Domain Name "Theft"
Discussion
Mods: If this is in the wrong place - SORRY!!!
A good client of mine was with a business partner and they had a big row and split.
My client then registered her own LTD company. Not being completly computer savvy, she didn't register the domain name straight away.
When she came to register "her domain" it was taken and upon further investigation by her ex business partner.
Lets say her company name is: Joan Smith Sofas Ltd
The domains are: joansmithsofas.com and .co.uk
She incorporated on: 16/07/2008 and then tried to register the domain name in October.
The domains were registered on 29/07/2008. It isn't hard to see what has happened here!!
Questions for the PH massive:
a) Do we have a case?
b) How do we go about getting it back?
I have heard of this sort of thing being recovered in the past, but have no idea of the process and the time scales involved?
Cheers
The Moose
A good client of mine was with a business partner and they had a big row and split.
My client then registered her own LTD company. Not being completly computer savvy, she didn't register the domain name straight away.
When she came to register "her domain" it was taken and upon further investigation by her ex business partner.
Lets say her company name is: Joan Smith Sofas Ltd
The domains are: joansmithsofas.com and .co.uk
She incorporated on: 16/07/2008 and then tried to register the domain name in October.
The domains were registered on 29/07/2008. It isn't hard to see what has happened here!!
Questions for the PH massive:
a) Do we have a case?
b) How do we go about getting it back?
I have heard of this sort of thing being recovered in the past, but have no idea of the process and the time scales involved?
Cheers
The Moose
Use the power of Google for whoever oversees the .com, I used to know but now can't remember.
From what you've posted you haven't actually shown abusive registration. Registering something you don't own isn't necessarily abusive. The fact that your friend trades under that name doesn't make it "her" domain.
You may find Nominet will find in your friends favour but someone I know went through the process a few years ago and got screwed over big time and they were (in my view) the innocent party.
This is a difficult area that is changing all of the time, your friend really needs to try to resolve this personally rather than spending a fortune on having someone else resolve it.
From what you've posted you haven't actually shown abusive registration. Registering something you don't own isn't necessarily abusive. The fact that your friend trades under that name doesn't make it "her" domain.
You may find Nominet will find in your friends favour but someone I know went through the process a few years ago and got screwed over big time and they were (in my view) the innocent party.
This is a difficult area that is changing all of the time, your friend really needs to try to resolve this personally rather than spending a fortune on having someone else resolve it.
As Piglet as said, just because you register a company, this does not give you ownership or rights in any way to domains or trademarks.
These are separate issues.
The problem is that the onus will be on your client to prove the abusive registration. That is not as easy as it sounds, and can be long and costly. The other difficulty is the fact that your client and the domain buyer were previously partners. Who is to say that the ideas were discussed, and your client registered her company name and the other partner registered the domains independently?
I am being the devil's advocate, but I am asking the same questions that will no doubt be asked later. TO prove the registration is abusive, it has to be proved that the prior registrant has no intention to ever 'use' the name.
The case law around this shows a few cases that rumbled on into months and years. One I can think of is a pretty obvious situation in 'common sense' but could not be proved abusive due to the fact that he did intend use. The only reason why this case was overturned - at the second appeal I believe was the fact that the 'hijacker' offered the domains in a letter for sale at an amount in four or five figures, at which point gave the plaintiff enough evidence to prove their real intentions.
It would be easier to make an offer for the domains rather than argue - as nasty as it sounds. If it has been done maliciously then she may be held to ransom though, and this might be a vehicle to get a silly offer for sale in writing which could be used later.
That said, thinking out of the box, if you add up the cost of chasing this, as the money lost with regard to time wasted and the time spent without a website, I believe a better course of action would be to spend that time thinking up a new company name and logo, registering the trademark, name at companies house, and the domain names and start from scratch on the right foot.
These are separate issues.
The problem is that the onus will be on your client to prove the abusive registration. That is not as easy as it sounds, and can be long and costly. The other difficulty is the fact that your client and the domain buyer were previously partners. Who is to say that the ideas were discussed, and your client registered her company name and the other partner registered the domains independently?
I am being the devil's advocate, but I am asking the same questions that will no doubt be asked later. TO prove the registration is abusive, it has to be proved that the prior registrant has no intention to ever 'use' the name.
