice on.
Back in 2014, I started 'informally' distributing a German product here in the UK. I say informally because no paperwork was drawn up giving me exclusivity , it was all done on a handshake. As part of getting the product to market here, I set up 'productname.co.uk' - placed a simple website on there with product information, and my contact details as the UK agent. The domain was registered and website set live in Feb 2014.
I did this as they didn't seem particularly internet savvy.
The product never really took off, my trials with it produced average results, and I stopped stocking it at the end of 2015. I took the website I made down, and setup a redirect so the domain points at my main website. The domain is still registered, I pay the £10 a year, and it just sits there pointing at my website.
The German company have contacted me with an angry email, demanding I hand over the domain. Unbeknown to me, they registered 'productname' as a UK trademark in June 2015.
So, do I hand it over? Should they purchase the domain from me for a nominal fee?
I've never been in the position, and never sold a domain, so really don't know.
Not a lawyer but these may help around the dispute process -
https://www.wrighthassall.co.uk/knowledge/legal-ar...
https://www.nominet.uk/domains/resolving-uk-domain...
https://www.wrighthassall.co.uk/knowledge/legal-ar...
https://www.nominet.uk/domains/resolving-uk-domain...
Dr Interceptor said:
The German company have contacted me with an angry email, demanding I hand over the domain. Unbeknown to me, they registered 'productname' as a UK trademark in June 2015.
Registered a trade mark and didn't think to check local domains for two and half years? And now they're angry? I'd be angry back. The trademark didn't exist when you bought the domain, so it's yours. If they want it, they'll have to pay what it's worth. Your site pre existed their registration so I guess you 'could' object to their trademark technically??? I know this is not what you are trying to achieve but IF I'm correct could b
ks their business for a while???
Why not write back and tell them you don't appreciate their tone and suggest they get a new attitude. Maybe state you could cause problems for their trademark as your site predated it - if they want to play hardball! State you'll sell them the website for £5000! See what they say.
The renewal of the site is only £10 a year you could easily afford to be awkward over it.
ks their business for a while???Why not write back and tell them you don't appreciate their tone and suggest they get a new attitude. Maybe state you could cause problems for their trademark as your site predated it - if they want to play hardball! State you'll sell them the website for £5000! See what they say.
The renewal of the site is only £10 a year you could easily afford to be awkward over it.
I've included a copy of their email below....
Angry German said:
Dear Sir or Madam,
As you know, we are the brand owner of the XXXXXXXX (R) brand - as well as in the UK.
Since you do not have any XXXXXXXX products, and it has been proven that no changes have been made to www.XXXXXXXX.co.uk since 2014, we kindly ask you to submit the URL www.XXXXXXXX.co.uk to us latest by the 15th of January 2018. By using the URL you violate our existing trademark protection.
If we do not receive a response and the transmission of the mention URL by the 15th of January 2018, we reserve the right to take legal and fee-based steps.
We thank you for your cooperation and wish you a Merry Christmas.
Mit freundlichen Grüßen
Best regards
As you know, we are the brand owner of the XXXXXXXX (R) brand - as well as in the UK.
Since you do not have any XXXXXXXX products, and it has been proven that no changes have been made to www.XXXXXXXX.co.uk since 2014, we kindly ask you to submit the URL www.XXXXXXXX.co.uk to us latest by the 15th of January 2018. By using the URL you violate our existing trademark protection.
If we do not receive a response and the transmission of the mention URL by the 15th of January 2018, we reserve the right to take legal and fee-based steps.
We thank you for your cooperation and wish you a Merry Christmas.
Mit freundlichen Grüßen
Best regards
Is there any reason to keep it? I assume you have no continuing relationship with them.
They'd have to be crazy to spend the money on a domain name dispute with Nominet, as they would have to show that you registered the domain in bad faith - ownership of a registered trade mark does not automatically entitle a brand owner to the domain name.
You could ask them for the money you've spent on it, plus any costs incurred in transferring it to them. After all, you have effectively prevented another, less reasonable person squatting on the domain.
Having said that, my experience of German brand owners is that they are all too happy to "go legal," and so I'd be very tempted to let them have it for nothing and trust karma pays you back in the future.
They'd have to be crazy to spend the money on a domain name dispute with Nominet, as they would have to show that you registered the domain in bad faith - ownership of a registered trade mark does not automatically entitle a brand owner to the domain name.
You could ask them for the money you've spent on it, plus any costs incurred in transferring it to them. After all, you have effectively prevented another, less reasonable person squatting on the domain.
Having said that, my experience of German brand owners is that they are all too happy to "go legal," and so I'd be very tempted to let them have it for nothing and trust karma pays you back in the future.
Nominet state on their website:
“Demonstrating your rights......
It will often be beneficial to be able to prove that they had rights when the domain name was registered. Although this is not essential, it may be difficult to show that someone has made an abusive registration if you didn’t have rights when the registration took place. For example, it’s unlikely that a domain name registration was made in order to prevent you from having it if you set up your business after the domain name was registered.”
—-
You are entitled to keep the domain according to that. You paid for and registered the domain before a registered trademark existed.
If it was me I would offer to either refer visitors to them for a small administrative fee or agree to sell it for a reasonable sum. I would not hand it over gratis. I presume they could choose other urls but would rather like yours so I cant see any grounds for it being an abusive registration.
