Same domain different suffix advise

[phoenixfeatures]

Hi guys,

I'm hoping someone can help me with a legal query.

We are a womens features agency in the UK who have just purchased a key word loaded domain Sell your story to magazines and newspapers for cash | Phoenix Features

There are a large number of agencies using domains with the words "sell" & "story" in them here are a few example
s, there are a lot more out there.

sellmystory.co.uk - earn money selling your story.
Sell My Story with sellthatstory.com
Sell your story to newspapers and magazines with one of the UK’s leading agencies
Sell My Story
Sell My Story

Those are all different companies who have keyworded domains.

Now our problem is that we purchased the keyworded domain Sell your story to magazines and newspapers for cash | Phoenix Features, built the site, did the advertising etc.... Our companies name is Phoenix Features and we also use the domain Sell your story to magazines and newspapers for cash | Phoenix Features. We have now been approached by another agency using the domain Sell My Story to a Magazine or Newspaper. They're arguing that we cannot use this particular domain as it's the name of their company which they trade under. My argument is that the domain is a generic term that they do not have a right to claim it as their brand. We registered it in good faith and we are quite clearly not trying to pass off as them we simply wanted a a key worded domain to help with search ranking.

I have checked with the intellectual property office and this name is not a registered trademark.

I am looking for any advice on the matter. We are happy to put our hands up and change domains if we have made a mistake.

Thamks

---------- Post added at 08:58 AM ---------- Previous post was at 08:56 AM ----------

Sorry I have made a newbie mistake, all the domains i've mentioned have now been changed to titles. I'm not sure why this has happened. If you hover over the domains it will tell your the sites address

---------- Post added at 10:47 AM ---------- Previous post was at 08:58 AM ----------

Hi guys,

I'm hoping someone can help me with a legal query.

We are a womens features agency in the UK who have just purchased a key word loaded domain sellmystorynowdotcom
There are a large number of agencies using domains with the words "sell" & "story" in them here are a few example
s, there are a lot more out there.

sellmystory.co.uk
sellthatstory.com
sell-my-story.com
SellMyStory.org
Sell-My-Story.co.uk

Those are all different companies who have keyworded domains.

Now our problem is that we purchased the keyworded domain sellmystorynowdotcom built the site, did the advertising etc.... Our companies name is Phoenix Features and we also use the domain phoenixfeaturesdotcodotuk We have now been approached by another agency using the domain sellmystorynowdotcodotuk They're arguing that we cannot use this particular domain as it's the name of their company which they trade under. My argument is that the domain is a generic term that they do not have a right to claim it as their brand. We registered it in good faith and we are quite clearly not trying to pass off as them we simply wanted a a key worded domain to help with search ranking.

I have checked with the intellectual property office and this name is not a registered trademark.

I am looking for any advice on the matter. We are happy to put our hands up and change domains if we have made a mistake.

Thanks

 

[realtimeregister]

You see this happen alot (least i do).

You might want to check with a lawyer in the UK who knows how a judge will rule in cases like these. That is what you want to know. And i personally wouldn't react to them till you see more legal action coming from their side. And then you want to know what your chances are

 

[krx]

Looks like they reg'd their name a full 6 mos before you did. Unless you can demonstrate a business use of the name that precedes their use, they probably have first rights to it.

Just my opinion...

 

[enlytend]

(Disclaimer: 1) I'm not a lawyer 2) I know little to nothing about intellectual property law in the UK)

Registered 6 months before yours: Has their business just been using that name for 6 months or have they established its use for years offline and just started the site this year? That might make a difference, especially given the lack of formal tm and the suggestive/descriptive nature of the mark (I don't think it would be considered "generic")

My advice is what Realtime said: Your best bet is to find a lawyer in the UK and ask about this. Respond after you determine where you stand.

 

[phoenixfeatures]

Hi Guys,

Thanks for the advice.

We spoke to a domain Law expert who suggested the domain name is too generic and we shouldn't have much of a problem defending a case. However we have decided as a gesture of good will to change it.

Thanks