The case law around this shows a few cases that rumbled on into months and years. One I can think of is a pretty obvious situation in 'common sense' but could not be proved abusive due to the fact that he did intend use. The only reason why this case was overturned - at the second appeal I believe was the fact that the 'hijacker' offered the domains in a letter for sale at an amount in four or five figures, at which point gave the plaintiff enough evidence to prove their real intentions.
It would be easier to make an offer for the domains rather than argue - as nasty as it sounds. If it has been done maliciously then she may be held to ransom though, and this might be a vehicle to get a silly offer for sale in writing which could be used later.
That said, thinking out of the box, if you add up the cost of chasing this, as the money lost with regard to time wasted and the time spent without a website, I believe a better course of action would be to spend that time thinking up a new company name and logo, registering the trademark, name at companies house, and the domain names and start from scratch on the right foot.
Piglet said:
Plotloss said:
DRS is a free service before it gets to the adjudicator.
Presumably though someone who wasn't internet savvy enough to register "their" domain name will require assistance to put together a case? Is it a straightforward system? JustinP1 said:
As Piglet as said, just because you register a company, this does not give you ownership or rights in any way to domains or trademarks.
These are separate issues.
The problem is that the onus will be on your client to prove the abusive registration. That is not as easy as it sounds, and can be long and costly. The other difficulty is the fact that your client and the domain buyer were previously partners. Who is to say that the ideas were discussed, and your client registered her company name and the other partner registered the domains independently?
I am being the devil's advocate, but I am asking the same questions that will no doubt be asked later. TO prove the registration is abusive, it has to be proved that the prior registrant has no intention to ever 'use' the name.
The case law around this shows a few cases that rumbled on into months and years. One I can think of is a pretty obvious situation in 'common sense' but could not be proved abusive due to the fact that he did intend use. The only reason why this case was overturned - at the second appeal I believe was the fact that the 'hijacker' offered the domains in a letter for sale at an amount in four or five figures, at which point gave the plaintiff enough evidence to prove their real intentions.
It would be easier to make an offer for the domains rather than argue - as nasty as it sounds. If it has been done maliciously then she may be held to ransom though, and this might be a vehicle to get a silly offer for sale in writing which could be used later.
That said, thinking out of the box, if you add up the cost of chasing this, as the money lost with regard to time wasted and the time spent without a website, I believe a better course of action would be to spend that time thinking up a new company name and logo, registering the trademark, name at companies house, and the domain names and start from scratch on the right foot.
I agree with you but it has my clients name as part of the domain name and company name. They were in a similar line of business before, and the sofas part was the same, but she has now taken my clients domain...???These are separate issues.
The problem is that the onus will be on your client to prove the abusive registration. That is not as easy as it sounds, and can be long and costly. The other difficulty is the fact that your client and the domain buyer were previously partners. Who is to say that the ideas were discussed, and your client registered her company name and the other partner registered the domains independently?
I am being the devil's advocate, but I am asking the same questions that will no doubt be asked later. TO prove the registration is abusive, it has to be proved that the prior registrant has no intention to ever 'use' the name.
The case law around this shows a few cases that rumbled on into months and years. One I can think of is a pretty obvious situation in 'common sense' but could not be proved abusive due to the fact that he did intend use. The only reason why this case was overturned - at the second appeal I believe was the fact that the 'hijacker' offered the domains in a letter for sale at an amount in four or five figures, at which point gave the plaintiff enough evidence to prove their real intentions.
It would be easier to make an offer for the domains rather than argue - as nasty as it sounds. If it has been done maliciously then she may be held to ransom though, and this might be a vehicle to get a silly offer for sale in writing which could be used later.
That said, thinking out of the box, if you add up the cost of chasing this, as the money lost with regard to time wasted and the time spent without a website, I believe a better course of action would be to spend that time thinking up a new company name and logo, registering the trademark, name at companies house, and the domain names and start from scratch on the right foot.
Will look at DRS
Cheers
The Moose
The Moose said:
JustinP1 said:
As Piglet as said, just because you register a company, this does not give you ownership or rights in any way to domains or trademarks.
These are separate issues.
The problem is that the onus will be on your client to prove the abusive registration. That is not as easy as it sounds, and can be long and costly. The other difficulty is the fact that your client and the domain buyer were previously partners. Who is to say that the ideas were discussed, and your client registered her company name and the other partner registered the domains independently?
