Finteza

Unusual Legal Issue

Labeled as question in Legal Discussion started by Jimty, Oct 3, 2018.

Replies:
10
Views:
427

  1. Jimty

    Jimty New Member

    Posts:
    1
    Likes Received:
    1
    Hi all,

    I'd like to hear your thoughts on an unusual (to me) legal issue. As this is a legal question, I guess it would help to say that I'm based in the UK.

    I bought a website and a domain name (let's just call it XYZ.co.uk) about a year ago. The domain name was registered over four years ago, and the site (called XYZ.co.uk) was created shortly after. I bought the domain name and the site in good faith in mid-2017, because it had received 50,000 visits in the 6 months before I bought it. I've been working hard since then to increase the traffic flow (which I've done successfully).

    A few weeks ago I received a cease and desist letter from an overseas business which owns a similar domain name (let's call it XYZ.com). I'd never heard of this company before, or of its website. It looks like this company started using the domain name XYZ.com in spring 2017. It has registered "XYZ" as a trademark in its home country and has applied to have it registered in a number of other countries around the world (including in the UK / Europe). I've been told to stop referring to "XYZ" on my site (and on any of the other sites I own I guess) because doing so infringes (or will infringe) this company's trademark.

    Although my website and their website are focused on the same industry (for argument's sake, let's say computers), our sites are quite different - i.e. mine is an educational site and theirs is a site for buyers and sellers, so we do not share the same client base. My website was started in 2014, three years before them. Although my website started life as a forum for buying and selling "computers", it switched focus to become an educational site (still about "computers") a year before I bought it and before the other site was created. So my site has always been related to "computers", it has existed since 2014 and now there is no overlap in terms of what the sites are meant to be used for (education vs buying and selling).

    I spoke to an English lawyer who is an expert in this area. I was told in no uncertain terms that they can legally prevent me from ever referring to my own domain name as soon as their European trademark applications are complete, because my domain name (XYZ.co.uk) will infringe their trademark (XYZ). So they can effectively shut down my domain name and website without having to go through an arbitration process, or show bad faith or lack of use on my part. To be clear here, the lawyer told me that they can stop me from even referencing XYz.co.uk on the XYZ.co.uk website (or I guess on any other website).

    I've been working in tech for over a decade and it's the first time I have ever heard of this. I'm familiar with the domain name arbitration service (Nominet here in the UK), but to succeed there you need to show bad faith. As mentioned, there's no bad faith here. I bought this site in good faith for legitimate business purposes. There is some overlap in terms of industry, but our sites / businesses are quite different, and mine was started way beforehand.

    If the legal advice is correct, what's the point of the arbitration process? Any person or business with a registered trademark and enough money could sidestep it completely - you'd simply threaten trademark infringement. If the owner of a domain name that is similar to your trademark is likely to lose in court (which seems to be the case unless they have a really popular / well known site) then they have two pretty bleak choices; stop using their domain name or try to fight it out with you in court and probably lose. You wouldn't need to show bad faith, lack of use or anything else, just that there is a likelihood of confusion due to similarity between their domain name and your trademark.

    To be clear, the lawyer's advice is that this other business would lose in a domain arbitration process, because I pre-date them, and there is zero bad faith. But, they can still stop me from referencing XYZ.co.uk on XYZ.co.uk - not just the saying 'XYZ' (which is their trademark), but actually referencing my own domain name. Which renders it completely useless to me.

    Is the lawyer's advice correct?
     
    The views expressed on this page by users and staff are their own, not those of NamePros.
  2. anantj

    anantj Active Member VIP

    Posts:
    4,056
    Likes Received:
    3,798
    Most users of this site are not lawyers and even if we answer, it holds no water. You should consider getting a 2nd opinion, from a lawyer who is more experienced in IP and TM law (Don't know if your first lawyer is).
    I'm not familiar with or practice law but prima-facie, you're opinion looks correct and that you might and should have a case to defend your domain name. But please do consult a lawyer and do not go by opinions on Namepros
     
  3. creataweb

    creataweb Top Member VIP ★★★★★★★★★★

    Posts:
    5,277
    Likes Received:
    6,027
    Doesn’t sound right to me.
     
