Did you register a trademark of "W0idgets Shop Ltd" before your competitor took over the domain?
I don't know which post at WebmasterWorld I was reading that day, but somebody said that if you trademark a name before the domain of it is registered (by somebody else), you are able to get the domain back.
We are not registerd as a TM, so i can see there may be some problems.
Different legal theories - besides trademark - might apply. Check with counsel. If you were in the States I'd consider "tortious interference", "conversion" and a variety of other legal and equitable theories. Basically, another business is trading on your company's good name and good will. Give a judge a set of facts that smacks of unfair dealing and a legal theory of relief that fits the facts and any judge worth his day's pay will fashion an equitable remedy.
Don't limit your thinking to "the problem is the domain name". It's "how" the domain name is being used that's the problem. This is rough feel legal analysis but, given the manner in which the competitor has chosen to employ the domain, the law may provide multiple remedies including an injuction (stop doing that), an order to turnover, compensatory and punitive damages.
Think about it. Doesn't it jump out at you? It's as if they were running an advertisement in the local papers, trading on your good name, that sent people to "their business address" to buy XYZ. Would your customers think you had moved? Would customers who heard of you by word-of-mouth, but never visited you, travel to the "new store" by mistake? Would that be stealing or otherwise deceiving your customers?
Broaden your thinking.
|Check with counsel. If you were in the States I'd consider "tortious interference", "conversion" and a variety of other legal and equitable theories. Basically, another business is trading on your company's good name and good will. Give a judge a set of facts that smacks of unfair dealing and a legal theory of relief that fits the facts and any judge worth his day's pay will fashion an equitable remedy. |
In the UK this is known as "passing off".
Thanks for the info guys, you have been very helpful.
Just a quick one though. Would you recommend sending them a nice polite email or getting the lawers involved? Oh yeah my domain name is in my profile if anyone wants to take a look.
Ive been on the other side
Just today received an email from a company whos email I have.
Are you planning to buy the domain name from the competitor for a premium or just make sure that they are not redirecting the traffic so as to "pass off"?
In an ideal world i would buy the domain from them for a reasonable sum but would refuse to pay over the top for it. At the very least i would like them to stop using it in the way which they are.
I would offer to purchase it at a cost that you know is less than your legal fees.
Also, don't get an attorney involved in the beginning. Many companies and small businesses will competeley shut you out as soon as you mention that you are going to sue them. They will require that all your communications go through their attorney - which will cost you more time and money.
Although you haven't given us the exact name, it appears that your domain name (and company name) is a descriptive phrase ("golfball shop") rather than something trademarkable (and defendable) like "ebay".
Should the owner of golfballshop.co.uk be allowed to take the domain golfballshop.com because he's a competitor in the golfball retail sector?
I DON'T THINK SO!
The domain clearly has GENERIC value. If you want it, pay him what it's worth. Don't try and steal it via TM law - you have no case.
INAL, YMMV etc.
you sure you are not the owner of the domain?
Even if the name is discriptive, it can still be trademarked, but the TM wouldn't be that strong. Still, if you can show that someone used your TM in bad faith, even with a weak TM you could take action (I remember reading that somewhere on a link regarding a similar issue--the thread about "lawyers at the door," I believe).
|it appears that your domain name is a descriptive phrase rather than something trademarkable |