Trading names advice please...

[murphyweb]

Okay,

Company A buys company B and renames it AB.
on the day of the announcment some quick thinking chappy registers the domain name www.ab.co.uk.

There is no trade mark for AB and AB is not even a limited company,
AB is actually just a trading name of A plc. Now this chappy would like to launch a site with this domain name and use it a consultancy type of site,
the thing is though, this chappys expertise just happens to be in the same field of busines as AB.

Could this chappy actually launch a website offering services that relate to AB?

Could this Chappy launch a webiste offering services or selling products that have no relation to AB at all?

If someone tells me no, not at all as someone is already trading with that name, could i go and trademark it then?

If anyone can help, would be much appreciated.

Thanks

 

[epiphany]

Chappy can do whatever he likes with ab.co.uk. It's only been in very rare and specific occasions that the real ab have managed to win the rights to ab.co.uk off of another company.

 

[fastfences]

Found a similar situation myself. I think some wise guy in Companies House quickly registers domains in just formed companies names.
May be a quick transfer quid for someone, somewhere!
Cheers, Nigel

 

[Rob Holmes]

Hi Murphyweb,

Actually I have a different slant from the others..

If you can prove it is a malicious registration and Nominet (the .co.uk domain registrars) agree with you then they will transfer the domain to you.

Unfortunately it's not cheap.

Have a read of their Dispute Resolution Scheme for fees, timescales etc.

http://www.nic.uk/DisputeResolution/AboutTheDrs/

I hope this helps,

Rob

 

[DuaneJackson]

I'm guessing that murphyweb is actually the cheeky chappy, not A Plc

 

[Rob Holmes]

Yes - I re-read it and it reads like that - advice is still the same but maybe slightly more un-sympathetic

Rob

 

[APRogers]

Unfortunately, it's slightly less fair than that - it works on deepest pocket principal, as in most things

There is an urban myth about a UK glazier who registered the domain windows2000.com late in the last century. It doesn't take Einstein to work out who came after him. :twisted:

The story goes that the domain was upheld to have been registered in good faith, not maliciously, and he was allowed to keep it. I have not seen any evidence and guess who owns it now. :shock:

There are regular stories on The Register such as Ronaldinho, the footballer, or iTunes, or Air France.

You will see that there isn't really any rhyme, reason or precedent to these decisions. You pays your money and you takes your chance! :?

 

[SuffolkDesigns]

I like the system here for registering .ee domain names.

Only corperations can register them and only one per corp except in exceptional circumstances. (if your company was the sole importer of a large brand like coke cola, you would be allowed yourcompany.ee and cokecola.ee)

 

[APRogers]

... and what stops said large brand snapping up these domains and stopping the little guy using it? That's what usually happens - it's a question of budget - I have to and they don't! :cry:

 

[SuffolkDesigns]

... and what stops said large brand snapping up these domains and stopping the little guy using it? That's what usually happens - it's a question of budget - I have to and they don't! :cry:

If this was a question about my last post, I should also have added that only Estonian companies (not any corporation) can register .ee domains.

 

[APRogers]

Arguing purely for the sake of it, I'd be very surprised if said large brand wasn't already a legal entity in Estonia, which would close that little loophole quite tightly.

Also, the issue tends to be over more marketable TLDs (Top Level Domains) such as com, net, etc. No offense intended but Estonian domain names aren't terribly useful to UK businesses :?

 

[SuffolkDesigns]

No Offense taken, just pointing out that it is a good system. It is a shame it is not the same for .co.uk

At least then anyone buying goods or services would know they are buying from a registered business, simply because they would need to be registered to get a .co.uk

 

[APRogers]

Good point, well made. Unfortunately, having dealt with Nominet in past careers, I would suggest that they're only in it for the money, not any moral championship :shock:

 

[VeryMark]

If I understand the question correctly, the example is Smith Group plc buys Jones Ltd and renames it Smith Jones Ltd.

Cheeky Chappy sees an opportunity, registers smithjones.co.uk, considers launching a website www.smithjones.co.uk, and wonders whether he can also register the trade mark SMITH JONES.

Even though SMITH JONES is not a registered trade mark and has never been used before the takeover of Jones Ltd by Smith Group plc, it is still more than likely to be adjudged confusingly similar to both the trade mark SMITH of Smith Group plc and the trade mark JONES of Jones Ltd (now Smith Jones Ltd).

Cheeky Chappy would then face the following actions from both Smith Group plc and its new subsidiary Smith Jones Ltd which would be more than likely if not certain to succeed:

1. A successful complaint to Nominet for the transfer or cancellation of the domain name.

2. A passing off action in the High Court seeking a court order (a) for transfer of the domain name, (b) to stop any use of the name Smith Jones in any form and (c) an award of costs and damages.

3. Assuming either or both SMITH and JONES to be registered trade marks, a trade mark infringement action in the High Court also seeking (a), (b) and (c) above.

A trade mark application by Cheey Chappy to register SMITH JONES would almost certainly fail for similar reasons.

All of of this has been tried in the past and generally failed - even more so now that the present domain name complaint procedures are in place through Nominet and ICANN and other authorities via WIPO and since the One In A Million decision in the Appeal Court.

If there are any other hypothetical questions of this kind, I would be happy to advise in more detail at our usual professional rate of £180 per hour.

I have also personally dealt with a 'cheeky chappy' in the past who failed in attempting to steal the name 'BMW Rover Group'.

 

[fastfences]

Excellent 'free' response Philip!

If there are any other hypothetical questions of this kind, I would be happy to advise in more detail at our usual professional rate of £180 per hour.

Actually, we may be able to do a mutual deal. I have a fencing 'offer' coming up, where I charge only £150.00 per hour!

(All due respect to your years at Uni. and copious amounts of keeping abreast of legislaton)

Kind regards Nigel

 

[VeryMark]

Nigel,

The hourly rate also takes into account the copious free advice and information we provide because we believe that people should have enough information to make an informed decision in a complex but important area.

It is obvious that there is a plenty of misunderstanding and a lack of knowledge that can be dangerous and expensive - ask Naomi on one of the other forums who is having to change her business name because she didn't check out the trade mark position first.

Oh, and our competitors generally charge rather more!

 

[Enigma121]

Just a point to make in relation to ee domains. If companies had to be called WHATEVER.co.uk to get that domain, we in the UK would be at a severe disadvantage within the search engine listings.

This prevents setting up sites to capture particular markets like "www.wacky-web-designers.co.uk" or for specific products "www.mywidget.co.uk".

Personally I like things the way they are, encourages the small guy to get into the competition.