Asked to change my brand name... advise please?

[pixelbypixel]

Hi all,

My girlfriend recently started up a website to sell art prints, its far from live yet, she bought a .uk.com domain name and has started getting art to sell.

For example lets call the site 'wallart.uk.com' - this is not the real site.

Some UK Limited company contacted her last week asking her to change her branding away from 'wallart' as they own the limited company name and the .co.uk of her domain.

She offered to change her name to 'wallartuk', but they are still adamant that the name is too similar to theirs.

They registered last year their company name, and their site lets you upload a photo to be printed on canvas etc, they have very recently added a 'prints' section to buy artists prints which is 'coming soon' and are argueing that due to that, the businesses are in the same market and the names are too similar.

Of course I understand they have rights to the name, but how different does the name need to be in order to stop any legal matters?

My girlfriend is quite concerned and was really happy and excited with the name she has.

Any help/advise is appriciated.

Thanks,
Richard

 

[Kate]

Offtopic, but using a .uk.com is a bad idea.

You say the domain names are identical without the TLD, the other party has been in business for some time, and your girlfriend is using her domain more or less in the same 'industry' (art prints). Even though we don't know the actual domains, it's not surprising the other party is complaining and they may be right. If the stakes are high enough, consult with an IP attorney.
Or consider the benefits of rebranding on a proper extension (which .uk.com is not).

 

[joshny]

^ what he said
Also now that they know of you guys, sell your domain .com.uk to them and move on, it's the best bet to avoid any legal hassles

 

[Dave_Z]

sell your domain .com.uk to them

Generally, selling a domain name to the holder of its trademark namesake is not a good idea. The trademark holder can use that action as a sign of trying to exploit his/her/their TM right (i.e. bad faith).

 

[Chris Wright]

Generally, selling a domain name to the holder of its trademark namesake is not a good idea. The trademark holder can use that action as a sign of trying to exploit his/her/their TM right (i.e. bad faith).

While that is true, it hasn't come to light whether any trademark is in effect.

 

[verbster]

Hi all,

Of course I understand they have rights to the name, but how different does the name need to be in order to stop any legal matters?

You've just admitted the other company's right of usage to the name, which would be a trademark by use.

it's not only how different the name is, it's also how similar the good and/or services offered are. That determines how "confusingly similar" they are. So if your girlfriend's business is anything like the other company's, the domain cannot be anything similar enough to be confusingly similar. WallArt and WallArtUK are too similar.

 

[wot]

Close enough similarity to draw a challenge. Simply get another name but .uk.com is not the best at all.
Many other options.

 

[SearchEngineZ]

Spend a day brainstorming a better brand/domain to use.
Offer the current domain to the complainer for free - only because it isn't easy to suddenly not own a domain.
Don't do uk.com. Not only is it well dodgy, it also means someone else has the .co.uk already.

 

[Dave_Z]

While that is true, it hasn't come to light whether any trademark is in effect.

That's because the OP has not specified the actual term/s in question. No one, obviously, will know unless that term is mentioned here.

Besides, I started my previous statement with "generally" to make allowances.

At any rate, the OP appears to have some answers or direction. The rest is up to him and his girlfriend.

 

[DU]

Offtopic, but using a .uk.com is a bad idea.

Read what the smartest* member of NP says.

Everything else in this thread is really irrelevant.



*Unofficially

 

[Ronald Regging]

Honestly, there isn't enough information here for anyone to make an informed opinion, other than that .uk.com generally sucks... The term, which is unknown, could easily be descriptive of generic for that industry, thus making any type of TM claim invalid. We just don't have enough data to know.

 

[DnEbook]

change names, avoid hassles ……..move forwards with what matters ….your new venture, good luck

 

[The New Guy]

Spend a day brainstorming a better brand/domain to use.
Offer the current domain to the complainer for free - only because it isn't easy to suddenly not own a domain.
Don't do uk.com. Not only is it well dodgy, it also means someone else has the .co.uk already.

Offering the domain name to them is a smart move. It builds good will and your girlfriend might benefit from it in the future (she may need a job, they may throw some business your way if it doesn't fit their business plan, etc). Just be polite and say "sorry, we had no idea. We'll find something else and transfer the domain to you if you'd like".

And I can pretty much guarantee that even with all the domains registered you'll be able to .com that's more memorable than a .uk.com address.

 

[joshny]

While the company may have a trademark, I assumed it did not,Since they asked you to change the brand name instead of sending a Legal Document, It means they are at least willing to be fair, so it kmay not be a bad option to be polite to them and replying back and saying that since we have agreed to change the brand name would they be interested in acquiring the particular domain

 

[namey]

The term, which is unknown, could easily be descriptive of generic for that industry, thus making any type of TM claim invalid. We just don't have enough data to know.

I agree, that is a very generic word/phrase. Seems like they are just being bullies pushing their weight around.

 

[NameBot]

Each case is different. I would recommend you to consult a lawyer.

 

[frostify]

I once made $x,xxx using a domain... let's call it "AmazonSearch.com" it was very similar. I was even using the Amazon affiliate program to monetize the site. Got an email from Amazon's legal department and they agreed to let me keep all the cash I earned already and keep my affiliate account active if I traded them the domain and site for a $15 giftcard. Needless to say I took the deal. With near nothing in my bank account previously I used that money to snipe a very premium LLL.com a few months later worth much more than I paid for it. Moral of the story, if you're using a trademarked name you should give it to the owner and then before you know it a new opportunity will arise. Just try to help her come up with a better name Also as the other guy mentioned do not use a .uk.com domain, those are awful and I'm pretty sure its just a subdomain from the owner of uk.com who has set it up as so. Get a .com or if your heart is with a UK domain get .co.uk

 

[Magicpig2]

The 'dot UK' extension is becoming available in the next few weeks. It wouldn't surprise me if you were able to bag yourself an excellent art related brand name when it launches.

---------- Post added at 05:23 PM ---------- Previous post was at 05:13 PM ----------

WallsAndPictures.com/co.uk are both available....?