Wrestling a domain name away from someone using a trade mark
Discussion
Can you wrestle a .co.uk domain name away from someone, if you own:
Im guessing that if we owned the trade mark, we could wrestle the .co.uk domain (not in use) away from the company?
There was no intent on their part to steal the domain name away from any Ltd company, as our new Ltd company does not yet exist, so nothing was done on the sly (on their part) in that respect.
I have read up on domain name law and case studies a number of times over the years, but the actual details of who can legally do what have faded into the dark recesses of my cobweb riddled mind.
Another question - what is the normal procedure and cost associated with trade mark registration?
Final question: Im 99% sure it IS legal to register Ltd companies with the word British in them, am I correct? (IIRC, I think 'Royal' is the word which isnt allowed to be used in a company name, I think...)
- The .Ltd company
- (The .com domain)
- And the trade mark of the Ltd company
Im guessing that if we owned the trade mark, we could wrestle the .co.uk domain (not in use) away from the company?
There was no intent on their part to steal the domain name away from any Ltd company, as our new Ltd company does not yet exist, so nothing was done on the sly (on their part) in that respect.
I have read up on domain name law and case studies a number of times over the years, but the actual details of who can legally do what have faded into the dark recesses of my cobweb riddled mind.
Another question - what is the normal procedure and cost associated with trade mark registration?
Final question: Im 99% sure it IS legal to register Ltd companies with the word British in them, am I correct? (IIRC, I think 'Royal' is the word which isnt allowed to be used in a company name, I think...)
Edited by Buster Bakdorzin on Tuesday 24th June 20:52
Buster Bakdorzin said:
Can you wrestle a .co.uk domain name away from someone, if you own:
Im guessing that if we owned the trade mark, we could wrestle the .co.uk domain (not in use) away from the company?
There was no intent on their part to steal the domain name away from any Ltd company, as our new Ltd company does not yet exist, so nothing was done on the sly (on their part) in that respect.
I have read up on domain name law and case studies a number of times over the years, but the actual details of who can legally do what have faded into the dark recesses of my cobweb riddled mind.
Another question - what is the normal procedure and cost associated with trade mark registration?
Final question: Im 99% sure it IS legal to register Ltd companies with the word British in them, am I correct? (IIRC, I think 'Royal' is the word which isnt allowed to be used in a company name, I think...)
Check out the domain name disputes forum at www.acorndomains.co.uk- The .Ltd company
- (The .com domain)
- And the trade mark of the Ltd company
Im guessing that if we owned the trade mark, we could wrestle the .co.uk domain (not in use) away from the company?
There was no intent on their part to steal the domain name away from any Ltd company, as our new Ltd company does not yet exist, so nothing was done on the sly (on their part) in that respect.
I have read up on domain name law and case studies a number of times over the years, but the actual details of who can legally do what have faded into the dark recesses of my cobweb riddled mind.
Another question - what is the normal procedure and cost associated with trade mark registration?
Final question: Im 99% sure it IS legal to register Ltd companies with the word British in them, am I correct? (IIRC, I think 'Royal' is the word which isnt allowed to be used in a company name, I think...)
Edited by Buster Bakdorzin on Tuesday 24th June 20:52
From memory, you could file a DRS (dispute resolution service) claim against them, but it will cost you at least few hundred pound. It should be cheaper (and kinder) to write them a polite e-mail asking them to transfer the domain and offering them a nominal fee for their cooperation.
Olympic is another word that shouldn't be used in a domain name...and I assume this will be he case for ltd companies too.
Buster Bakdorzin said:
There was no intent on their part to steal the domain name away from any Ltd company, as our new Ltd company does not yet exist, so nothing was done on the sly (on their part) in that respect.
Seriously? You're deliberately setting out to get involved in a dispute about domain names? Edited by Buster Bakdorzin on Tuesday 24th June 20:52
If they are legitimately using the name and have been for their business, I'd be disappointed if you could just register the company name and screw them over.
I don't entirely understand what you say they are doing with the domain name?
I know one person who got involved in a dispute over a .com, on the fact of it he had a watertight case, legitimate usage of it that pre-dated the claim by the other company. He got royally screwed over and it cost him a fortune and vast amounts of stress.
I can't imagine why you'd want to set out to get involved in litigation or have I read your post wrongly?
If its a .co.uk domain then nominet have a dispute resolution service.
To get the domain reassigned you will have to show that the registration was abusive in some regard. Abuse being defined as carpet bagging (harrods.com case for instance) or deliberately harmful to your business in some way.
As the limited company does not yet exist I would have thought that it would be almost impossible to show that this was abusive.
I went through this just after opening and ended up having to pay an opportunist squatter £500 as that was half what the tribunual would have cost, which was by no means coincidence.
