Domain name infringment claim by multinational

[sjg1234]

I purchased a domain name a year ago to sell some electrical products. Im based in ireland and legally bought the .ie domain. The .ie register is quite strict and you have to have a legitimate claim on the domain and have a connection to ireland. They approved the domain. I will call the domain widget.ie. There is a mutlinational that is called widget and they sell widget products from their own site.

I sourced widget products in Ireland from a supplier and started selling them online. The widget.ie domain was obviously helping me gain sales as people were looking to buy the widget product here in ireland and our site was coming up in google.ie. We did not use any branding from the multinational that is called widget and who have the widget.com and widget.co.uk etc domain names. We then marketed the site, SEO's, PPC advertsing etc and are doing around 30K in sales per year for the first year. often multinationals don't bother with ireland as its only 4 million people and the .ie register is quite strict.

Now the widget company are stating that we are in copyright infrindgment of their brand. They have offered to move us to a new site (they will pay for this) and give us a reasonable price for the domain name. We do not want to move to a new domain so we are offering them to buy the domain name and business from us. Although they will not be using our site or technology if they have the domain they will get sales from it off the back of our marketing.

Just wondering what would be a reasonable price to sell this to them and do they have any legal right on our domain name.

Thanks.

[jbinbpt]

Hi sjg1234,
Welcome to WebmasterWorld. Enjoy :)

You won't find actual legal advice here, but you will get opinions based on experiences. Check with a local legal adviser.

Is the name in question a registered trademark in Ireland? If so you will have a hard time keeping it.

The big question is how much are you willing to spend trying to keep it? They are making an offer that keeps you in the game. Take a serious look at it.

[sjg1234]

Hi,

Thanks for the reply. yes just looking for advice, experience etc on this issue.

We do wish to sell it to them as we feel the market is flooded with big players selling these electronic devices. Its not registered as a trademark in ireland.

[jbinbpt]

That they offered a solution tells me that they feel their position is tenuous, but they have the deeper pockets.

Good Luck

[sjg1234]

Thanks, we do feel they made the offer so its a case of how much are they prepaid to pay for it.

[jmccormac]

Now the widget company are stating that we are in copyright infrindgment of their brand.

It is a tricky situation. If the widget company has an Irish, UK or EU trademark then they would be on stronger ground. However if the claim is for "passing off" then it could be worth talking to a solicitor. If the widget company is not entitled to register a .ie domain according to IEDR policy, then they can't register this domain.

They have offered to move us to a new site (they will pay for this) and give us a reasonable price for the domain name.

Generally, .ie domains cannot be sold like an ordinary .com domains. They have to be transferred with the approval of IEDR as the domain will have to be deleted and reregistered.

Just wondering what would be a reasonable price to sell this to them and do they have any legal right on our domain name.

Request proof of entitlement such as an Irish or EU trademark and proof of trading in Ireland. As to the price - that's probably related to the turnover of the business specifically related on the widget sales. Again you should talk to an accountant about this.

Just on the .ie side of things, I think that only a few people here with experience of dealing with .ie domains. ;)

Regards...jmcc

[Leosghost]

Just on the .ie side of things, I think that only a few people here with experience of dealing with .ie domains. ;)

Which is why we didnt jump in to waters we dont know enough about to give an informed opinion ( even if some of us are from Ireland ..originally ) ....thanks for dropping by jmcc ..appreciate the expertise as always .:)

Curious ..whats the position IYO in Irish law if the "big company" has no Irish nor UK nor EU trade mark ..but does have for example a french trade mark or a german or spanish etc ,or a trade mark in any other EU country but not EU wide ( given that the UK and the Irish legal systems have more similarities than do the Irish and say the french systems ..) ..any jurisprudence that you know of ?

[jmccormac]

Curious ..whats the position IYO in Irish law if the "big company" has no Irish nor UK nor EU trade mark

It is a tricky one, Leosghost,
The main thing that IEDR (the .ie registry) emphasises is the connection to Ireland. Apparently TMs from other countries (other than IE/UK/US/EU) are good enough but it is the connection to Ireland that matters. I think that IEDR would want proof of trading with Ireland if there is any question over the domain. US TMs are actually acceptable too but most of the US .ie domains tend to be registered by Markmonitor and are brand protection registrations. With Irish, UK, US and EU TMs it is just a question of providing the TM number as they can be checked online. The others may require a copy of the TM certificate. The whole .ie registration process has improved in the last five years or so but it still is a managed registry and prospective registrants have to prove that they are entitled to the domain. The .ie is now the defacto TLD in in Ireland and any business doing business here tends to have a .ie domain. From memory, there are a few German, French, Dutch, Belgian and Italian TM registrations that I've seen. I've even seen a few big EU hosters targeting the Irish domain registration market with the .ie version of their own brand but they are very late arrivals to the market. I don't think that they'll make much headway as about 80% of the Irish market is split between approximately 30 hosters and most of the non-Irish hosted Irish domains tend to be concentrated on a few UK and US hosters. In this respect, it is turning into a classic ccTLD market whereas a few years ago, the level of Irish domains hosted outside Ireland was significant (>25% at least). It is not so much jurisprudence that decides .ie registrations as much as talking to IEDR. But the best way to do that is to get a local hoster to deal with it. :)

This is the IEDR page on registration policy:
[iedr.ie...]

