Discussion
Hello
First time starting a topic on Pistonheads, so please be gentle!
I run a small joinery company in the East of England. Over the years i have acquired a number of domains associated with my trade and business, more for fun than anything i guess but point them all to my website.
Back in October 2015 a large well known joinery company went bust and closed. November 2015 i was looking on the 1and1 at what domains were available and this particular company came up with the .co.uk and .uk so i bought them and pointed them at my site. Fast forward to September this year and i get a phone call from another Joinery Company claiming to now own said bust company and wanting there websites back. I took some advice at the time and was informed that i owned the sites fair and square and had no reason to hand them over unless they bought them. I sent a pleasant email to them and informed them that i had no intention to sell however if they wished to make us an offer we would consider it. I also stopped them pointing at my website in case it infringed any copyrights or trademarks.
I have now received an solicitors letter stating they a trade mark for the company filed on the 19th July and then register on the 14th October and that basically i transfer the co.uk site over or face court and damages! Not good!
Now i don't really wish to start running up my solicitor fees to fight something which i am likely to lose. But i do feel that if they really want them they should pay something for them.
Has anyone any experience of this situation? Obviously i appreciate i need to speak to a legal person before reacting but thought it might be worth an ask on here.
Thanks
Matt
First time starting a topic on Pistonheads, so please be gentle!
I run a small joinery company in the East of England. Over the years i have acquired a number of domains associated with my trade and business, more for fun than anything i guess but point them all to my website.
Back in October 2015 a large well known joinery company went bust and closed. November 2015 i was looking on the 1and1 at what domains were available and this particular company came up with the .co.uk and .uk so i bought them and pointed them at my site. Fast forward to September this year and i get a phone call from another Joinery Company claiming to now own said bust company and wanting there websites back. I took some advice at the time and was informed that i owned the sites fair and square and had no reason to hand them over unless they bought them. I sent a pleasant email to them and informed them that i had no intention to sell however if they wished to make us an offer we would consider it. I also stopped them pointing at my website in case it infringed any copyrights or trademarks.
I have now received an solicitors letter stating they a trade mark for the company filed on the 19th July and then register on the 14th October and that basically i transfer the co.uk site over or face court and damages! Not good!
Now i don't really wish to start running up my solicitor fees to fight something which i am likely to lose. But i do feel that if they really want them they should pay something for them.
Has anyone any experience of this situation? Obviously i appreciate i need to speak to a legal person before reacting but thought it might be worth an ask on here.
Thanks
Matt
so you bought the domains to use their traffic to point to your website?
not because you had a valid business reason for owning them?
I suspect that if they go to Nominet, the Nominet process will rule in their favour if they can show ownership of the trademark.
dates and timing may vary the outcome, but while you might be able to show that you bought them when the company had gone under I think it might be hard to demonstrate a valid business reason for having bought them and it will be seen as domain squatting - ruling probably against you...
you do not have to hand over a domain just because someone else owns the trademark - if you have a valid reason for ownership then you can own whatever you like regardless (hence why apple.co.uk was not owned by apple until recently) - however your issue may be in demonstrating that you had valid cause for purchase...
the fact that you offered to sell the domains may well fuel the fire as that is seen as a typical sign of domain squatting - holding them to ransom.
be aware that the Nominet process is relatively simple and cheap for them to go through, and having been through it from the other side a number of times for clients I think that they may well win...
Trademark battles may be more difficult for them but if they do win that then they can potentially pursue you for any profits you have made which may be considered to have come from false use of their trademark...
think it through carefully - I suspect that as your motives were to use someone's business name for your profit, you may lose
not because you had a valid business reason for owning them?
