Domain Name Dispute

gman

gman

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Here's a good one I've come across if anyone can help (and be bothered to read it!). Things need to be kept anonymous at the moment though and I'll keep it as brief as possible:


Entity 1 and Entity 2 are about 400 miles apart.
One of the entities are film editors, the other is a photographer


Entity 1 bought .com and .tv domains in March 2010.
Entity 1 became a Ltd company in April 2010.
Entity 1 officially opened and became operational in October 2010.
Entity 1 has website with .tv but the .com is still at a holding page


Entity 2 is a private individual (not a sole trader or ltd business) who's original website has been around for many years
Entity 2 is planning to open a new business next year, plans began in July 2010
Entity 2 seeks finance for new premises in Aug 2010 and obtains finances in Sep 2010
Entity 2 bought .co.uk in Sep 2010 (same domain name as Entity 1's .tv and .com)
Entity 2 has a holding page with no similiarity to Entity 1's website


And you can guess it, Entity 1 is screaming through nominet that Entity 2 has registered the .co.uk deliberately to block and disrupt their business and is trying to pass themselves of as them etc etc and demand it be transferred.

Entity 1 is also going on about how important online presence is etc etc and they must have this .co.uk domain.


Any thoughts or on all this?
:)
 
if it was registered first i di#ont see that they have a leg to stand on, on if they could prove there was mallace then they may be able to do something

but that is unlikely

Cheers steve
 
enitity 2 could decide to change his domain and ask for a big fat wedge from enitity1 for his old one.
 
If it was so important to them then they should have spend the £12 and bought it when the bought the .com and .tv

I don't think they have a leg to stand on.
 
Entity 1 has a greater claim - Entity 2 should get an alternative domain or risk the claim.
However domain disputes are rarely straightforward and anything can happen.
 
Typical case of 'tough titty'

If they wanted to protect the name they should have registered all variations. If the two businesses don't operate within the same field I can't see how their claim will stand with regards to trying to passing off.
 
Thanks for the replies so far and kind of relieved because they've been exactly the responses that Entity 2 have given.


gramps said:
Entity 1 has a greater claim
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Why do you think so?
 
Entity 1 has no claim on the .co.uk whatsoever. However entity 2 would have been better advised to choose a business/domain name that was not being used on a .com
 
gman said:
Why do you think so?
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Prior registration of the 'name'.
Registered business (Ltd).
Active business.
Entity 2, "who's original website has been around for many years" obviously had a pre-existing domain and registered the disputed name after Entity 1 registered their business name.
 
Surely it was short sighted of entity 1 in not buying .CO or .UK in the first place, therefor entity 1 should have to proove that entity 2 bought .CO and .UK to use against them.
As Gramps says it could be a while before this is sorted. Or you could sell .CO and .UK to them for a decent profit before it gets too complicated.
 
Digitall said:
Surely it was short sighted of entity 1 in not buying .CO or .UK in the first place, therefor entity 1 should have to proove that entity 2 bought .CO and .UK to use against them.
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It's not necessary for Entity 1 to prove that Entity 2 intended to 'use it against them', only that it is damaging to Entity 1's business or in violation of their registered trademark.
 
If Entity 2 was to register as a Limited company then you could have a problem.

If Entity 2 isn't a Limited Company, and isn't using a trademarked name then I don't think there is anything Entity 1 can do.

If Entity 1 are that desperate for the domain, tell them to get their cheque book out!
 
It's silly things like this that start full on wars which end up damaging the reputations of both 'Entities', not to mention wasting valuable time and money

I suppose the key to Entity 2's decision is the relevance of the domain name and its significance to the businesses, it does seem to be a bit of a fine balancing act, here's MY take on it...

Entity 1 can't really complain cos they should have bought the .co.uk themselves, they sound a bit too big for their boots, like Microsoft wannabes! are they trying to pull the same trick on the .com domain too - I doubt it? Having said that, they do have a point (albeit a small one) and have obviously realised their earlier error, as the .co.uk would compliment their other domains nicely and help build their brand.

The ball sounds like its in Entity 2's court, and there seems to be 2 choices - they can either dig their heels in and start preparing for a fight or offer up a peace deal - e.g. let them have the co.uk if they pay for a new alternative domain plus any costs incurred in the process (business card printing, domain transfers etc) and maybe even recommend / use some of Entity 2's services.

Don't get me wrong, I'm usually all for a good old fight, but it seems there not an awful lot to be lost by Entity 2 giving in to Entity 1's demands (except for a bit of face), and a whole lot more to be lost if they don't.
 
Unless Entity 1 has trademarked their domain, and as long as Entity 2 isn't a Ltd. company, I don't think Entity 1 have a legal leg to stand on.
 
gramps said:
Prior registration of the 'name'.
Registered business (Ltd).
Active business.
Entity 2, "who's original website has been around for many years" obviously had a pre-existing domain and registered the disputed name after Entity 1 registered their business name.
Click to expand...

Nominet operate a first come first serve - it's in their own rules. Does being a brand new business give you more rights than a private individual?

I could understand if we are talking about something like British Telecom or similar where it's a major publically recognisable brand but this is just a startup company.

I do see where you are coming from though and I do agree that it's easier for Entity 2 to offer up the domain to Entity 1.

This has been done earlier and a reasonable fee is to be offered by Entity 1 first. Entity 2 aren't being greedy, just enough to cover redesign costs for logos and websites etc and also an apology for the multiple libellous accusations made.


I did want to see how others felt to make sure the right tracks were being taken. Appreciated :thumbs:
 
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NigelPaul said:
enitity 2 could decide to change his domain and ask for a big fat wedge from enitity1 for his old one.
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That is exactly the behaviour that will quickly lose you a Nominet dispute. It opens you up to claims of cybersquatting - technically an 'abusive registration' under section 3 a) of the Nominet policy.

