UK Brandname & domain question

another "someone has done this what can we do?"

[Mark_A]

UK Client uses business tradename "example" and has used it for some 15 years, they make and sell widgets.

"example" used to be their business name (UK LTD Company) until they were absorbed into a larger business "example1-parent", now "example" is being used as their brand and the name of their business unit. There is plenty of evidence of years of national and international use of the name as a marketing brand and business name. Whether the name is in fact registered as a paid up trademark in the UK EU or other area is at the moment unclear due to personnel changes.

They own & use "examplewidgets.com" for their current website.

Someone in a not unrelated business (not direct competition) has bought example.co.uk and pointed it at their web site.

We want it back. How good are our chances?
Any tips appreciated.

[jmccormac]

Establishing the status of the trademark would be important. However there is also the possibility of a legal challenge to the domain registration on the basis that the not unrelated company may be 'passing off' by using a recognised brand, especially if both the client and the other company operate in the same jurisdiction. The .uk is an unregulated domain from what I remember but it would be a good thing to read the information on the [nic.uk...] site and take it up from there.

Regards...jmcc

[Mark_A]

Hi jmccormac
Thank you for your reply.
My feeling is that I could stop the infringer using the name with a strongly worded letter especially focussing on the idea of "passing off" as the name is established.

It appears my client is reticent about discovering the full legal status of their name, and as one who was once billed £600 for a couple of conversations with a Uk based trademark attourney I can understand why :-)

What I would like to achieve is that the infringer desists from using the name and gives it up such that they do not even appear on the whois record which is at least inappropriate though perhaps the lesser of two evils.

I am not keen to recommend my client pay any inflated price to recover the name although they would like it associated with the new site I am developing.

Thanks for your comments, I think I need to look round for more reasonably priced legal advice than that I was asigned by a corporation in the past :-)

[Crazy_Fool]

you may be able to get the domain back through the nominet Dispute Resolution Service. you may need the registered trademark in order to stand any chance. check the nominet website to read all about the dispute resolution service and read up on some example cases.

you can check if the trademark exists from the uk patent office website at [patent.gov.uk...]
it's only available certain times of day, so check when you get a chance.

[Mark_A]

Hey, top tip! Crazy_Fool
Thanks. I definately should already have known about that patent office trademark search .. very useful indeed.

[Mark_A]

As far as I can see the thing about the nominet dispute resolution service is that it is

- the complainant that always pays -

That is not a good way to resolve a case of tradename abuse.

If someone knows that they can abuse your tradename on the internet and that it will only cost you not them, then what is the dis-incentive to stop them from doing this?

I think I may prefer the courts where costs can be awarded to the offender.

Any comments welcome.

[Shakil]

MarkA drop me a sticky with your details, I may be able to get your problem solved very easily.

been through very similar stuff recently :)

Shak

[Crazy_Fool]

AFAIK, the nominet dispute resolution service only makes the complainant pay (£750?) if the dispute goes to mediation - if the other domain isn't in use (ie, is only reserved) then your complaint may not go to mediation. AFAIK, only 1 in 6 complaints go to mediation. you probably stand a good chance of getting the domain if you own the trademark.

you may find this a cheaper and quicker route than going through the courts.

in the event that you may be entitled to claim for compensation (passing off etc), you may still be entitled to this compensation even after a claim for the domain name through the DRS.