I suspect that if they go to Nominet, the Nominet process will rule in their favour if they can show ownership of the trademark.
dates and timing may vary the outcome, but while you might be able to show that you bought them when the company had gone under I think it might be hard to demonstrate a valid business reason for having bought them and it will be seen as domain squatting - ruling probably against you...
you do not have to hand over a domain just because someone else owns the trademark - if you have a valid reason for ownership then you can own whatever you like regardless (hence why apple.co.uk was not owned by apple until recently) - however your issue may be in demonstrating that you had valid cause for purchase...
the fact that you offered to sell the domains may well fuel the fire as that is seen as a typical sign of domain squatting - holding them to ransom.
be aware that the Nominet process is relatively simple and cheap for them to go through, and having been through it from the other side a number of times for clients I think that they may well win...
Trademark battles may be more difficult for them but if they do win that then they can potentially pursue you for any profits you have made which may be considered to have come from false use of their trademark...
think it through carefully - I suspect that as your motives were to use someone's business name for your profit, you may lose
I hear what you are saying however the company was gone, i wouldn't buy someone else's domain if they still existed, its not ethical. However my business reason was (and still is) we manufacture hardwood high end orangeries and Garden rooms and why should i not be able to bring traffic to my own website in order to help customers unaware the company had gone? In actual fact it had very little to no effect as can be proven by analytics. But if someone is stupid enough to let a website expire then why should someone completely different have any recourse to it. I also didn't offer to sell it to them, i told them it was not for sale however we would consider an offer if they made one.
M3mattw said:
I hear what you are saying however the company was gone, i wouldn't buy someone else's domain if they still existed, its not ethical. However my business reason was (and still is) we manufacture hardwood high end orangeries and Garden rooms and why should i not be able to bring traffic to my own website in order to help customers unaware the company had gone? In actual fact it had very little to no effect as can be proven by analytics. But if someone is stupid enough to let a website expire then why should someone completely different have any recourse to it. I also didn't offer to sell it to them, i told them it was not for sale however we would consider an offer if they made one.
By gone, do you mean the company had been liquidated and closed as in no longer exists?Or, was it simply that it had ceased trading and was then bought by the 'new' company?
Two very different circumstances. If the first I think you are probably OK, if the second then probably not.
M3mattw said:
I hear what you are saying however the company was gone, i wouldn't buy someone else's domain if they still existed, its not ethical. However my business reason was (and still is) we manufacture hardwood high end orangeries and Garden rooms and why should i not be able to bring traffic to my own website in order to help customers unaware the company had gone? In actual fact it had very little to no effect as can be proven by analytics. But if someone is stupid enough to let a website expire then why should someone completely different have any recourse to it. I also didn't offer to sell it to them, i told them it was not for sale however we would consider an offer if they made one.
have fun! If they go to nominet, my experience of going through the nominet process is that you may lose...- Domains purchased to be sat on, no specific website built for the domains
- Someone else's trademark
- Competitor and using trademark to drive traffic to your website
- Offered to sell it (you can argue the semantics, but saying you were open to offers will be seen as making it available for sale)
All signs of domain squatting - I am sure that they hear all sorts of excuses, but they won't care, if the appellant has a tradmark and the domain owners has no demonstrable justification for the name, and they see it being misused, the domains will be removed from you... go onto Nominet's website and read the process
one thing to bear in mind is that once you pointed at your site you were using their name, regardless of whoever owned the company. i.e someone has come along and bought the rights to use that business name from the administrators, as it was a legitimate asset of that business. it just so happened that the domains had lapsed.
you are free to buy the domains, what is a contentious issue is that you pointed them at your website, which can be seen as "passing off".
have a read of this, the nominet dispute resolution service:
http://www.nominet.uk/domains/resolving-uk-domain-...
That said, last time I checked, it cost the other party £1,000 to start this service.
It might be worth responding to the other side along the lines of (without prejudice) that you disagree with their right to own their domain, however you are happy for them to challenge via the Nominet service, but you wont pay their fee of £1,000. alternatively you are happy to sell them for £500
I would immediately repoint the domains elsewhere (possible an online article about their bankruptcy)
you are free to buy the domains, what is a contentious issue is that you pointed them at your website, which can be seen as "passing off".
have a read of this, the nominet dispute resolution service:
http://www.nominet.uk/domains/resolving-uk-domain-...
