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Disputing a domain without a trademark.

Located in Legal Discussion, started by adamdannut, Sep 8, 2016

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  1. adamdannut

    adamdannut New Member

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    Hi guys,

    I'm trying to acquire a .co.uk domain for a client, but his business name isn't trademarked.

    My client owns the .com domain, and has done so for a number of years. However, a couple of years back he lost his .co.uk domain to a rival company. Now his rival has a redirect set up at my client's business name .co.uk.

    I'm confident that we could dispute the domain if my client owned the trademark. However, there is no such trademark, and this rival company is now getting traffic via my client's business name.

    Would a domain dispute be unsuccessful without a trademark, even if it can be proved that this rival is using my client's trading name to gain traffic and potentially clients?


    Let me know if this makes sense or if you need more information.

    Cheers.
     
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  2. Kate

    Kate Domainosaurus Rex VIP ★★★★★★★★★★

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    Short answer: no you don't need a registered TM.
    Since it is a .co.uk it falls within the scope of DRS, not UDRP. I would suggest that you read up DRS cases to get acquainted with the procedure.

    There is also a possibility that the panel will refuse to hand out a ruling. It sometimes happens in disputes between former business partners where it's hard to tell wrong from right.
    But maybe you should first seek advice from a qualified attorney. Impossible to comment further without knowing the actual domain, how it's been used and the circumstances.
    Disclaimer: this is not legal advice.
     
  3. deez007

    deez007 The More I Learn The Less I "Know" VIP

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    Is the competitor also based in the U.K?
     
  4. adamdannut

    adamdannut New Member

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    They are, yes.
     
  5. adamdannut

    adamdannut New Member

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    Thanks for the response. I'll take a look at some DRS cases now.
     
  6. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    Do I understand that you do not have the least idea of what might be required to demonstrate a common law trademark, and don't have any general knowledge of how that issue is treated in domain disputes, but you are going to look at some cases, and then go back to your client and provide them legal advice?

    Really?
     
  7. adamdannut

    adamdannut New Member

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    Thanks for your excellent response.

    If you read through the thread, paying close attention to the questions that I originally posted, you may notice that I am here to find out more about the process and legal implications, and get general advice from fantastic experts such as yourself.

    And yes, "really", the idea was I'd find out everything I need to know from a quick Google search, and then get back to my client with any legal advice he might need. I'm actually also representing him in court next week for a laugh too.
     
  8. Kate

    Kate Domainosaurus Rex VIP ★★★★★★★★★★

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    He's a lawyer. I advise you to listen to him ;)
     

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