Legal advice on domain name

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A

Andrew2010

  • #1
    Hi.

    I have a business idea in mind. My domain name will be a excellent one. Included in my domain name would be the name of another business (well established company). Will this be illegal?

    Please advice.

    Eg. www.abcdefghiyahoojklmnopq.com

    This is not it but as you can see, yahoo is included in the domain.
     
    C

    crus

  • #2
    Ok,

    having good experience (several C&D's as well as HC filed) in this area I might be able to help.

    If you have a companies trademark (http://www.patent.gov.uk/tm/dbase/index.htm) then you may run into a cease and desist letter. Otherwise you may receive one, but you are much less likely to.

    Now, assuming it is a trademark, then it comes down to a case of how you are using it, I'm assuming that you are looking to offer a service, relating to, but not actually in opposition to the company involved. If this is the case then you will probably be OK, as this is going to be in good faith unless you are trying to do untangeable damage to the company.

    eg. I owned a number of domains containing a large mobile pohone companies name, my usage was to supply a service to the owners of their handsets, in this case wallpapers. Although I was contacted and ordered to hand over the names, this was not the result as I argues the fact that the usage was complimentary, adding value to their brand and in addition the company name was generic as it was being used extensively in the marketplace by others.

    My best advice is this, don't seek trouble, but if you feel you can do something beneficial without benefitting from the company in questions loss then explore the possibilities.

    D

    ps PM me if you want to discuss further, ie with the name.
     
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    A

    Andrew2010

  • #3
    dont wanna say the name as its in the early stages and dont wanna give the idea away, also please read in general business ' pool and snooker website.' Would appreciate your advice in that forum also.
     
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    A

    Astaroth

    Free Member
    Aug 24, 2005
    3,985
    278
    London
  • #4
    I also had a somewhat similar experience with trademarks. I was intending to create a website for a hobby of a certain game and being aware that the name of the hobby was trademarked I sort consent from the owners of the trademark to use it within the domain name (which they consented to on the condition it was a not for profit site)

    Two months after creating the domain I was contacted by a second company (or their solicitors more accurately) saying I was in breach of their trademark. I contacted them saying that I had been given legitimate use of company 1's trademark.... at which point they sighed and said they had court dates pending to resolve the legal dispute over trademarks with company 1.

    The outcome of my dispute with them was the domain names were bought off of me by company 2 (for a healthy profit) but I certainly wouldnt recommend it as a way forward.
     
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    V

    VeryMark

  • #6
    Using another company's trade mark without their consent can lead to trouble if it is for the same products (but not theirs) or can be argued to be likely to cause confusion or trade off their goodwill or be detrimental.

    Since trade mark registration provides a monoply over everything else, you can sue or be sued for infringement instead of or as well as going through the Nominet or ICANN/WIPO (as the case may be) dispute resolution procedure - the latter is cheaper than going through court proceedings but has an additional bad faith requirement.

    Neither innocence or good faith is a defence to trade mark infringement, and there is no need to show that confusion is likely if what you are using is identical to what somebody else has registered - which can be wider than what they are using.

    For example, Cadbury's has registered both the word FLAKE and the colour purple on their own.

    It is of course impossible to advise properly without knowing the facts and who the other company is - some brand owners are very aggressive and can cause you a lot of trouble regardless of the merits of the case.

    In the last two years we've successfully defended clients against EasyJet, Mattel, Mercedes and Mars without it costing a fortune - although not getting into trouble in the first place is obviously the least expensive option.
     
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    C

    confused

  • #7
    Just out of interest, what would happen if your name happened to be "flake" and you wanted to open a company selling chocolate crumbs?
    I believe mercedes is named after his daughter, what if someone else had a daughter named mercedes and wanted to open a car company?
    I'm just curious, I appreciate the need for such to stop people cashing in on other peoples hard work.
     
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    V

    VeryMark

  • #9
    It doesn't matter who your relatives are or what your personal name or surname is - nobody else called Macdonald can open a restaurant under their name and no-one else called Ford can use his name to sell cars without infringing.