I am being the devil's advocate, but I am asking the same questions that will no doubt be asked later. TO prove the registration is abusive, it has to be proved that the prior registrant has no intention to ever 'use' the name.
The case law around this shows a few cases that rumbled on into months and years. One I can think of is a pretty obvious situation in 'common sense' but could not be proved abusive due to the fact that he did intend use. The only reason why this case was overturned - at the second appeal I believe was the fact that the 'hijacker' offered the domains in a letter for sale at an amount in four or five figures, at which point gave the plaintiff enough evidence to prove their real intentions.
It would be easier to make an offer for the domains rather than argue - as nasty as it sounds. If it has been done maliciously then she may be held to ransom though, and this might be a vehicle to get a silly offer for sale in writing which could be used later.
That said, thinking out of the box, if you add up the cost of chasing this, as the money lost with regard to time wasted and the time spent without a website, I believe a better course of action would be to spend that time thinking up a new company name and logo, registering the trademark, name at companies house, and the domain names and start from scratch on the right foot.
I agree with you but it has my clients name as part of the domain name and company name. They were in a similar line of business before, and the sofas part was the same, but she has now taken my clients domain...???These are separate issues.
The problem is that the onus will be on your client to prove the abusive registration. That is not as easy as it sounds, and can be long and costly. The other difficulty is the fact that your client and the domain buyer were previously partners. Who is to say that the ideas were discussed, and your client registered her company name and the other partner registered the domains independently?
I am being the devil's advocate, but I am asking the same questions that will no doubt be asked later. TO prove the registration is abusive, it has to be proved that the prior registrant has no intention to ever 'use' the name.
The case law around this shows a few cases that rumbled on into months and years. One I can think of is a pretty obvious situation in 'common sense' but could not be proved abusive due to the fact that he did intend use. The only reason why this case was overturned - at the second appeal I believe was the fact that the 'hijacker' offered the domains in a letter for sale at an amount in four or five figures, at which point gave the plaintiff enough evidence to prove their real intentions.
It would be easier to make an offer for the domains rather than argue - as nasty as it sounds. If it has been done maliciously then she may be held to ransom though, and this might be a vehicle to get a silly offer for sale in writing which could be used later.
That said, thinking out of the box, if you add up the cost of chasing this, as the money lost with regard to time wasted and the time spent without a website, I believe a better course of action would be to spend that time thinking up a new company name and logo, registering the trademark, name at companies house, and the domain names and start from scratch on the right foot.
Will look at DRS
Cheers
The Moose
Your client has to prove that that registration was abusive under very specific criteria. She would have to do this for both the .co.uk suffix and the .com suffix to two separate organisations and win.
To give you an idea how difficult this is - I have a UK Ltd Co just like your client. Further to that I also own the Uk Registered trademark for the company name.
However, someone else owns the .co.uk address which is the same as my company name.
Believe me, I have tried to complain and appeal against this, but it has been fruitless.
She is fighting a losing battle unless she has specific grounds. I would suggest employing an solicitor who will write to her ex-partner and threaten them. With a bit of luck he will fold. Failing that, if he digs his heels in until the end, she will wish she never started the action in the first place and moved on now.
Edited by JustinP1 on Friday 9th January 16:19
Ok
update (for those who are interested!!)
Firstly I realise it is not "her domain" as she never had ownership of it etc etc.
I have spoken to the DRS about the .co.uk for some info and you have to prove 2 things
1. my client has the right to the domain
2. the registration was abusive.
Apparently 1. is a non-argument situation and I was e-mailed a list of criteria for 2. We seem to fit the bill for 2. in a number of areas so will be putting a case together for this. This is a no-cost option to start with so will see where that goes.
It's worth a punt!!
Cheers for the advice
The Moose
update (for those who are interested!!)
Firstly I realise it is not "her domain" as she never had ownership of it etc etc.
I have spoken to the DRS about the .co.uk for some info and you have to prove 2 things
1. my client has the right to the domain
2. the registration was abusive.
Apparently 1. is a non-argument situation and I was e-mailed a list of criteria for 2. We seem to fit the bill for 2. in a number of areas so will be putting a case together for this. This is a no-cost option to start with so will see where that goes.
It's worth a punt!!