Nominet said:
3. Evidence of Abusive Registration

a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A.for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
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the Nominet policy also states

Nominet said:
1. Definitions

Abusive Registration means a Domain Name which either:

i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or

ii. has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant's Rights;
Click to expand...

Even if the .co.uk domain in question were registered before the .tv and .com domains, it is no guarantee that the complaint will be dismissed. There is precedent with the decision on myspace.co.uk in 2008.

The dispute will likely rest on the likelihood of confusion between the two entities (if Entity 1 has an established trademark along with the formation of the company it will bolster their chances) and whether Entity 2 can successfully prove that its registration of the domain was not abusive (in terms of Nominet policy).

On balance, especially giving due consideration to the timing of events, I suspect Entity 2 may be in a weak position to defend its continued use of the domain.
 
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Paragraph 1 of the Nominet Policy provides that: "'Rights' includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business."

In practice these rights are often rights arising out of registered UK or Community trade marks.

However, the rights can also be rights in the tort of passing off. This is a complex subject, but most experts will be prepare to accept that a complainant has unregistered trade mark rights which could give rise to an action in passing off where the complainant can show substantial use of a mark or name as a trade mark in the UK. It is probably fair to say that the standard of proof required by Nominet experts of these unregistered rights is significantly lower than that required by the English courts in a passing off action - although in passing off cases the evidence is usually being used to prove a different point.

source
http://www.website-law.co.uk/resources/nominet.html
 
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Entity 1 hasn't a leg to stand on as I've been in the Entity 2 position and won. :D
 
Good point, although March 2010 through to October 2010 is quite a time to wait for Entity 1 to go after the .co.uk after all their claims of how important online presence is.

Should Entity 2 suffer because of Entity 1's incompetence? If Nominet are anything like the judicial system then probably lol
 
JasonRS said:
Paragraph 1 of the Nominet Policy provides that: "'Rights' includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business."

In practice these rights are often rights arising out of registered UK or Community trade marks.

However, the rights can also be rights in the tort of passing off. This is a complex subject, but most experts will be prepare to accept that a complainant has unregistered trade mark rights which could give rise to an action in passing off where the complainant can show substantial use of a mark or name as a trade mark in the UK. It is probably fair to say that the standard of proof required by Nominet experts of these unregistered rights is significantly lower than that required by the English courts in a passing off action - although in passing off cases the evidence is usually being used to prove a different point.

source
http://www.website-law.co.uk/resources/nominet.html
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Oh dear, just to chuck a spanner in the works, the entities are in different countries!!!! :lol::lol:
 
gman said:
Oh dear, just to chuck a spanner in the works, the entities are in different countries!!!! :lol::lol:
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By different countries, do you mean one in the UK and one in Europe, or both in the UK in different countries (ie Scotland and England?)?

If it is the former then it completely changes the ball game and should have been mentioned at the outset. If the latter, then it has no bearing apart from the slight complexity of jock law that won't really affect a Nominet decision.

As it stands at the moment, I'd say that under Nominet Regs E2 has the lead, provided they don't do something daft like offering the domain for sale, as mentioned above.
 
The latter. Will be interesting to see what happens but to be honest I feel Entity 1 will win and probably for zip.
 
Entity 1 hasn't got a leg to stand on.

The domain was registered by Entity 2 while there was presumably no .com and .tv

Personally I would put that case to Entity 1 and offer the sale of the .co.uk at a high price.
 
As has been said Nominet's rules are first come first served. But lawyers can make a case for anything.

If entity 1 has deep pockets they might win if they could get it to court.

I've been in entity 2's position as well, in my case entity 1 made a 'good will' offer and I accepted. They were threatening trademark infringement if I didn't, the cash was handy at the time.
 
I havent read through all the comments, but unless the company complaining has a registered trademark etc that you are infringing my view is there is very little they can do.

Anyone can register domains and the film company should of registered it if they wanted it. When your site is up and running you can put a very small notice that goes along the lines of this website has nothing to do with what ever the domain.com but you dont have to.
 
Cheers for all the replies, bit of a mixed bag but appreciated. Waiting game now :)
 
entity 1 should have bought the co.uk if they wanted it. if entity 2 is using it for proper business, its not a problem for anyone except entity 1!
 
I would have thought that for E1 to claim cybersquatting they would have to prove that E2 had no intention of using it for their own business and were only holding onto it to make money. If E2 has a holding page and can prove that they intend to use the domain and it is relevant to their company then they should be allowed to keep it.

I agree that for the extremely high cost of about £10 E1 should have purchased the .co.uk domain there and then. They may have even got a discount for a bulk buy!
 
Given that 2 registered the .co.uk in Sep and 1 didn't go live until Oct, I don't see how anyone could accuse 2 of cyber squatting.

Someone at 1 needs their ar5e kicking for not registering .co.uk at the outset.
 
Resolved. :D
 
Stood my ground, went to mediation and they eventually coughed up. Wasn't out to make [huge] profit as it was a genuine case. Found a new name which I prefer now anyway so it's all good! :)
 
gman said:
Stood my ground, went to mediation and they eventually coughed up. Wasn't out to make [huge] profit as it was a genuine case. Found a new name which I prefer now anyway so it's all good! :)
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Not Entity 2 is it :lol: ?
 
lol, sounds horrible that does! haha
 
matty said:
entity 1 should have bought the co.uk if they wanted it. if entity 2 is using it for proper business, its not a problem for anyone except entity 1!
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:plusone: I can't see Entity 2 getting anywhere with this especially if they are outside the uk, after all .CO.UK are intended for uk companies I would assume.
 
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