To get the domain reassigned you will have to show that the registration was abusive in some regard. Abuse being defined as carpet bagging (harrods.com case for instance) or deliberately harmful to your business in some way.
As the limited company does not yet exist I would have thought that it would be almost impossible to show that this was abusive.
I went through this just after opening and ended up having to pay an opportunist squatter £500 as that was half what the tribunual would have cost, which was by no means coincidence.
Buster Bakdorzin said:
Can you wrestle a .co.uk domain name away from someone, if you own:
Depends on the timing - given some of what you've said, I would say no, you can't. But Nominet are notoriously fickle.- The .Ltd company
- (The .com domain)
- And the trade mark of the Ltd company
If they owned the domain before you setup your company and registered the .com, you stand little chance. If they bought the domain after you registered your company and you can provide some evidence that they have bought it thanks to seeing your company name, then you might have a chance of getting the domain.
I am sitting on about 30 domain names with tangental links to my own business (words in the business area in which I work). Are you saying that if someone comes along and registers those names as business names and trade marks they could just expect me to hand them over? I don't think so.
For example, since about 2000 I have owned www.polygraph.org.uk,www.stalking.org.uk,www.healthresearch.co.uk,www.teacherdevelopment.co.uk,www.teacherleadership.co.uk, and www.policerecruiting.co.uk all of which are pointed at my web site (or were last time I checked).
Therefore any of the UK polygraph, health research, recruiting, or teacher training companies could insist I had it over if they started to use those business names and registered them as trade marks? IMHO they should have been quicker off the mark or have chosen a business name where they could get the domain name.
It works both ways; There is a .com domain name I would love to have. It is taken, and unused as far as I can see but despite the fact the name is almost identical to my UK trademark and UK business name and better suited to my purpose I didn't choose that name because the domain was gone and I was confident the cost of buying it would be more than the business it would bring , in the UK in particular.
M400 NBL said:
Buster Bakdorzin said:
'they' are effectively a domain squatter, running a business which operates by selling good already-registered domain names at reasonable prices.
Just noticed this part. Why don't you buy it at a reasonable price then?Just pay the guy.
Piglet said:
I can't imagine why you'd want to set out to get involved in litigation or have I read your post wrongly?
You assumed I would if I could and needed to 
I simply wanted to know whether we (or anyone) could wrestle the domain name away from someone...re: your other point, they are not using the domain name at all. The domain simply forwards to a site owned by domain squatters, who register and renew domain names they dont use, with the hopes that one day someone will pay the fees they are asking for the domain names, so they can make a profit.
I dont even know what they wanted for the domain name, didnt ask, although their site stated their charges were perfectly reasonable.
Plotloss said:
If its a .co.uk domain then nominet have a dispute resolution service.
To get the domain reassigned you will have to show that the registration was abusive in some regard. Abuse being defined as carpet bagging (harrods.com case for instance) or deliberately harmful to your business in some way.
As the limited company does not yet exist I would have thought that it would be almost impossible to show that this was abusive.
I went through this just after opening and ended up having to pay an opportunist squatter £500 as that was half what the tribunual would have cost, which was by no means coincidence.
It is a .co.uk domain name, and Ive pointed a number of people towards nominet for resolution over the years, most recently last month.To get the domain reassigned you will have to show that the registration was abusive in some regard. Abuse being defined as carpet bagging (harrods.com case for instance) or deliberately harmful to your business in some way.
As the limited company does not yet exist I would have thought that it would be almost impossible to show that this was abusive.
I went through this just after opening and ended up having to pay an opportunist squatter £500 as that was half what the tribunual would have cost, which was by no means coincidence.
I could have phrased the question "Can domain squatting be overcome with trademark and Ltd company status"
I remember a big businessman type chap at a seminar I went to once, explaining how he was able to advertise a business nationally in the name of another business, simply because he owned the Ltd Company vehicle in their name. I must be forgetting some of the specifics, but the company who tried to sue him for advertising in their name had (somehow) been in business longer, were far bigger, but couldnt prevent him from using their name, as he had acquired the Ltd company.
Ive never read any cases whereby a LTD/TM and .com owning brand went head to head with a .co.uk domain owner, and this scenario is made all the more interesting by the fact that the .co.uk owner is nothing more than a domain squatter.
JamieBeeston said:
M400 NBL said:
Buster Bakdorzin said:
'they' are effectively a domain squatter, running a business which operates by selling good already-registered domain names at reasonable prices.
Just noticed this part. Why don't you buy it at a reasonable price then?Just pay the guy.
If someone owns ideaa.co.uk
then a <$time> later you come along and want to call your thing ideaa you have no rights to it, if you tried to trademark it, hell, they could even come and sue YOU for breaching their brand!
