Originally I pointed it at my site. Now, I accept this might be classed as 'Passing off' so when they contacted me a week later I agreed to stop pointing the domain.
Anyway, the current situation is they want the domain (which I will probably let them have). However, I just wanted to check the legal standing of their claim as I don't really appreciate the threat of legal action, particularly when a company much larger and less diverse than my own hasn't the good sense to register domain names it will need!
However if you pointed it at your site then they could have a claim for trademark infringement, if indeed they have the term trademaked.
My registrar always put relevant ads of advertisers who pay them on a web page created and hosted by them under URL of the domain name registered through them; if registrant is not hosting anything on it. The registrar may have mentioned this in their terms conditions or whatever. In such case registrant may have to face problem as if he/she is using name commercially.
Note the classes that are registered (09 35 41) - those cover quite a wide scope of areas that a regionally focused website would cover. I don't know nearly enough about trademark law to comment on whether or not you could use the domain for an unrelated site if you wanted to.
Also, the first part of the name ("theterm") doesn't appear to be trademarked - there are loads of instances of it being used as other company names and slogans (which themselves can be trademarked) - and also other instances of other town variations being owned by other people (I had considered picking up one myself - thought against it and someone else ended snapping up my home town lol).
Personally, I think if they have the trademark for "(theterm)(yourtown" specifically, then you should take serious legal advice if you want to keep on to it.
If they don't have that specific trademark, then still seek legal advice, but I'd suspect you would be fine. Chances are they are annoyed because that town is in the middle of other towns they down own and they didn't have the foresight to register the domains.
MG
So, the trademark is very similar to iLike and as mentioned the domain name is trademark-region .co.uk
If I don't intend to use the domain (and where is the burden of proof regarding that) do they have any legal claims to the domain.
Can anyone confirm that under UK law, I am not liable and will not end up getting a very big legal bill?
In your post when you said you pointed the domain to your site, and that they knew about that - I think you have a problem as they can probably attack you for passing off.
If you had never done anything with the domain then I think you would have been okay.
1. does the copyright extend to "name"+location - I very much doubt it.
I have a number of trademarks and i can tell you they have to be very specific. Even in the example above with "Nike", If you owned the domain say "Nike-Stafford" and had a site about something not connected to training shoes, that traded as Nike stafford or it pointed elsewhere it would be hard for "Nike" to claim it as theirs.
2. Do you benefit from passing your site off as theirs?
This is where its tricky - If you are passing the site off by pointing the domain to a similar type of site then its possible they have a claim for damages. You are in effect trading off the back of thier name. I have also discoved WIPO cases where domains were awarded back to the rightfull owner because the domains were not officially in use for commercial purposes other than pointing to a landing page with affiliate links.
Best advice:-
Obviously your call - it could go either way but as a betting man if it were mine i would have a "Comming soon - a site about widgets" page that the domain points to (nothing to do with their trade) and tell them that its your domain and you intend to use it for a site about the widgets in the future. You dont want to sell it but if they are desperate you could sell it for £750 to cover your costs.
The action from then can only be one of three things:-
1. issue you with a solicitors letter - Providing they have legal grounds and they may not. In any event it would be cheaper to pay you and write it off to experience. But its a risk.
2. Issue you with a wipo - again if they can prove 100%the domain relates to them - again they may not and it would cost them $1500 USD to do so - cheaper to pay you.
3. give you the money to cover your costs.
Having been in this position, i would pay you. A very big company COULD try and go legal but they would need solid grounds to do so and it would cost them so unless they can prove financial loss from you passing off the domain - again difficult the options for them are not that great.
I would be interested to know how you get on but logic would dictate that the most cost effective way to secure the domain for the company (thats what they want) would be best and its not worth them going legal if they have a cheap route out of it - dont know if others would agree with my line of thoughts on this or not?
If I gave the domain to someone else would that remove any liability from myself?
If the trademark holder is smart and wants to take it further, no.
If you really want to "dig your heels in", then do what Marketing Guy said long ago.
David
If they don't want to do this then I'm sure I could PM the name over to someone on here my might want to make a quick buck and register the name?!
