Domain name Dispute

[tigger]

could anyone offer any help, one of my clients has the domain keyword-keyword1-keyword2.co.uk and the owner of the non hyphenated domain has contacted him telling him to remove the site as its taking his business away, that fact my clients site out ranks him for all his main terms is the real reason for that.

He has threaten legal action if he doesn't take the site down, but the keywords are NOT branded names and he claims if the site ins't removed he will pass this over to nominet

I've never had any dealings with anything like this and could do with some help

ta

[Webwork]

I'm a bit more familiar with WIPO procedures and rulings.

From the few cases/reviews that I've read the Nominet process has the reputation of being a bit less fair than WIPO, a bit more "pro business". (It's always hard to assess statements about fairness without examining a large number of cases in detail.) I forget if Nominet offers a 3 "judge" panel or if all decisions are made by one fact finder jurist. When it's a 1 person process people may begin to see patterns, where all close calls fall in one direction, etc.

If the keywords are simply words of generic or general meaning that haven't acquired special or added mean by some company's historical use (eg, General Motors) that's a good start.

WIPO takes a hard look at trademark law and anti-cybersquatting legislation, with the occassional visit to common law rights. The reports I've read about Nominet cases suggests that the decisionmakers look at similar factors, with some added British business practice rules relating to trading off, etc.

Here's how you can help your client: Either have him/her consult with a local specialist in ~trademark law or, if the cost is too prohibitive, have him/her start doing research about the Nominet process and past decisions, work up a summary of their decisions with copies of reported cases plus a detailed history of your client's situation - and take all of that to a less expensive solicitor/barrister. The best way to keep legal costs down is to do a much detailed legwork as you are competent to perform.

Bottom line: Sound's like it's time to at least consult with legal counsel. It might be the type of situation where a letter from your client's solicitor will be enough to cause the other side to holster their guns.

[davezan]

Agreed. At times like these only retaining legal counsel will help.

Things can get potentially worse if both the complaining party and the registrant are
within the same area and the former has the luxury of time and money.

I wish your client good luck on this.

[novice]

Are the domains
keywordkeyword1keyword2.com
keyword-keyword1-keyword2.com
keywordkeyword1keyword2.net
keyword-keyword1-keyword2.net
keywordkeyword1keyword2.org
keyword-keyword1-keyword2.org
...and so on taken?

Why did your client choose that domain?
Can your client prove use prior to registering the domain?

Personally, if the keywords are generic (fluffy-red-widgets.co.uk) with no trademark, I think he is bluffing.

[gpmgroup]

From what you have said I would guess that trademarks would not really come into this case. It is more likely that Nominet will look at passing off & confusion, in which case they will be more concerned with the dates of registation of the two sites together with the nature / ownership of each site. i.e company v. individual / business v. affiliate.