Cheers for the advice
The Moose
if the former business partner is using "joansmith" in the name and that is not her name, then given that the limited co was set up first, then that would help a passing off claim.
a lot depends on what was or wasn't agreed when the split happened, and the actual facts - very difficult to give generic advice, but justinp1 has pretty much summed it up. nominet and drs may be of help, but no guarantee.
initial questions would include:
is joan smith sofas limited trading yet? and if so when did it start trading?
is there anything on the joansmithsofas.com site, or is it just a holding page?
is the other party setting up a competing sofa business or just trying to be awkward.
what were the details of the split- was anything agreed as to how they would continue/who owned the IP rights etc.
my initial thoughts would be to send a strongly worded solicitors' letter as a starting point, but be prepared to settle by buying the name (probably cheaper than arguing over it)
a lot depends on what was or wasn't agreed when the split happened, and the actual facts - very difficult to give generic advice, but justinp1 has pretty much summed it up. nominet and drs may be of help, but no guarantee.
initial questions would include:
is joan smith sofas limited trading yet? and if so when did it start trading?
is there anything on the joansmithsofas.com site, or is it just a holding page?
is the other party setting up a competing sofa business or just trying to be awkward.
what were the details of the split- was anything agreed as to how they would continue/who owned the IP rights etc.
my initial thoughts would be to send a strongly worded solicitors' letter as a starting point, but be prepared to settle by buying the name (probably cheaper than arguing over it)
therealpigdog said:
initial questions would include:
is joan smith sofas limited trading yet? and if so when did it start trading?
is there anything on the joansmithsofas.com site, or is it just a holding page?
is the other party setting up a competing sofa business or just trying to be awkward.
what were the details of the split- was anything agreed as to how they would continue/who owned the IP rights etc.
yes - started trading in july last year (once registered)is joan smith sofas limited trading yet? and if so when did it start trading?
is there anything on the joansmithsofas.com site, or is it just a holding page?
is the other party setting up a competing sofa business or just trying to be awkward.
what were the details of the split- was anything agreed as to how they would continue/who owned the IP rights etc.
just a holding page
she runs a competing business in same market area (and is trying to be awkward!!)
I don't know the details of the split. I will be requesting more details from my client
Cheers
The Moose
P.S. They were trading under a completely different name and brand before
Moose, don't want to be rude but what business are you in if she is your client? Are you formally advising her?
The person I know got really badly hit (although on reflection that was on a .com) with costs and wished he'd never got involved (as many litigants feel) although he was effectively the victim.
I think many of us who have dealt with litigation will tell you that there is a point where one can deal with something without involving lawyers and once that point is passed, all parties incurr costs and it then becomes almost impossible to settle without costs being paid and without someone feeling that they have been "done".
From what you've told us I don't think you have a claim for abusive registration. I'm also not convinced that you have proved the right to use it exclusively.
Does the domain name contain your client's name?
The person I know got really badly hit (although on reflection that was on a .com) with costs and wished he'd never got involved (as many litigants feel) although he was effectively the victim.
I think many of us who have dealt with litigation will tell you that there is a point where one can deal with something without involving lawyers and once that point is passed, all parties incurr costs and it then becomes almost impossible to settle without costs being paid and without someone feeling that they have been "done".
From what you've told us I don't think you have a claim for abusive registration. I'm also not convinced that you have proved the right to use it exclusively.
Does the domain name contain your client's name?
Edited by Piglet on Friday 9th January 16:57
It is her EXACT name in the domain name.
She is a friend of mine, I am doing some other work for her and am advising her on this matter as a friend. That is all.
Speaking to the Nominet people, you can go up until a certain point without any costs involved and you can withdraw at any time (i.e. when they need money - this depends on what happens in the case). I asked this question specifically and the lady I spoke to say this was not a problem withdrawing if it costs to proceed.
Cheers
The Moose
P.S. I don't take what you are saying to be rude at all - just the opposite infact :-)
She is a friend of mine, I am doing some other work for her and am advising her on this matter as a friend. That is all.
Speaking to the Nominet people, you can go up until a certain point without any costs involved and you can withdraw at any time (i.e. when they need money - this depends on what happens in the case). I asked this question specifically and the lady I spoke to say this was not a problem withdrawing if it costs to proceed.
Cheers
The Moose
P.S. I don't take what you are saying to be rude at all - just the opposite infact :-)
Piglet said:
Moose, don't want to be rude but what business are you in if she is your client? Are you formally advising her?
The person I know got really badly hit (although on reflection that was on a .com) with costs and wished he'd never got involved (as many litigants feel) although he was effectively the victim.
