Demand for my Domain name (.co.uk) to be handed over!

[NorthWestPerm2Contr]

I received a strange email from a company demanding that I hand over a domain name that I registered in 2008. I use it to host web services as well as it linking to my ltd co's website.

They claim that because my domain name xxyyzz.co.uk (bought in 2008) exactly matches their trademark xxyyzz (registered in 2015) that I am infringing on their trademark because I am selling similar services.

Has anybody every come across such a case and does a trademark really entitle you to go and ask somebody to hand over their domain name!?

I found this on the following website:

https://www.ipos.gov.sg/Portals/0/IP...24June2013.pdf

"The fact, however, that a domain name is available and registrable does not necessarily mean that it is legally safe for you to use it. For example, if the name is identical or similar to another person’s registered trade mark, you may be infringing that trade mark."

Having said that I purchased the domain 8 years ago! How can somebody come and register a trademark 8 years later and demand their domain be handed over? Surely that cannot be the case.........

[northernladuk]

Found this.

Can I stop someone using my name as a domain name if I have already registered the name a trademark?
You may well be able to stop them if they are trading in the same area of business and particularly if you can show that they are acting in bad faith. Otherwise you may have to go through one of the accredited domain name dispute resolution routes offered by Nominet and by WIPO.

So guess they are going to have to take it to dispute resolution and you are't acting in bad faith, they didn't do their research properly. I'd ignore it for now.

[NorthWestPerm2Contr]

Found this.

Can I stop someone using my name as a domain name if I have already registered the name a trademark?
You may well be able to stop them if they are trading in the same area of business and particularly if you can show that they are acting in bad faith. Otherwise you may have to go through one of the accredited domain name dispute resolution routes offered by Nominet and by WIPO.

So guess they are going to have to take it to dispute resolution and you are't acting in bad faith, they didn't do their research properly. I'd ignore it for now.

cheers. So I guess I will respond and just tell them that they are not entitled to such, all the best blah blah.

[northernladuk]

cheers. So I guess I will respond and just tell them that they are not entitled to such, all the best blah blah.

I wouldn't say that as you aren't sure of that and it's going to engage them. You want them to go away. I'd probably take the silent approach for now and see what happens.

[MrMarkyMark]

cheers. So I guess I will respond and just tell them that they are not entitled to such, all the best blah blah.

Errrr, which part of "ignore it for now", do you not understand

Good advice IMO

[NorthWestPerm2Contr]

I wouldn't say that as you aren't sure of that and it's going to engage them. You want them to go away. I'd probably take the silent approach for now and see what happens.

Yeah... I kind of already told them that I would be seeking legal advice on the matter...

But their claims are ludicrous so I'm not really worried about facing a dispute resolution - I registered a domain 8 years ago and now they can come and tell me they have a right to it.... If that's what the world has come to then I may as well pack my bags and leave for the wild west.

[FarmerPalmer]

from the same document:

Similarly, owning a registered trade mark does not automatically entitle you to use that trade mark as
a business / company name or domain name. This is because the same trade mark can be registered
for different goods or services and by different proprietors. Also, someone may have already, and
quite legitimately, registered the business / company name or domain name, perhaps using it without
securing trade mark registration for it.

I would say they are trying it on. If you were trading under that name prior to their registration, then they have no entitlement to it.

Phew. I have the .co.uk and .com for my limited, and was concerned when I read your initial post.

[MrMarkyMark]

Yeah... I kind of already told them that I would be seeking legal advice on the matter...

But their claims are ludicrous so I'm not really worried about facing a dispute resolution - I registered a domain 8 years ago and now they can come and tell me they have a right to it.... If that's what the world has come to then I may as well pack my bags and leave for the wild west.

You may think their claims are ludicrous, Budweiser Budvar (Czech) probably thought the same when Budweiser (USA) took the to court for using the Budweiser name. The court case went on for ages, even though it seemed clear cut.

The Czech Co eventually won, but I guess it still cost a fortune to fight.

[BrilloPad]

A friend went contracting in late nineties. He found the company name "IT works" was available. 2 years late currys/dixons or someone setup a business with that name.

He tried very hard to get them to buy his business for serious money. He ended up with £5k plus legal fees paid. The alternative was avery long expensive legal battle.

So, the question is, how large are the pockets of the other side?

They are trying it on - you were there first.....

[NorthWestPerm2Contr]

You may think their claims are ludicrous, Budweiser Budvar (Czech) probably thought the same when Budweiser (USA) took the to court for using the Budweiser name. The court case went on for ages, even though it seemed clear cut.

The Czech Co eventually won, but I guess it still cost a fortune to fight.

This company was registered in the last 2 years with the trademark last year. I certainly won't be competing with a Budweiser.... They already mention the domain dispute resolution. I was thinking I could sell the domain but at what price? For a "filthy rich" contractor a few k isn't worth my time.