Re: OT: Domain Names LEGAL Stuff

["mark_harrison_uk1" <Mark.Harrison@xxxxxxx>]

Bear in mind that I am NOT a lawyer, and that I am not qualified to
give legal advice. However, I am a senior manager with overall
responsibility for Domain Name registrations for a FTSE 100 company
with significant web presences Europe-wide. The following, however,
is my personal opinion, not that of my employer.

Firstly, don't get hung up on the fact they use solicitors to do
this - several solicitors these days have Intellectual Property
practices that include Domain Name protection along with Trademark
protection et al. The company may simply (as we do) simply have an
outsourcing contract with this firm to do this - the fact they are
solicitors is neither here nor there - the fact they are IP
Consultants is...

Personally, I think that =A3100 + transfer costs is fair, and my advice would be to take it. If the company is a large, household name, then
they might go to =A3500 + transfer costs, but are very unlikely to go
any higher.

I feel that, actually, the company has acted reasonably in making you
the initial offer. The fact that they have threated legal action has
happened only AFTER you have refused to consider this. However, the
fact that they have increased their offer suggests that they don't
want to make a big deal out of this (but do wish to protect their IP.)

As I see it as a laymam, there are a number of issues here. The key
issue is that the UK legal system now very much frowns upon
Cybersquatting - the deliberate registration of someone elses trading
name with no intent to do anything other than sell on the domain name.

However, work through the following:

1: When did you register the domain names? If you did so BEFORE they
launched their business, then you could claim that your intention was
to launch a service using that name. However, if you did so AFTER
they launced their business, then they could (potentially
succesfully - this has happened) argue that you only registered the
name as a cybersquat.

2: If you have launched any service on the names that might cause
confusion, then they would have a case under UK law to proceed
against you for "passing off". If, however, there is nothing but = a
holding page, then you are unlikely to be deemed to have any
liability in respect of passing off.

3: The fact that the names are .coms rather than .co.uks raises the
question of whether the UK courts would have any jurisdiction. You
could argue that .com is, according the the standard, intended for
use by US Companies, and that the ONLY basis for challenging a
registration is that a company has registered a FEDERAL (not State)
trademark as the contested name, and that US courts would have
jurisdiction.

4: What do you intend doing with the domains? If you haven't used
them for the last 18 months, and demonstrably had no intention of
doing so AND refused a good faith offer, then there IS a chance that
the courts could find in their favour, and you'd be stuffed. The fact
you posted HERE that you'd never used the domains, and "not bothered <= BR> about the names" might be used in evidence to demonstrate that you had NOT registered them to set up your own service with that name.

5: Do THEY have the name registered as a UK trademark? If not, then I
don't think they have a leg to stand on unless you're passing off
(see above.)

Regards,

Mark


--- In ukha_d@y..., "Alex Monaghan" <alex@m...> wrote:
> I would guess that if you've paid your NIC fees and there's no
trademark
> infringement, the you can do what you like with your domains.
>
> If the only justification for legal action is that you've not used them
> AND... you do really want the domains, then get a cheapo hosting
account and
> attach the names to it, put up a simple index.html and their
argument is
> blown out of the water :-) If you don't have one in mind, look back through
> the archives for a post from Chris Bond with a subject of "web hosting
> special offer" (or something similar), I transferred my domain on=
this offer
> with no problems.
>
> > -----Original Message-----
> > From: Martin [mailto:ukha@o...]
> > Sent: 08 August 2002 17:24
> > To: ukha_d@xxxxxxx > > Subject: RE: [ukha_d] OT: Domain Names LEGAL Stuff
> >
> >
> > Hi all
> >
> > I'm hoping someone can help me out here, I have registered some <= BR> domain
> > names (about 18 months ago, and they are as yet unused). They are=
dot
> > com's.
> > A company has approached me who own the dot co.uk with the same <= BR> name.
> > They initially offered a small sum (=A350 + transfers costs) via =
their
> > solicitor, I said not interested. Now they are saying that I have=
not
> > used the name and have no right too use it and their final offer =
is =A3100
> > + transfer or they will take legal action !!!
> >
> > Heeelllp, should I say stick up your ..... or would it mean a legal
> > challenge costing me loads which I may or may not win.
> > At the end of the day I'm not that bothered about the name, is it=
best
> > to take what they've offered and just leave it at that ?
> >
> > Or perhaps I'll transfer the name for someone else to use..... > >
> > Cheers
> > Martin.
> >
> >
> > For more information: = http://www.automatedhome.co.uk
> > Post message: ukha_d@xxxxxxx > > Subscribe:  ukha_d-subscribe@xxxxxxx > > Unsubscribe:  ukha_d-unsubscribe@xxxxxxx > > List owner:  ukha_d-owner@xxxxxxx > >
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