I think many of us who have dealt with litigation will tell you that there is a point where one can deal with something without involving lawyers and once that point is passed, all parties incurr costs and it then becomes almost impossible to settle without costs being paid and without someone feeling that they have been "done".
From what you've told us I don't think you have a claim for abusive registration. I'm also not convinced that you have proved the right to use it exclusively.
Does the domain name contain your client's name?
I agree with Piglet.The person I know got really badly hit (although on reflection that was on a .com) with costs and wished he'd never got involved (as many litigants feel) although he was effectively the victim.
I think many of us who have dealt with litigation will tell you that there is a point where one can deal with something without involving lawyers and once that point is passed, all parties incurr costs and it then becomes almost impossible to settle without costs being paid and without someone feeling that they have been "done".
From what you've told us I don't think you have a claim for abusive registration. I'm also not convinced that you have proved the right to use it exclusively.
Does the domain name contain your client's name?
Edited by Piglet on Friday 9th January 16:57
Unless you have a strategy where you have a good chance of getting to a beneficial end there is no point in starting.
What I mean by that is, to end the DRM process does cost money. Even if you win, you are months on and still don't have the .com address. Therefore you are in just as bad a situation, except you are financially worse off and you have a website where potential customers are waylayed and visit the unrelated .com site, which even worse could be damaging.
As Piglet has said, litigation is expensive. However when you start, the costs snowball with either side unwilling to back down otherwise they lose the money already 'invested'.
If the ex-partner is really being an arse about it for the sake of it, I would suggest a strongly worded letter from a specialist solicitor will make them jump for the cost of a few hundred quid, and the problem will be solved for both the .co.uk and .com site. If they are doing it just to be vindictive it might have seemed like a good idea for the £2.99 to register the name, and they may even be willing to waste a few months of your client's time whilst they can go through a free resolution service.
However, when they discover that your client has professional advice and specialist representation they will discover that their game is just not worth the risk of thousands of pounds.
That would be my way forward, but best of luck either way.
It is extremely difficult to get a domain name off someone in these circumstances.
One of our clients is a certain London law firm. A disgruntled client of theirs registered a few domain names containing the company name (e.g. joansmithsolicitors.com) and used the domain in a defamatory way against them, which they then optimised for Google. So if you type in for example "Joan Smith Solicitors", the spoof site is top. As the spoof site is an "opinion" of the firm, there is no libel case, so there is nothing they can do about it.
I wish you luck, but I would recommend considering a rebrand.
One of our clients is a certain London law firm. A disgruntled client of theirs registered a few domain names containing the company name (e.g. joansmithsolicitors.com) and used the domain in a defamatory way against them, which they then optimised for Google. So if you type in for example "Joan Smith Solicitors", the spoof site is top. As the spoof site is an "opinion" of the firm, there is no libel case, so there is nothing they can do about it.
I wish you luck, but I would recommend considering a rebrand.
jacobyte said:
It is extremely difficult to get a domain name off someone in these circumstances.
One of our clients is a certain London law firm. A disgruntled client of theirs registered a few domain names containing the company name (e.g. joansmithsolicitors.com) and used the domain in a defamatory way against them, which they then optimised for Google. So if you type in for example "Joan Smith Solicitors", the spoof site is top. As the spoof site is an "opinion" of the firm, there is no libel case, so there is nothing they can do about it.
I wish you luck, but I would recommend considering a rebrand.
Agreed... BUT was the business partner involved in the business at the time of the registration? If so, there might be an argument to be made that the registrant was, or should have been, acting under a duty of care towards the business. If they were, they would have to make a pretty good case for why they were not acting contrary to the duty of care.One of our clients is a certain London law firm. A disgruntled client of theirs registered a few domain names containing the company name (e.g. joansmithsolicitors.com) and used the domain in a defamatory way against them, which they then optimised for Google. So if you type in for example "Joan Smith Solicitors", the spoof site is top. As the spoof site is an "opinion" of the firm, there is no libel case, so there is nothing they can do about it.
I wish you luck, but I would recommend considering a rebrand.
Depending upon the circumstances, this is NOT the same type of position as the law firm example given above. It is about the relationship between the two parties, as opposed to any rights and wrongs in other parts of the law (or in the eyes of Nominet).
So, tell us, what exactly was the business relationship between the two parties, when did it start, and when did it stop (and how did it stop)?
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