Hi guys i was hoping somebody can help me understand a rather very important situation i have helped my self land in. I thought it would be wise to ask the same level headed community here like myself for a second opinion. If you cant read it all then please scroll down and read from the red dotted lines and onwards. A night out at any London restaurant of your choice is up for grabs. Many Thanks So I've have had a domain for over 6 months now, a major cable television satellite company in the UK is after it. It is a .co.uk domain which is registered with Nominet. The domain is the name of a new venture the TV company has started on their network. So it is not the Television company's official name but rather the name of a small branch they have started. As we know Television companies have so many shows, so many new things and so many ideas. They cant possibly cover every domain for everything they start. However this new thing they've started is only online and stupid as they are they didnt register the domain which i gladly did on their behalf. The company sends in a red herring, trying to obtain the domain from me for a few hundred pounds which i rejected. I wasnt interested in the amount but rather how many figures they were talking about. Before i even composed a reply to them, i did some research into who this person was. Lo and behold she was from the TV company. Little did she know i knew almost everything about her, to the point what her baby even looks like. So i replied to their email rejecting their offer of £500. She continued to play this story that the domain was for her college kids who were doing media. To cut a long story short, i told her that buying a domain for a few hundred pounds for a college project is ludicrous and can be better spent on the kids. She told me they had a grant, (which was suppose to explain things?) I still told her it was ludicrous and her grant application for a petty little domain will get rejected. She then told me they had some form of european grant? lol - This was coming from an Oxford Graduate. (Looks like Oxford's not what it use to be!? eh?) Her email was very disheveled, maybe it was on purpose to get me off track!? She was still very persistent to know how much the domain was worth even after rejecting her offer. The domain clearly states that i do not intend to sell it, but rather lease it. So i gave in and told her that i would only be interested in leasing the domain for a few thousand per month. After she got that response she just disappeared and didnt want to know me anymore. ------------------------------ So i received an official email this week from the Television company offering me just a few k's (as i described it to her last week) to buy the domain outright from me - outright? I said a few k's will only buy the lease of the domain not buy. They tell me its not negotiable. They also want to hear from me soon to confirm their position on the use of the companies Television intellectual property on my site? So I looked the name up on the uk intellectual property website and found that it is not registered nor is it owned by anybody. It's available for anybody to register. So if i register the name surely it becomes my intellectual property right? I never had the intention to sell the domain but rather lease it, however i also had plans to use it myself seeing the incredible hits ive been getting and the email subscribers. Now ive been doing a lot of reading up and it seems like i am in the right. 1. I registered the domain first, 2. The domain is not a trademark, 3. The domain is available for me to register as a trademark, allowing me the the IP. 4. They tried to obtain the domain by deception first, which throws my trust with them out of the window and bargaining will become a lot harder for them, 5. The domain is generic (almost) by a letter, the domain can also be a typo by a single letter too. Without much criticism guys i would really appreciate your advice and expertise on the matter and on IP and if what i am asking for is about right. Can they take the domain off me via nominet? What argument do i have other than owning the domain first? If i can regsiter the trademark on time then i suppose this will help? Also what about the company trying to obtain the domain via deception from me earlier on? - I can use this as an argument? What else can i argue? A friend who studied internet law partially said. "You cant just register a trademark you have to show that you have a claim to it." Like wise the TV company will have to do the same? She pointed me to this link: http://www.ipo.gov.uk/t-essentialreading.pdf could that be a reason as to why the name is still not a registered trademark? The domain is almost generic except for the fact it has 1 letter missing. Ive seen domains go for a lot more on SEDO. Surely for a major UK Television company leasing it for a k or two per month is nothing? What else can i argue in my favor? They desperately want it, theyve done a lot of advertising, branding and publicity for it in the last 10 months. Not on the domain but on the name. Shocking isnt it that they didnt even think to register the domain. If this really does pay off guys id be sure to take you out one evening at a restaurant of your choice in London! Many thanks in advance and i look forward to your replies.
Do nothing, it's a scam. Don't waste your money on trademarks and lawyers. Just ignore them, they have no right to take your domain name out of you.