“Demonstrating your rights......
It will often be beneficial to be able to prove that they had rights when the domain name was registered. Although this is not essential, it may be difficult to show that someone has made an abusive registration if you didn’t have rights when the registration took place. For example, it’s unlikely that a domain name registration was made in order to prevent you from having it if you set up your business after the domain name was registered.”
—-
You are entitled to keep the domain according to that. You paid for and registered the domain before a registered trademark existed.
If it was me I would offer to either refer visitors to them for a small administrative fee or agree to sell it for a reasonable sum. I would not hand it over gratis. I presume they could choose other urls but would rather like yours so I cant see any grounds for it being an abusive registration.
You would probably get better advice on the Acorn Domains forum.
For what it’s worth, I think they would have a good case to have the domain name taken from you, if they raised a case with the Nominet DRS service. As I understand it that process isn’t cheap, but they may not care about that (depends how much they want the name I guess!)
Obviously you don’t know me from Adam, but I had a trademark issue with a domain a few years back. I owned the domain long before a third party registered the corresponding trademark (for a generic word/product name, too), it was a total ball ache defending myself against legal letters. I kept the domain but looking back, if I were in that situation again, I would probably hand it over (depends how much the name is worth though and whether I was using it).
In this situation if you no longer distribute that brand or product and if they genuinely own the trademark, I would just hand the domain over. Life is too short to get caught up in battles over fairly minor stuff like this. I imagine your time would be far better spent on your current business, and not arguing with the complainant in this case.
For what it’s worth, I think they would have a good case to have the domain name taken from you, if they raised a case with the Nominet DRS service. As I understand it that process isn’t cheap, but they may not care about that (depends how much they want the name I guess!)
Obviously you don’t know me from Adam, but I had a trademark issue with a domain a few years back. I owned the domain long before a third party registered the corresponding trademark (for a generic word/product name, too), it was a total ball ache defending myself against legal letters. I kept the domain but looking back, if I were in that situation again, I would probably hand it over (depends how much the name is worth though and whether I was using it).
In this situation if you no longer distribute that brand or product and if they genuinely own the trademark, I would just hand the domain over. Life is too short to get caught up in battles over fairly minor stuff like this. I imagine your time would be far better spent on your current business, and not arguing with the complainant in this case.
tight fart said:
I'd put it up for sale on one of the sites that sells domain names, if they want it they can buy it.
I like this idea. 
Put it up for public sale, and send them a cheery eMail back, saying something along the lines of "You're absolutely right, I don't use the domain name any more, so I've put it up for sale. You're more than welcome to buy it from wwww.domain_name_sales_site.com. Happy Christmas!"
Nominet will follow the ICANN domain name dispute policy, it is a global thing and recognises trademarks.
https://www.icann.org/resources/pages/help/dndr/ud...
Since they have the trademark, your position is weak regarding keeping it.
However since it was obtained on good faith you could request reasonable costs of transfer. That would include your own time, past costs and providing that was less than the dispute filing fee, they would be foolish to refuse.
https://www.icann.org/resources/pages/help/dndr/ud...
Since they have the trademark, your position is weak regarding keeping it.
However since it was obtained on good faith you could request reasonable costs of transfer. That would include your own time, past costs and providing that was less than the dispute filing fee, they would be foolish to refuse.
4x4Tyke said:
Nominet will follow the ICANN domain name dispute policy, it is a global thing and recognises trademarks.
https://www.icann.org/resources/pages/help/dndr/ud...
Forget ICANN, Nominet have their own drs policy, see https://www.nominet.uk/domains/resolving-uk-domain...https://www.icann.org/resources/pages/help/dndr/ud...
Is is not enough that they have rights in the name. A UK trademark will demonstrate this, but as the trademark was formed after the domain registration it isn't enough go in itself to get the domain from you.
They have to demonstrate that the registration is "abusive".
This is where you may have problems. You say the domain is forwarding to your website. Does your website sell competing products? That is, does the domain refer to a brand of "widget" where you sell other brands of widget?
If so then it can be demonstrated it is abusive and they will most likely win a DRS and take the domain from you.
If however your website sells completely different products then you could reply to say the DRS would cost £750 and they can have it for £375 - however only do this if you a very sure of the facts (as this in itself could be construed as abusive)! Feel free to PM me the domain for a better reply.
The classic example was the Apple.co.uk domain, that had been used by a domain agency called Apple for over 15 years, absolutely nothing that Apple Inc could go about it.
otherman said:
OP is holding a thing of value that he legitimately owns. Other side of coin.
Not really they could just register with a new one with a hyphen or something. Once google sees the website with the keywords on it for german widgets then that's what'll come up not a redirection to the OP's completely irrelevant website with zero marketing behind it. Why be a dick over something so trivial. It's Christmas after all.buggalugs said:
otherman said:
OP is holding a thing of value that he legitimately owns. Other side of coin.
Not really they could just register with a new one with a hyphen or something. Once google sees the website with the keywords on it for german widgets then that's what'll come up not a redirection to the OP's completely irrelevant website with zero marketing behind it. Why be a dick over something so trivial. It's Christmas after all.Gassing Station | Business | Top of Page | What's New | My Stuff