    Incidentally, Mercedes was the daughter of the company's biggest customer, Volvo means 'I roll' in Latin, Audi is the Latin translation of the founder's name (Horch), MG stands for 'Morris Garages', Rover were famous for bicycles first, BMW made aero engines (the logo is a propeller) and then went into cars whilst Rolls-Royce made cars and then went into aero engines, Mitsubishi means 'three diamond shape', FIAT and SEAT are both acronyms meaning (roughly) the Turin Auto Works and the Toledo Auto Works .... and I am exactly the same age as Land Rover.
     
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    C

    confused

  • #10
    Thanks for the info, though it does seem wrong in some cases - for example the colour orange, like anything I suppose, there will always be someone wants to take things too far.
    Thanks for the history in cars, I knew most of it anyway, got a bit mixed up on mercedes, heres another one for your collection, regarding trucks this time ERF:Edwin Richard Foden (AKA "English Roadgoing F*** up" in the trade - I used to be an HGV fitter a LONG time ago)
     
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    U

    uksbc

  • #11
    Stelios is taking legal action against anyone who uses the word 'easy' in their business name
    Click to expand...

    he will also sue if you use easyjet, easycarhire, easymoney etc etc in your metatags!

    as for using someone elses name within a domain, i would seek advice but my experience was as follows

    i used to own usedportacabins (as a prospective purchase)

    i was sued for infringment of a trademark, despite my spelling being different from the actual brand (the site also never ever had any content

    i was ordered to "hand over" ownership at my expense or be seen in court

    i was in two minds to fight it, and if i could afford to lose (at the time i couldnt) i would have

    based on this i would stay away from any domain that includes someone elses brand or trademark just incase. it could prove costly to change your whole operation at some point in the future for the sake of choosing you name with more care now!! remember, on this forum we are all small businesses and it takes big balls and deep pockets to fight a National or International Company in court (pardon my french)

    hope this helps :D
     
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    V

    VeryMark

  • #12
    Stelios may be associated with the colour orange, but that doesn't give him the right to go into a completely different business area, i.e. mobile phones.

    He has also lost several cases against other 'Easy' businesses for similar reasons - Stelios is a good marketing man but a bad lawyer.

    Still, Orange haven't had it all their own way - not a brilliant slogan to use in Northern Ireland.
     
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    C

    confused

  • #13
    and it takes big balls and deep pockets to fight a National or International Company in court (pardon my french)
    Click to expand...
    I think thats a big part of the reason things are the way they are, companies with plenty of money can bascally use "scare tactics" i.e. threaten to take a small company/sole trader to court knowing full well the smaller simply couldnt do it.

    Still, Orange haven't had it all their own way - not a brilliant slogan to use in Northern Ireland
    Click to expand...
    Definately not !
     
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    C

    crus

  • #15
    Bang on confused,

    I had to agree terms out of HC as the 40K liquid assets to defend got rediculous, big boy tactic. But the agreement was amicable.

    >>> i was sued for infringment of a trademark, despite my spelling being different from the actual brand (the site also never ever had any content

    i was ordered to "hand over" ownership at my expense or be seen in court <<<

    is a classic example, the cease and dessist is a letter to do with trademark infringement, but if you had just registered the name you were not infringing, not domain Ownership. It is often used by laywers who know NOTHING about domain ownership law.

    Google phonesforyou.co.uk, a case that found in favour of the domain owner.

    'PortaCabin', does not seem to appear to be a UK trademark (only spent 1 min looking), so in this case you could have at least rebuked the C&D and then offered to resolve the issue for a sum of cash. You had done nothing wrong. Beyond this, as you had not actually infringed any trademark just by registering the domain, then the pursuant would only have been able to consider pursuing you in relation to a similar tardemark which would be difficult to prove as you had done nothing with the name, or pursue via WIPO who would charge them several thousand dollars just to have the case heard, they probably would not win. The least they could of done is pay the out of hand costs.

    I know everyone wants an easy life, but if someone came up and told you to stop breathing and hand over your lungs, would you protest?

    In the UK there is really only 2 domain companies I would use in respect of domains, as apart from the guys and gals at Nominet the knowlege just isn't out there.

    The companies who have been pursuant of me have demonstarted their lack of knowlege and I have had these two companies recommended to me by one of the largest, if not the largest private domain owner on the planet. Im sure there are more people/firms developing the skills out there, but my position is based on the experience of seeing large companies try and hand work up to the guys I have on retainers.