That said, last time I checked, it cost the other party £1,000 to start this service.
It might be worth responding to the other side along the lines of (without prejudice) that you disagree with their right to own their domain, however you are happy for them to challenge via the Nominet service, but you wont pay their fee of £1,000. alternatively you are happy to sell them for £500
I would immediately repoint the domains elsewhere (possible an online article about their bankruptcy)
Hi Guys
I disabled the redirect as soon as i got wind that the company was being resurrected. This was before the trademark so having sort legal advice i have been informed there is no merit in there threat of legal action regarding infringement.
Obviously i have no use for the domains anymore given the circumstances so have bypassed (at my solicitors recommendation) there solicitor and emailed my contact at the company and informed them that they can have the websites if they just compensate me for the cost and time involved so at least i get something out of it! Certainly not thousands.
The trademark gives them no right to the web domains in law, it is also dubious if nominet would rule in there favor due to the fact i haven't actually done anything malicious or made and silly demands. I have never held them to ransom but i am a business person who owns a commercial asset which has a financial value.
I have asked them just to call me so we can sort it out on the phone. Saves them money at the end of the day and good luck to them if they feel bringing the business back to life is worth it.
Life is too short and i am far too busy to argue about a domain!
I disabled the redirect as soon as i got wind that the company was being resurrected. This was before the trademark so having sort legal advice i have been informed there is no merit in there threat of legal action regarding infringement.
Obviously i have no use for the domains anymore given the circumstances so have bypassed (at my solicitors recommendation) there solicitor and emailed my contact at the company and informed them that they can have the websites if they just compensate me for the cost and time involved so at least i get something out of it! Certainly not thousands.
The trademark gives them no right to the web domains in law, it is also dubious if nominet would rule in there favor due to the fact i haven't actually done anything malicious or made and silly demands. I have never held them to ransom but i am a business person who owns a commercial asset which has a financial value.
I have asked them just to call me so we can sort it out on the phone. Saves them money at the end of the day and good luck to them if they feel bringing the business back to life is worth it.
Life is too short and i am far too busy to argue about a domain!
You need to be a little more specific in your details to be able to advise properly. If what you are saying is:
Said joinery company went into insolvency.
Their domains were not renewed and dropped.
You registered the domains.
Another company bought the assets of the company.
Other company applied for trademarks in the name.
Other company sends you crappy letter stating they own the domains.
Then they haven't got a leg to stand on. The trademark means nothing in itself, it was applied for after you registered the domain, and will be only for certain classes. They are either miss-informed or just trying it on, having a trademark alone is not enough for a Nominet DRS to remove the domains from you, they must also show an attempt at passing off, which you have not done.
The fact that you offered to sell them the domain is also not relevant, if they approached you first.
If the domains are not being used, you do not require a valid business reason to own them.
For us to be specific however, you would need to give us a timeline, including the dates you removed the redirect, exactly what happened to the old company, and is the same company resurrected, or did the current company buy the assets of the old? PM details if you like.
Said joinery company went into insolvency.
Their domains were not renewed and dropped.
You registered the domains.
Another company bought the assets of the company.
Other company applied for trademarks in the name.
Other company sends you crappy letter stating they own the domains.
Then they haven't got a leg to stand on. The trademark means nothing in itself, it was applied for after you registered the domain, and will be only for certain classes. They are either miss-informed or just trying it on, having a trademark alone is not enough for a Nominet DRS to remove the domains from you, they must also show an attempt at passing off, which you have not done.
The fact that you offered to sell them the domain is also not relevant, if they approached you first.
If the domains are not being used, you do not require a valid business reason to own them.
For us to be specific however, you would need to give us a timeline, including the dates you removed the redirect, exactly what happened to the old company, and is the same company resurrected, or did the current company buy the assets of the old? PM details if you like.