Thats the joy of copyright and trademark, if someone can prove they thought of it before you, its theirs.
then a <$time> later you come along and want to call your thing ideaa you have no rights to it, if you tried to trademark it, hell, they could even come and sue YOU for breaching their brand!
Thats the joy of copyright and trademark, if someone can prove they thought of it before you, its theirs.
You also cant trademark a phrase that is already in use by someone else.
So lets say a business called themselves Widget Ltd and their tagline was 'Statospheric Thingamajig'
If a person came along and created Stratospheric Thingamajig Limited I believe neither company would be able to trademark 'Stratospheric Thingamajig' in any class.
So lets say a business called themselves Widget Ltd and their tagline was 'Statospheric Thingamajig'
If a person came along and created Stratospheric Thingamajig Limited I believe neither company would be able to trademark 'Stratospheric Thingamajig' in any class.
JamieBeeston said:
If someone owns ideaa.co.uk
then a <$time> later you come along and want to call your thing ideaa you have no rights to it, if you tried to trademark it, hell, they could even come and sue YOU for breaching their brand!
Agreed.then a <$time> later you come along and want to call your thing ideaa you have no rights to it, if you tried to trademark it, hell, they could even come and sue YOU for breaching their brand!
Chap is a domain squatter though. ie:
He isnt using the domain.
The domain had no brand
Domain has never been used
Domain doesnt have an associated hosting account either...
...it simply forwards you (along with hundreds of other domains) to a website which offers to sell domains registered by the owner, asking you to quote the domain name when you submit a request for a quote to lease it.
I believe there has to be some intent to piggyback on the strength of the original company if judgement is to be passed in favour of the claimant, so Id guess a trade mark wouldnt let you snatch it back, but if a company wasnt trading/didnt exist and there was no evidence that the .co.uk owner never used the domain (way back machine, etc) id also guestimate that a TM might prevent them from trading.
as an aside, before plans were made to find another domain, the .com domain which corelated to the .co.uk domain I mentioned in my original post, was meant to be a quiet by-the-wayside "company X ltd is parent of the abc group" and was never going to be a trading website anyway. The domains for trading (there are several) have already been chosen and are once again, completely different.
Buster Bakdorzin said:
Agreed.
Chap is a domain squatter though. ie:
He isnt using the domain.
The domain had no brand
Domain has never been used
Domain doesnt have an associated hosting account either...
...it simply forwards you (along with hundreds of other domains) to a website which offers to sell domains registered by the owner, asking you to quote the domain name when you submit a request for a quote to lease it.
Tut tut Chap is a domain squatter though. ie:
He isnt using the domain.
The domain had no brand
Domain has never been used
Domain doesnt have an associated hosting account either...
...it simply forwards you (along with hundreds of other domains) to a website which offers to sell domains registered by the owner, asking you to quote the domain name when you submit a request for a quote to lease it.
I think you need to look at what you really mean as calling a legit businesss squatters is very harsh:
http://en.wikipedia.org/wiki/Cybersquatting
http://en.wikipedia.org/wiki/Domaining
Very different things. What you are implying is you wish to do is reverse hijack ( http://en.wikipedia.org/wiki/Reverse_domain_hijack... ) the domain.
There is nothing wrong with 'warehousing' lots of domains to resell. There is alot wrong if you expect to get a great name for tuppence in 2008 and you ought to shift your expectations accordingly.
Edited by heyuk on Saturday 28th June 12:21
Buster Bakdorzin said:
Agreed.
Chap is a domain squatter though. ie:
He isnt using the domain.
The domain had no brand
Domain has never been used
Domain doesnt have an associated hosting account either...
How do you know it isn't being used for email for thousands of users? Or used inside of a corporate network and you're just seeing the un-used public face of it?Chap is a domain squatter though. ie:
He isnt using the domain.
The domain had no brand
Domain has never been used
Domain doesnt have an associated hosting account either...
JamieBeeston said:
If someone owns ideaa.co.uk
then a <$time> later you come along and want to call your thing ideaa you have no rights to it, if you tried to trademark it, hell, they could even come and sue YOU for breaching their brand!
If recent DRS cases are anything to go buy, you could still well loose the domain, but you'll know that from seeing the cases as well then a <$time> later you come along and want to call your thing ideaa you have no rights to it, if you tried to trademark it, hell, they could even come and sue YOU for breaching their brand!
Nominet have launched their new DRS policy this week oddly enough, which does nail down a few bits and pieces but still is hardly black and white.
DRS is only a complaint / mediation service, there is still the courts that can be used for passing off or the like.
Plus there is the interesting area that domains are seen as property by HMRC , so does a DRS how any weight?!
DRS is only a complaint / mediation service, there is still the courts that can be used for passing off or the like.
Plus there is the interesting area that domains are seen as property by HMRC , so does a DRS how any weight?!
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