    Huge volumes of knowledge regarding domain law are on the web, most firms still quote the BT case as precident, but apply your specific case against WIPO judgements and trademark searchs and you will quickly spot those just trying it on.

    D
     
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    V

    VeryMark

  • #17
    Registering a domain name which includes or imitates someone else's trade mark and offering to sell it for a sum of cash is exactly what is liable to get you into trouble.

    That is precisely what the defendant in the One In A Million case did which caused the judge to grant summary judgement for trade mark infringement and passing off.

    To quote from the appeal decision in that case:

    "Mr Wilson submitted that mere registration did not amount to passing-off. Further, Marks & Spencer Plc had not established any damage or likelihood of damage. I cannot accept those submissions. The placing on a register of a distinctive name such as marksandspencer makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of One In A Million Limited and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered. Further, registration of the domain name including the words Marks & Spencer is an erosion of the exclusive goodwill in the name which damages or is likely to damage Marks & Spencer Plc."

    The fact that the spelling may be different and that you have no website content linked to the name is immaterial.

    There is also no such thing as 'domain ownership law' as such.

    All court cases are decided under statutory trade mark law, the common law of passing off, and/or on the question of whether the domain name is an instrument of fraud.

    All Nominet and ICANN cases are decided under their administrative dispute resolution procedures which the parties agree to contractually. Decisions of Nominet or WIPO on behalf of ICANN are not decisions in a court of law and do not prevent either party having recourse to the courts.

    Portakabin is a well known registered trade and use of 'Portacabin' in relation to other goods or services would certainly infringe.

    However, it is of course legitimate to use the description 'Used Portakabin' to describe a second-hand genuine Portakabin product. The problem arises if 'Used Portakabin' or the like is registered as a company name or domain name when it can cease to be simply an ordinary description and take on the mantle of being the identity of a business.

    Notwithstanding this, each case naturally has to be decided on its own merits.
     
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    C

    crus

  • #26
    Thanks Handson.

    Have payed 4 figures an hour before, but after last two years of solid domain work I am really keen to get into it as I have amassed, what I feel is a substantial knowledge and there is a wide hole in the market place.

    After a year or two I guess the trainging would begin to pay off in saving me money etc.

    D
     
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    V

    VeryMark

  • #27
    Generally speaking, you need a degree plus about 2/3 years in employed training to obtain a professional qualification, say about 5/6 years minimum.

    That's one of the reasons that our hourly charging rates are not low, the others are that we spend a lot of time giving free advice to people to help them understand what they need to do and it's specialist service which isn't just available anywhere.

    And the 'One In A Million' case is still good law. I'm aware of the Phones 4u case <Phones 4u Ltd. and Another v. Phone4u.co.uk Internet Ltd. and Others [2005] EWHC 334 (Ch)>, but that was simply distinguished from 'One In A Million' on the facts.

    There are two important points arising from the 'Phones 4u' case, however, namely, that (a) they might well have won had they obtained trade mark registration and not simply relied on their common law user rights to sue for passing off, and (b) their case was also undermined by delaying four years before suing, i.e. waiting too long weakens your case.
     
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    seabro

    seabro

    Free Member
    Dec 17, 2005
    236
    3
    Cardiff
  • #28
    OK, I hope you don't think any less of me for domain squatting when I was a mere youth... but I had:

    arcserve.co.uk
    I registered this domain and soon after I offered to rent it to a large software vendor computer associates came down on me. I ended up transfering it to them after they paid my reasonable costs of about £300 (quite unreasonable actually!)
    It looks like it is available again if anyone wants to risk it!

    transavia.co.uk
    I registered this one and the dutch airline contacted me. I got £300 off them for transferring it to them.

    Another one I registred a .co.uk version of a company I worked for who used the .com version. I was receiving tons of their email where people where mis-addressing. After a while my old boss contacted me and said whats going on.. I felt terribly guilty because I really liked him but I said I would take a grand for it and eventually a cheque arrived.

    I am not proud of what I did and I wouldn't dream of considering such dishonest antics these days!
     
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