A company asked me to return my domain to them

[hjordis]

Hi!

So I registered a brandable domain a while ago, and just found out the domain was belong to a company because they sent me an email and asked me to return it to them - apparently they forgot to renew the domain, I did a trademark search for the word, and it was abandoned long before I registered the domain. What should I do about it?

Thanks.

 

[MadAboutDomains]

Not everyone domain with the term sky is due to Sky Television (or whatever the orgs name is). There is a lot more to TM violation than just having a generic dictionary word like sky in it!

I'm assuming that this is the UDRP that relates to @italsat's registration of SKYBET.IT: http://www.crdd.it/decisioni/skybet.htm

When translated (Google Translate) it says:

"the domains skybet.it and sky-bet.it were registered respectively on August 15, 2010 and June 6, 2012"

Here are the registrations by Sky for 'SKY BET' variations that predate the registration of the domains affected:

SKYBET - https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002303613
SKY BET VEGAS - https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002324758
SKY BET TV - https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002325377
SKY BET VEGAS 24/7 - https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002389162

... and then there is the EU trademark that predates the registration of sky-bet.it:

SKY BET - https://euipo.europa.eu/eSearch/#details/trademarks/010310043

Then there's the small matter of the reasoning for the domain being taken away, here are more translated quotes from the UDRP:

"b) that typing the address http://www.skybet.it you get to active website, in whose home page were reported in real time results of football matches of various leagues, links to betting sites, and so on"

"Finally, as regards the bad faith in the registration and maintenance of the domain name, it is clear that the registration of the two domain names was done " to attract, for the purpose of profit, Internet users creating reasons for confusion with the brand of the claimant "(article 3.7, letter d) of the Rules of Procedure) or in any case " to prevent the holder of the right to a name, trademark, name (...) to use that name, denomination, mark or other distinctive sign in a name corresponding domain and it is used for activities in competition with that of the plaintiff "(Article 3.7, letter b) of the Rules.)"

 

[anantj]

I'm assuming that this is the UDRP that relates to @italsat's registration of SKYBET.IT: http://www.crdd.it/decisioni/skybet.htm

When translated (Google Translate) it says:


Here are the registrations by Sky for 'SKY BET' variations that predate the registration of the domains affected:

SKYBET - https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002303613
SKY BET VEGAS - https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002324758
SKY BET TV - https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002325377
SKY BET VEGAS 24/7 - https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002389162

... and then there is the EU trademark that predates the registration of sky-bet.it:

SKY BET - https://euipo.europa.eu/eSearch/#details/trademarks/010310043

Then there's the small matter of the reasoning for the domain being taken away, here are more translated quotes from the UDRP:

Sure. I'm not disputing the issue with Skybet (TBH, I did not read through the decision as I'm not versed in Italian. I was, however, commenting on your comment as quoted below:

I haven't checked, but Sky almost definitely had a TM on 'Sky'

"Sky" as a word and SkyBet as a phrase/brand are very different concepts. I was purely commenting on this comment.

 

[MadAboutDomains]

I understand your point, but my post that stated about existing trademarks for 'Sky' and a lot of other variations existing before his registration was made specifically as a response to @italsat's post. His post was about 'Skybet.it' and how he lost it. I'd also say that Sky and Skybet are directly related, because their brand and company name is Sky and they defend it with vigour (Skydrive, for example).

I agree with you that Sky is a generic term, but only until you start trying to register and use names for things that relate to the classes, good and services in their trademarks for the term Sky.

Specifically in this case the following trademark for Sky https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK0002302176C, filed in 2002 (registered in 2004) predates the registration of 'skybet.it' and is littered with 'bet' in it's goods and services for classes 9,41 and 36 (9 including computer software, 41 including entertainment and sporting and cultural activities and 36 including financial/monetary affairs). It's an open and shut case really.

Sky isn't generic in this case and many others, when it is supported by a clear trail of information to the contrary.

I don't think that I'm going to have to chow down on my socks just yet... maybe another time