|Letters from solicitors demanding my domain names.|
dimaon name bully
Hi, I just found this site when looking for some information on domain bullying. I am an amature web designer, its part-hobby, part-income, I just build sites for friends, family & their friends e.t.c.
This week, 2 of my clients (well, my best friend and my sister) got letters from solicitors demanding transferral of their domain names due to trademark infringement. Both separate letters from separate firms, just co-incidence they happened at the same time I think.
In the case of my sister, it is a domain that we point to her site for a particular product. The domain describes what the product is, but according to this very threatening letter I received from a US lawyer, a rival brand has registered it as a trademark. There is no proof about the trademark and I can't find any info about its existance. Besides, this company is in USA and we are in UK (although we have both .com & .co.uk and it is the .com they are after). My guess is they must have recently registered the trademark in the USA and now realise that I own the domain. Their letter says that they note that the domain is used to display advertising, which clearly shows they haven't even looked at it! Can they just take it from me like that? I'm sure I read somewhere before that there is some legislation to stop these big companies just registering trademarks in order to bully the domain from the other guy?
What really annoys me is this is their first contact with me about it their letter (well, a pdf attached to an email) just demands the transferral of the domain and threatens thousands of dollars in damages e.t.c.
In the case of my friend, he is a local tradesman.
A company registered a UK trademark on his name in Nov 2009. However, he has been trading under this name for 5 years and we registered his domain and built his website back in 2007, so am I right in thinking this is enough to prove he has a legitimate right to use this domain?
We can't offer legal advice here -- For that, you need a solicitor.
However, you should do some research on "prior use" as applied to trademarks in the UK and US.
If you registered the domains before they registered their trademarks, then as long as you make no attempt to portray yourself as representing these other companies and make no attempt to "profit" from their name or from the current situation, you should be OK. (For example, do not offer to sell your domains to them to "cash in" on this situation. If it comes to that, let them propose it.)
"Bullying" is an appropriate term here, and that is their intent. They likely deemed it cheaper to threaten you in the hope that you'd comply than to make you a reasonable offer to transfer these domains to them.
That's all I can offer, since I'm not a lawyer. But take a look at the ICANN "domain dispute resolution" archives, and you will see that "the little guy" can win in these situations. In other words, the man who stuffs and pads furniture down at the corner shop need not worry about his six-year-old domain name "iPad.co.uk" just because a new (trademarked) product has been announced under that name...
Thanks a lot Jim.
I'm pretty sure that in both cases a dispute should find in our favour, I just need to find out how to go about it.
At the moment, I'm just telling them both to get together documents that prove that they registered and used the names in good faith.
For my sister, the domain is a generic term, i.e. red-car.com, which we point to the page on her shop that sells her red cars. Only to have a major car manufacturer register "Red Car TM" and trying to take it from her. It is not a brand name, just a description of a product. The rival brand clearly want the domain for the same purpose, it is not the name of their brand, just the description of a common product.
For my mate's firm, it should be easier. I'm guessing all he needs to do is show when he registered his company and how long he has been trading. I got proof of the domain registration almost 2 years prior to the TM registration.
|Can they just take it from me like that? I'm sure I read somewhere before that there is some legislation to stop these big companies just registering trademarks in order to bully the domain from the other guy? |
As JD said, this ain't the place for legal advice...
However, as you're in the UK, there is something of a precedent... one that splattered egg on the faces of the bullies:
See Otorohanga Harrodsville [google.com] and then, if the bullies persist, see a solicitor
Since they are claiming trademark infringement, you should ask for details of the registration. Keep your reply concise and polite.
Essentially, if you registered the domain name first, in good faith, and you are not using it in a deceptive manner then you should be ok. Don't allow yourself (or your friends and family) to be bullied.
Three pieces of advice:
1) I have a friend who gets a lot of these letters, 90% of the time simply ignoring the letter makes it go away
2)If you decide to reply, make sure it is your solicitor who writes the letter, don't write your own letter.
3) Don't ask them to buy the domain name off you / compensate you. As this could be interpreted legally that you are trying to profit from the URLs at the expense of the company trying to claim them. If they are desperate for the domain they will bring this up first.
You should never ignore a genuine letter from a solicitor if action is being threatened.
Unless you want to throw money away, reply yourself but merely ask for a detailed explanation of their claim. As I said before, be polite and be concise (i.e. no waffle).
Kaled, on one hand your are saying never ignore a letter from a solicitor, on the other you are saying write your own reply, seems a serious contradiction to me.
Surely, if you want to be super careful, engaging your own solicitor to reply makes is the much better course of action, as it would be quiet easy to say something inadvertently that could completely undo any case you might have if it goes to court.
Kaled replied correctly. Your letter might read:
"In receipt of your letter. Will you please explain in detail what it means?"
You give them no information. You make them work. In other words, make them become very clear. Most demand letters attempt to bully first. When put to the test, and you have acknowledged, they have to provide specifics... and from that you can decide if you need a lawyer.
I am fairly experienced with dealing with bullying solicitors. I used to run a websiete in the UK to help people sue their banks for unfair penalty charges.
I don't think these guys should be too much trouble at this stage, like tangor says, all I need to do right now is acknowledge their letter and ask them to substantiate their claim.
I just wasn't sure of where I stood with trademarks & domain names.
Their letter will go quite hard against them in the event of litigation because they have tripped up on 2 counts already.
1) Threatening attitude, given that this is their first communication.
2) Unreasonable timeframe. They gave me 7 days to 'arrange transferral or else..'
I have sent an acknowledgement to both. I will keep you posted. Thanks for the replies, much appreciated. :)