Hi all,
I'd like to hear your thoughts on an unusual (to me) legal issue. As this is a legal question, I guess it would help to say that I'm based in the UK.
I bought a website and a domain name (let's just call it XYZ.co.uk) about a year ago. The domain name was registered over four years ago, and the site (called XYZ.co.uk) was created shortly after. I bought the domain name and the site in good faith in mid-2017, because it had received 50,000 visits in the 6 months before I bought it. I've been working hard since then to increase the traffic flow (which I've done successfully).
A few weeks ago I received a cease and desist letter from an overseas business which owns a similar domain name (let's call it XYZ.com). I'd never heard of this company before, or of its website. It looks like this company started using the domain name XYZ.com in spring 2017. It has registered "XYZ" as a trademark in its home country and has applied to have it registered in a number of other countries around the world (including in the UK / Europe). I've been told to stop referring to "XYZ" on my site (and on any of the other sites I own I guess) because doing so infringes (or will infringe) this company's trademark.
Although my website and their website are focused on the same industry (for argument's sake, let's say computers), our sites are quite different - i.e. mine is an educational site and theirs is a site for buyers and sellers, so we do not share the same client base. My website was started in 2014, three years before them. Although my website started life as a forum for buying and selling "computers", it switched focus to become an educational site (still about "computers") a year before I bought it and before the other site was created. So my site has always been related to "computers", it has existed since 2014 and now there is no overlap in terms of what the sites are meant to be used for (education vs buying and selling).
I spoke to an English lawyer who is an expert in this area. I was told in no uncertain terms that they can legally prevent me from ever referring to my own domain name as soon as their European trademark applications are complete, because my domain name (XYZ.co.uk) will infringe their trademark (XYZ). So they can effectively shut down my domain name and website without having to go through an arbitration process, or show bad faith or lack of use on my part. To be clear here, the lawyer told me that they can stop me from even referencing XYz.co.uk on the XYZ.co.uk website (or I guess on any other website).
I've been working in tech for over a decade and it's the first time I have ever heard of this. I'm familiar with the domain name arbitration service (Nominet here in the UK), but to succeed there you need to show bad faith. As mentioned, there's no bad faith here. I bought this site in good faith for legitimate business purposes. There is some overlap in terms of industry, but our sites / businesses are quite different, and mine was started way beforehand.
If the legal advice is correct, what's the point of the arbitration process? Any person or business with a registered trademark and enough money could sidestep it completely - you'd simply threaten trademark infringement. If the owner of a domain name that is similar to your trademark is likely to lose in court (which seems to be the case unless they have a really popular / well known site) then they have two pretty bleak choices; stop using their domain name or try to fight it out with you in court and probably lose. You wouldn't need to show bad faith, lack of use or anything else, just that there is a likelihood of confusion due to similarity between their domain name and your trademark.
To be clear, the lawyer's advice is that this other business would lose in a domain arbitration process, because I pre-date them, and there is zero bad faith. But, they can still stop me from referencing XYZ.co.uk on XYZ.co.uk - not just the saying 'XYZ' (which is their trademark), but actually referencing my own domain name. Which renders it completely useless to me.
Is the lawyer's advice correct?
I'd like to hear your thoughts on an unusual (to me) legal issue. As this is a legal question, I guess it would help to say that I'm based in the UK.
I bought a website and a domain name (let's just call it XYZ.co.uk) about a year ago. The domain name was registered over four years ago, and the site (called XYZ.co.uk) was created shortly after. I bought the domain name and the site in good faith in mid-2017, because it had received 50,000 visits in the 6 months before I bought it. I've been working hard since then to increase the traffic flow (which I've done successfully).
A few weeks ago I received a cease and desist letter from an overseas business which owns a similar domain name (let's call it XYZ.com). I'd never heard of this company before, or of its website. It looks like this company started using the domain name XYZ.com in spring 2017. It has registered "XYZ" as a trademark in its home country and has applied to have it registered in a number of other countries around the world (including in the UK / Europe). I've been told to stop referring to "XYZ" on my site (and on any of the other sites I own I guess) because doing so infringes (or will infringe) this company's trademark.
Although my website and their website are focused on the same industry (for argument's sake, let's say computers), our sites are quite different - i.e. mine is an educational site and theirs is a site for buyers and sellers, so we do not share the same client base. My website was started in 2014, three years before them. Although my website started life as a forum for buying and selling "computers", it switched focus to become an educational site (still about "computers") a year before I bought it and before the other site was created. So my site has always been related to "computers", it has existed since 2014 and now there is no overlap in terms of what the sites are meant to be used for (education vs buying and selling).
I spoke to an English lawyer who is an expert in this area. I was told in no uncertain terms that they can legally prevent me from ever referring to my own domain name as soon as their European trademark applications are complete, because my domain name (XYZ.co.uk) will infringe their trademark (XYZ). So they can effectively shut down my domain name and website without having to go through an arbitration process, or show bad faith or lack of use on my part. To be clear here, the lawyer told me that they can stop me from even referencing XYz.co.uk on the XYZ.co.uk website (or I guess on any other website).
I've been working in tech for over a decade and it's the first time I have ever heard of this. I'm familiar with the domain name arbitration service (Nominet here in the UK), but to succeed there you need to show bad faith. As mentioned, there's no bad faith here. I bought this site in good faith for legitimate business purposes. There is some overlap in terms of industry, but our sites / businesses are quite different, and mine was started way beforehand.
If the legal advice is correct, what's the point of the arbitration process? Any person or business with a registered trademark and enough money could sidestep it completely - you'd simply threaten trademark infringement. If the owner of a domain name that is similar to your trademark is likely to lose in court (which seems to be the case unless they have a really popular / well known site) then they have two pretty bleak choices; stop using their domain name or try to fight it out with you in court and probably lose. You wouldn't need to show bad faith, lack of use or anything else, just that there is a likelihood of confusion due to similarity between their domain name and your trademark.
To be clear, the lawyer's advice is that this other business would lose in a domain arbitration process, because I pre-date them, and there is zero bad faith. But, they can still stop me from referencing XYZ.co.uk on XYZ.co.uk - not just the saying 'XYZ' (which is their trademark), but actually referencing my own domain name. Which renders it completely useless to me.
Is the lawyer's advice correct?