co.uk name complaint (I own the TM in EU)

[Moses]

Hi,

I own a TM in the EU for a short phrase.
the same phrase .co.uk was taken and was up for renewal in april.
I did not get it. It was registered(after it was free to register again) by a big domain parking company.

As I have the TM for the phrase before they registered it do I have the rights for the name or not?

thanks for the help.

 

[squid]

I believe, that if you own the trademark in the UK (Does EyU cover the UK as well?) you are entitled to that domain.
Presumably this will be clarified by a more experienced poster, but i believe that is the case.

 

[Moses]

I own the TM in the EU(covers all EU countries including UK)

The company has also put the domain for sale on sedo.

No price on it, but I am not willing to pay for it if I have legal rights for the name. If it seems that I dont have the right, then I ll have to buy it probably.

 

[Kate]

Similar thread: http://www.namepros.com/legal-issues-and-disputes/465775-i-own-the-registered-trade-mark.html

 

[Ronald Regging]

Legals rights do not come without their costs... which can often times be higher than an outright purchase.

 

[akcampbell]

Moses you don't have any automatic legal right to the .co.uk domain. I have a couple of UK registered trademarks, one of which I extended to cover the EU, US and Japan, and I had to buy the .co.uk domains having initially bought the .com.

You would have to prove bad faith to get the domain and unless the owner of the .co.uk has ads on the site linking to companies competing against you in your trademark category or competes against you directly in your trademark category, or can be proven to have registered the domain to extract money from you having known about your business or trademark which is very difficult to prove unless your business is well known, you won't get anywhere.

UK domain lawyers are expensive, by the time you've paid them to send a couple of letters to the current .co.uk registrant you might be better off paying up. Before I apply for trademarks I go after the domains I want because once speculators see a trademark being applied for dollars signs ring up in their eyes and you will pay through the nose.

 

[hey.co.uk]

The term in .UK is 'abusive use' , so if they are using the name to infringe your rights then you have a case. If not, then you dont.

If you want further advice feel free to drop me an email or pm.

Cheers,
Rob.

 

[Moses]

What they currently have there is:

Welcome to ..........co.uk

The .......co.uk portal is your gateway to sites for business, travel, shopping, and more! Browse our resources or just try the search!

bunch of links and also search.

also they have put the name on sale on sedo.

I am trying to contact them and if nothing comes out I ll start the dispute via nominet.

I am even willing to pay them few hundred euros(that name hardly receives any traffic, but is valuable to me)

 

[DNQuest.com]

I believe, that if you own the trademark in the UK (Does EyU cover the UK as well?) you are entitled to that domain.

No one is entitled to a domain. Someone may have greater rights to a domain which they will have to challenge through proper channels in order to obtain the domain.

 

[Domagon]

Your best bet is to use your TM as leverage to negotiate a reasonable price for the domain...

From my experience in similar situations, often several hundred dollars to a few $K tops is often all it takes to get such deals done when one has the UDRP paperwork, etc ready to go.

Ronald Regging is right on regardng pursuing legal rights (ie. UDRP, lawsuit, etc) can often be more costly (not just in money, but time and hassle), and likely even more so for a generic domain, than a simple purchase at the getgo.

With all that said, .co.uk TLD may have specific policies that are more favorable for TM holders than that of many gTLDs (.com, .net, .org, etc)... something to look into further.

Ron

 

[hey.co.uk]

UDRP is NOT for .uk names, the DRS is.

DRS costs £750+vat to complete , the inital mediation phase is free.

Bear in mind the rules are different from .com etc, so triple check any advice you get from domainers to ensure they have UK specific knowledge otherwise you may lose a DRS and then you would be in a position where the owner may not wish to sell, and if they do you might have added a zero or two to the price

Cheers,
Rob.