The whole aftermarket in .ie domains is still a very touchy subject and technically .ie domains are not meant to be sold. Transferring a .ie domain from one business to another generally requires the original registrant to delete the domain and the new one to immediately register it. The reason that it is like this is due to the entitlement aspect of registation.

Regards...jmcc

[Leosghost]

Thanks ..reason I asked is that our ( french ) trade marks have just come down in price ..I can now register a french one for 10 years for €200.oo ( used to be way way way more expensive ) so theoretically if it was registered here it would be good for the IEDR ( specially as I'm also Irish ) ..

I have the .com.org .net and.fr and already have the application for trademark in the system here ..but it's summer ..and here that means nothing moves til mid september ..maybe I'll do the .ie reg tomorrow to be safer rather than sorry ..

No conflict with any existing company worldwide ..but it is a 6 letter easy to say and remember in all languages brandable ..that in english and french describes pretty well what the company does ..plus the company is already registered in the Uk and France as LTD or french equivalent ..SARL ..

I do have a long established Irish ( offshore )LTD ( for rest of world trade outside of Eire )..but this new one will trade with Eire and the UK aswell as internationally..

Thanks again for the valuable input ..you're a good man ;)

[sjg1234]

Hi all,

Thanks for your replies. I checked up and the widget company has an EU trademark. They do not have the ireland TM

They came back to me after i said I would audit the business and see what it was worth. They stated that they only want the doman and not the business. Thing is we have worked on the SE's to get us up there and have put in offline marketing time also. If we sold them the domain they would be getting customer inquiries immediatly and orders. I spoke to a solicitor here in Ireland and he didn't paint a great picture for us. He stated that as they have the .eu trademark they are in a very strong position.

However in their email to me thay did state that prior to us buying the domain they noticed it just had links on it. I get th feeling they did nothing then as it wasn't effecting them and they don't rally want to bother with ireland as the amrkt is small. We did only buy it last september and it was available. If we hadn't bought it and started to use it to sell their products im sure they would not off even bothered about ireland.

The last email they offered a 1000 euro and stated that the maximum a court would offer. We have spent more than that on th SE's alone.

I have also bought loads of domains from the IEDR and if you have a valid reason for wanting it, i.e I want to sell widgets and im based in ireland then surely its a viable and legal. They don't have a base in ireland at all.

I can tell you the domain if people want to know, if thats the done thing on here.

your thoughts are most helpful.

Thanks.

[jmccormac]

Thanks for your replies. I checked up and the widget company has an EU trademark. They do not have the ireland TM

The EU or Community Trademark settles it. You don't have a trademark so if this went to the dispute process, you may well end up losing the domain.

If we hadn't bought it and started to use it to sell their products im sure they would not off even bothered about ireland.

The fact that you are selling their products makes it worse. They could argue that it is a bad faith registration.

The last email they offered a 1000 euro and stated that the maximum a court would offer. We have spent more than that on th SE's alone.

Unfortunately it doesn't matter how much you've spent on developing the domain.

I have also bought loads of domains from the IEDR and if you have a valid reason for wanting it, i.e I want to sell widgets and im based in ireland then surely its a viable and legal. They don't have a base in ireland at all.

They have the EU trademark and that's what matters. This is the IEDR dispute policy:
[iedr.ie...]

It is fairly clear about trademarks and protected identifiers.

The IEDRP decisions on .ie domains names are also worth reading to get a more detailed understanding of how the process works.
[iedr.ie...]

Technically speaking, I'd think that you are banjaxed because of their EU trademark. It would be even more difficult to defend if you are selling their widgets because that could be argued as bad faith. The solicitor may be able to suggest what to do next.

Regards...jmcc

[sjg1234]

Many thanks for that jmcc. Thats exactly what a solicitor said to us about it.

We have never done anything in bad faith, just saw the opportunity to sell products. I have emailed them back stating we feel the domain is worth more and gave them a price. I suppose lets see what they come back with.

I certainly won't let it go down the leagl route though, thats the last thing i want to happen.

I will post the next response in this matter.

sjg.

[HuskyPup]

they don't really want to bother with ireland as the markt is small.

Ripe for development then!

Since they appear not to be interested in the business but solely protecting their mark, why not suggest to them that would would sell them the name at a fair price if you could use/lease it back from them and continue to sell their products?

I don't know many companies that would refuse a deal to increase sales with no effort on their part so long as they are happy you are "doing things" their way!

I can tell you the domain if people want to know, if thats the done thing on here.

No dropping of urls allowed here.

[kaled]

I agree with HuskyPup...

This is a real-world company selling real-world goods - domains and websites are simply a means to shift those goods. If you can persuade the company that you can shift more of their goods than they can then they ought to consider some sort of domain-rental, franchise, or authorised-dealer arrangement.

If you point out to them they can only take control of the domain name and not the designs, content, order-fulfillment stuff, etc. that may make them think. In a recession, few companies want to risk actions that will result in falling orders.

You could maybe spin the argument a bit by by suggesting you could do even better with promotional help.

Kaled.

[jmccormac]

The problem with the domain name is that it is an EU trademark and trademarks have to be defended.

Regards...jmcc