I have many years of experience in dealing with trademarks in the US and am not familiar with the UK but it would appear that the IP laws are somewhat similar. The first and most critical question: Did you register the domain before or after this shows intent was made public? If it was before, then your registration was not bad faith. If you heard about the show (or it you could have heard about it) then you are at a disadvantage. You said you registered it 6 months or so ago and they have been advertising it for 10 months. They are going to claim a bad faith registration. "1. I registered the domain first" A couple of points - registering the domain "first" is only important for determining "bad faith" - the registration of the domain gives you absolutely no trademark/intellectual property rights. Only usage in commerce can establish IP rights. If you have have just been sitting on the domain, you have no trademark rights whatsoever. It's also too late to run out and try to register or establish a similar usage. "2. The domain is not a trademark" That could not be the case. What you mean is that the station does not have a "registered trademark" - both the US and the UK have common law trademarks for which no filing or registration is required. You only have to be the first person to use the mark in commerce to establish rights for a particular usage (trademarks are granted by class, you can have many different owners of the same mark, each having different usage rights i.e. there are several owners of a trademark on "MySpace" or "Apple". "3. The domain is available for me to register as a trademark, allowing me the the IP." This is completely wrong, as I have already explained. The fact that is was available to register means nothing. "4. They tried to obtain the domain by deception first, which throws my trust with them out of the window and bargaining will become a lot harder for them" I am not aware of any law or legal advantage this gives you. It's pretty common for companies not to disclose who they are to keep someone from jacking up the price because they have money. "5. The domain is generic (almost) by a letter, the domain can also be a typo by a single letter too." I don't see any relevance to this point. Plenty of famous marks can be generic words (Apple) it's the usage that cannot be generic in nature. Having this mark for a TV show is likely a unique usage that could acquire trademark rights - but only knowing the exact name and having a search done could determine this. This is something an experience IP attorney should be doing. From what you have described, the television company has first usage of the name for a TV show. This prevents you from profiting off of the domain by piggybacking on their success. That doesn't mean they can automatically take your domain (that would require a bad faith registration or usage that infringes upon the rights) but it means you would have to sit on the domain or use it for something entirely different. Also be warned that even contextual advertising (adsense) that you run on the site which shows ads for their show can be used to take the domain (i.e. you're profiting off of their goodwill). If you owned "Apple.com" you could use the domain to sell fruit, but couldn't use it for anything related to Apple Corps business of computers, music, etc. This likely limits the value of the domain to anyone else. I've dealt with a few major corporations and have been in several very expensive domain disputes. I would guess that the chances they would "lease" the domain from you are about zero. If they can buy the domain outright, they will either take you to court or go with another domain. You need to seek advice from an intellectual property rights attorney immediately. You have potential exposure in a lawsuit - and if nothing else, paying their legal fees can easily run into hundreds of thousands of dollars. Don't assume that because they have offered you money for the domain they are in a weak position. It's a lot cheaper and faster just to buy it from you even if there is a 99% chance they can win in court. Some companies will pay, others will spend millions rather than pay you a cent. Personally, I would consider selling them the domain. I just finished a legal dispute where I had a registered trademark and the .com domain and another company wanted it. Even though they likely knew they would lose in court, they were willing to force me to spend hundreds of thousands, perhaps over a million to keep the domain. This is where a deep pocket company has an advantage. It isn't fair, but it's reality. The domain I owned probably wasn't worth what they paid, in fact they probably paid many times what it was worth (one of the top 20 domain sales of the year). That wasn't the point, I didn't want to sell, could have fought it and almost certainly won (nothing is ever guaranteed), but I didn't want to spend hundreds of thousands to keep something that I had never made a penny off of. See an IP attorney. This first thing they are probably going to tell you is not to post anything about this dispute on the net. Even though you haven't disclosed the name, you've given enough details that it's possible for the station's legal firm to make the connection (and they do check the net). Everything you have posted can be used in their case to take the domain. Additionally, IP attorney's are not cheap or; and you need someone with experience, not a regular business attorney. In the US, you are looking at $350 an hour and up and good ones are few are far between. Just doing some research, trading a few letters and phone calls, negotiating a sale and drafting a sale agreement can easily run $10K. Factor that in the event you want to sell and think you'll get more money with an attorney. You probably also find that the larger firms won't be interested in talking to you. It's not enough money (they want clients who have and are willing to spend at least six figures), and when you're going against a big company, they don't want a conflict of interest with a company that could give them a lot of future business. Try and find a small firm or one person practice and forget about the larger ones. It will be a lot cheaper too. Good luck.
Wow! Excellent reply mjewel. So I guess the bottom line is to sell the domain and sell it for the maximum they will go for.
There are many unknown factors in this case, but normally you have to be very careful about asking a TM holder for money for domain - it can be used against you as evidence of bad faith; but you can't take back what has already happened.