|Original owner wants expired domain I registered|
Hi, I registered an expired co.uk domain (am also based in the UK) which is currently used as a placeholder to redirect the traffic it gets to one of my other sites.
Now the original owner wants it transferred to him and says he owns the copyright. As far as I am aware you can only trademark names, and he doesn't have it trademarked in the UK. He also says it's his business - though it looked like a personal site to me - does this have any implications?
Does he have any right to the domain name and what action could he take to get it back? He's threatened action if I don't comply but hasn't said what he'll do.
I'm not really using the name so will probably transfer it to him anyway, though is it ok for me to charge a price above the cost of the transfer for this?
Sorry Tom but offering legal guidance to individuals with specific present or anticipated legal issues is against the policy of this forum and WebmasterWorld in general. As to your specific situation all we can advise is that you need to run your issue past a solicitor schooled in domain issues.
In order to prepared to meet with a legal advisor you might get some insight into how these issues are addressed by reading some WIPO decisions. However, keep in mind that each case stands on it's own facts and particular body of relevant law - which is why it's not a good idea that you seek counsel from webmasters.
Copyright and trademark law vary from country to country, so what's "the law" in the U.S. may not be at all helpful for understanding like matters in the U.K.
To my fellow WebmasterWorlders: If you wish to point this person in the direction of some helpful general resources - for his/her general edification - please feel free to do so. However, please don't offer up "the answer" or solutions to the specific issue at hand.
Here's the official UK site for copyright and trademark, there's a difference
>>He's threatened action if I don't comply but hasn't said what he'll do.
If he doesn't know the difference between copyright and trademark he may not even know what to do himself (except to engage a solicitor), but regardless of the right or wrong of the thing, it sounds like he could have been nicer in his initial approach. Some people don't much care for having fists waved in their face, it's not the smartest approach.
Hmm...I guess I need to be vague, then. OK, here goes:
Generally speaking one of the most crucial factors determining the legal strength of a trademark has to do with whether the name is merely generic or descriptive (eg: WholesaleWidgets, BestWidgets, WidgetsForLess) versus fanciful and unique (eg: Kodak, Exxon, Polaroid, Google, eBay).
Also, trademark rights can be afforded the user of a mark even if he hasn't registered it officially yet. Much of trademark law disputes involve proving who first used a mark in commerce. Prior use is a powerful determinant of rights.
One possible clue (just a theory, mind you, and nothing else) if your guy is referring to copyright rather than trademark, he might be ignorant and trying to bluff you. Odds are good that if someone has actually registered a trademark, he'd refer to his trademark registration, and not spout generalities about copyright. In a friendly and cooperative tone, you might wish to ask him for some documentary evidence of his claim, so you you can run it past your attorneys. No harm in that.
Again, generally speaking, if someone lets a generic domain expire, so it's once again up for grabs in the public pool, he probably wouldn't have much claim on it if someone else re-registered it. If, however, it's a fanciful or unique name which had been used extensively/continuously in commerce, it could be another story.
...and here I guess I need to parrot the party line and suggest you speak to an attorney for more specifics.
(hey marcia, you beat me to it! You must've posted milliseconds before I did)
Thanks everyone - I was just looking for general advice really on whether he might have a case.
The domain name is an adjective followed by a noun so pretty generic.
|The domain name is an adjective followed by a noun so pretty generic. |
Not necessarily, it depends if that adjective+noun combo is regularly in "normal use". For example, "red widget" might be a fairly defensible company name (just look at how many companies are "colour + something") especially if the widget in question isn't normally known to be that colour, but "electric widget" would probably be considered generic/descriptive if the widget in question is regularly sold in an electric variant.
Wish I could word the above less widget-ly, but that would risk denting the forum TOS...
|It has been held that a party is entitled to conduct a business of capturing generic domain names which become available in the marketplace, often through failure to renew registration. |
National Arbitration Forum Decision [arbforum.com] Disclaimer: I am not a lawyer. The above quote and link are provided strictly for reference. If you need legal advice, get a lawyer.
I would check out this Wired news article about a city's government website that expired, and what options they were faced with.
Pertinent quote from the article cited above:
|"...even large organizations can get caught off guard. Earlier this year, Wiener fielded a desperate call from American Express. The company had forgotten to renew www.americanexpress.net and needed Snapnames to grab it back before a speculator got hold of it. |
Companies that lose control of a trademarked domain name can try to recover it through ICANN's dispute resolution system. A request costs $1,500 and typically takes 60 days to process.
But if a domain doesn't have trademark protection, there's really no way to get it back, other than to buy it from the new owner."
|"red widget" might be a fairly defensible company name |
Not really...IF, indeed, common red widgets are sold under that mark. If the product or service offered is apparent from the mark itself, and if it does not require a leap of imagination to deduce what is sold under the mark, then it fails the test and is descriptive~generic.
Now, if I were to call my company, say: "Blue Suede Shoes"* but did not in fact sell actual shoes made of blue suede under that mark, but rather rockNroll memorabilia, then the mark would be suggestive or fanciful, and therefore afforded protection. This is a really elemental principle of trademark law.
(*Caveat: imperfect example. Elvis estate might hound-dog yer arse on that one)
<<Elvis estate might hound-dog yer arse on that one>>
Carl Perkins, actually. But the Big E is close enough.