As other have said, trademark doesn't matter so much (Nissan do not own Nissan.com despite their best efforts at suing the owner). Its the fact that you haven't used it for any justifiable purpose.
As Insurance_Jon said, sell it off at a small price to them. Considering their lawyers fees it will be sound business sense for them to agree.
As Insurance_Jon said, sell it off at a small price to them. Considering their lawyers fees it will be sound business sense for them to agree.
RM said:
You need to be a little more specific in your details to be able to advise properly. If what you are saying is:
Said joinery company went into insolvency.
Their domains were not renewed and dropped.
You registered the domains.
Another company bought the assets of the company.
Other company applied for trademarks in the name.
Other company sends you crappy letter stating they own the domains.
Then they haven't got a leg to stand on. The trademark means nothing in itself, it was applied for after you registered the domain, and will be only for certain classes. They are either miss-informed or just trying it on, having a trademark alone is not enough for a Nominet DRS to remove the domains from you, they must also show an attempt at passing off, which you have not done.
The fact that you offered to sell them the domain is also not relevant, if they approached you first.
If the domains are not being used, you do not require a valid business reason to own them.
For us to be specific however, you would need to give us a timeline, including the dates you removed the redirect, exactly what happened to the old company, and is the same company resurrected, or did the current company buy the assets of the old? PM details if you like.
There are inaccuracies in here...Said joinery company went into insolvency.
Their domains were not renewed and dropped.
You registered the domains.
Another company bought the assets of the company.
Other company applied for trademarks in the name.
Other company sends you crappy letter stating they own the domains.
Then they haven't got a leg to stand on. The trademark means nothing in itself, it was applied for after you registered the domain, and will be only for certain classes. They are either miss-informed or just trying it on, having a trademark alone is not enough for a Nominet DRS to remove the domains from you, they must also show an attempt at passing off, which you have not done.
The fact that you offered to sell them the domain is also not relevant, if they approached you first.
If the domains are not being used, you do not require a valid business reason to own them.
For us to be specific however, you would need to give us a timeline, including the dates you removed the redirect, exactly what happened to the old company, and is the same company resurrected, or did the current company buy the assets of the old? PM details if you like.
- a trademark is simply that - a mark of trade, their registering it moves it to being a registered trademark, but it can still be a trademark prior to registration.
- you may require a valid reason to own domains - under the Nominet or equivalent rules which a) are up to them to set and b) can mean that they will move domains from you regardless
- owning a domain and not using it can still be seen by Nominet as domain squatting if you can't show a logical reason for purchase other than taking advantage of someone else's brand - and in this scenario, they are very likely to think that - equivalent business / competitors / initially pointed domains at own website (subsequent move of domains won't matter) / etc.
and the OP has admitted to passing off above by using the domains to point someone else's trademark at his business...
pretty clear cut and we have successfully had Nominet remove domain names from others on these grounds...
The fact that the OP said that the company could make an offer for them is fuel to the fire - as that is seen as domain squatting / holding the domains for ransom...
pretending that it wasn't selling them / that there wasn't a trademark / that there was no attempt or desire to profit from them is all a fudge - the only reason the OP had for securing the domains and pointing them at his business was that those who might have gone directly to the old company / searched for Joinery and found the previous company would now find his company - and that has to be for profit...
Other examples such as nissan.com are a total red-herring - the owner of that has used his own name for his own business for decades, and pre-dating datsun's change to nissan - there is no comparison, his ownership of nissan.com is totally legal and he has his own trademarks on that word, so the car company suing him is simply bullying tactics... that is completely different to the OP who from what we understand has no trademark matching the domains he bought and so it will be seen as domain squatting
Ok, well i have had many differing opinions on this and have taken the course of action needed. I didn't buy them to make profit, the business was gone and it was very much thought industry wide that it was not coming back. Obviously there was no guarantee of that. The company did not exist in any entity in the period i purchased the domains and that seems to be the strength of my case. But as i have said i really am not interested in fighting this but don't see why i should just hand over something i own for nothing. I just want a fair outcome.
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