  4. Jonathan MacDermid

    Jonathan MacDermid Socially Corporate Gold Account

    Posts:
    597
    Likes Received:
    414
    Make sure your lawyer is an expert in TM issues , if they are not, get one that is.

    If the European Trademarks are not completed yet, you should be able to protest against them being granted as you have existing use of the term prior to the other company. Although we know money talks so there is always a risk it will still be granted

    Finally - We leave the EU next year and this is a .co.uk domain we are talking about so very much focused on the UK market. Not sure if this will impact things but worth asking a professional about.
     
  5. carob

    carob Active Member VIP

    Posts:
    2,976
    Likes Received:
    3,526
    As
    Yes, when the trademark application is published it should have a period for people to file "opposition" or comments, which it would make sense for you to do if you are operating a business on the trademark term already. Also the trademark only applies to the classes of goods specified in the application, nothing stops you using the domain for another class of goods afaik. And the trademark is not retrospective - if approved it starts from the filing date.

    Possibly what the legal advice you got is more about what is called "passing off", which is where you benefit from using someone else's trademark term and afaik that can be a costly mistake but is not a domain issue.

    I agree you need a second opinion.

    Many people here report getting cease and desist letters that are just bluffs.
     
  6. carob

    carob Active Member VIP

    Posts:
    2,976
    Likes Received:
    3,526
    Also you can very cheaply and quickly apply for a UK trademark of your own using the term in question for a class of goods their application does not cover, such as education or courses.
     
  7. jberryhill

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

    Posts:
    1,848
    Likes Received:
    2,108
    Then you are unlikely to do any better here. I would assume that this expert lawyer, unlike anyone on this forum, was also privy to all of the relevant details, such as the mark in question, the domain name, the relevant timeline, and the specific goods/services offered by the parties at various points in time. Because if that lawyer had a richer factual tapestry on which to base an opinion, then I can hardly see why a forum that is primarily people with nothing to risk on giving you bad advice is going to be a good option for you to seek a second opinion.
     
  8. Jonathan MacDermid

    Jonathan MacDermid Socially Corporate Gold Account

    Posts:
    597
    Likes Received:
    414
    Good point but would you agree or disagree as someone who is legally qualified, that a second opinion can be useful (legal opinion that is, not just forum chat) as different lawyers can interpret or approach cases in different manners?
     
  9. wizard

    wizard Established Member

    Posts:
    443
    Likes Received:
    471
    Im sure you can defend this easy via DRS.

    Many of these cease and desist letters are just scare tactics
     
  10. xynames

    xynames XYNames.com PRO VIP

    Posts:
    2,257
    Likes Received:
    3,574
    A lot of lawyers understand the law, but few additionally understand business, and even fewer think outside the box.

    Without exact details would be a waste of time to analyze your situation further. And what lawyer is going to do that online, in detail, for free? You seem to be looking for someone who will tell you that you're wearing clothes, and whether or not you are wearing clothes would be in the exact details of this matter.

    If there is a quick and dirty solution to this, it might be for you to try to oppose their trademark registration. I have not put in the time and effort to determine from your post if this is the best advice or exactly what your grounds would be.
     
    Last edited: Oct 8, 2018
  11. jberryhill

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

    Posts:
    1,848
    Likes Received:
    2,108
    Absolutely. Although I love consultations in which the client keeps saying, "But so-and-so told me..."
     

Want to reply or ask your own question?

It only takes a minute to sign up – and it's free!

Share This Page

Lysted
  1. NamePros uses cookies and similar technologies. By using this site, you are agreeing to our privacy policy, terms, and use of cookies.
    Dismiss Notice
Loading...