Advice on Domain Dispute Issue

[pardew]

Hi,

Would someone be able to give me some advice on a dispute over a domain name?

UK company owns abc-xyz.com
US company owns abcxyz.com

US company bought their domain around 2000, but have received virtually no traffic at all, though they also own the Trademark abcxyz.com

UK company bought abc-xyz.com in 2003 and receive approx 5 million hits/mth.

Both companies deal in similar fields.

US company has contacted UK company via email and demanded the domain (abc-xyz.com) be handed over, otherwise they will go through WIPO.

US company has also offered to sell the abcxyz.com domain AND trademark to the UK company for $10,000.

Thanks

[jo1ene]

Good morning, Pardew. Are we to assume that you are UK company? Should you spend the money? Do you have the money?

If I had it I would spend it. As it is, there are a few incarnations of my domain out there that have been a thorn in my side for a few years. I find it amusing that they are trying to play this one both ways.

That is, assuming that my assumptions are correct.

[pardew]

Hi,

Yes, your assumptions are spot on!

I believe we should spend the cash, but can you sell a US Trademark in that way to someone in the UK?

What sort of case would they have though (realising nobody here can give legal advice)?

I've looked at past instances of similar cases and it seems very 'hit or miss' to me.

[ukgimp]

You are going to have to speak to someone about this.

Thinking out load, is the domain fairly generic. For example:

big-cars.com

if is it more like

ford-cars.com

and it is ford who have contacted you you will be on shakier ground me thinks.

Welcome to WebmasterWorld by the way :)

[pardew]

Thanks for the warm welcome :)

It's two VERY generic words, the first relates to the business field.

[Webwork]

Check the rules of the USPTO. For awhile dot coms were being granted trademark status, then wiser people said "Hey, it's generic words and phrases, that's a bad idea" so the USPTO issued an edit saying "We're not going to let this practice continue". I'd be surprised if they received a US government trademark on a generic word dot com. Check for the registration. Challenge it if you must. Check the trademark registration itself. It should say that there's no claim to a trademark in 'word 1, word 2' AND, by all means, you can't get a trademark to .com itself.

Lots of bogus claims in this realm IMHO.

[pardew]

Thanks.

Unfortunately it doesn't say anything like that at all.

Is does say "Transformed into a National Application: No", and there's nothing under the Madrid Protocol section.

[pardew]

Ok, this person is now contacting my customers and threatening to sue them if they continue to promote/use our site.

I've called the UK Patent/Trademark office, they referred me to Nominet (err this is a .com not .co.uk) - neither have helped.

Called the Tradmark office in the US, no one was available to talk (except the receptionist).

Any advice on what I should do next?

[Webwork]

Stop posting for answers to legal questions and legal strategy issues in a webmaster forum, and talk to a proper lawyer in your own jurisdiction. If your competitor is interfering with your business interests he/she/it may have opened himself up to a separate legal action in your home jurisdiction.

Talk to a lawyer. NOW. Anyone who gives you any further or other guidance at this point is doing you a disservice and you are doing yourself a disservice by mining for guidance here.

Webwork, Esq.

[richmondsteve]

I've been through a couple of domain disputes, including a UDRP arbitration. Like Webwork said, hire an attorney - and I'd recommend one who specializes in Internet law or at the very least has strong experience in IP and trademark law.

[Dorian]

With generic domain terms the key rule is for either side to prove that the other is using the domain in bad faith ie to deliberately divert customers away from the other one. If you can't do that then, with few exceptions, you're not likely to reclaim the domain through arbitration.

You may still have a legal case but when you see what domain name lawyers charge you'll realise that $10,000 won't get you too far anyway. Meanwhile, if these guys are contacting your customers I believe they've seriously overstepped the line and you may well need to go down the legal route to get an injunction.

[twoline]

Webwork is right. You need professional legal advice from an IP attorney familiar with international TM issues, domain disputes, and the like.

I don't know what business you're in, but it seems like a site with 5MM visits a month (something in your first post) should be able to afford the $10K, which seems quite cheap. You'll easily burn through that in legal fees if you end up pursuing either a claim or counter-claim to its end.

As far as owning TMs in another country, all I can say is that my company owns a dozen TMs in different countries, even though we're a US company. Our TM attorney has told me (paraphrased):

There's no such thing as a global TM. There's just a collection of TMs in each country.

Whether that applies to your situation, again, I can't say. Definitely time to call your solicitor.