evenin all :duffer:

My Brothers wife has aquired an internet address on the .eu web called "Jacobscreek.eu" (a large wine company)

It had been pre registered for some time by her and then has since been registered to her after the platform went live (April 7th).

 

Problem is she has now had an email from the regestration company acting as a "Go-Between" saying that the companys name she had registered is a trademark and they are requesting her to surrender her regestration and give the name to them.

Below is a copy of the email she was sent:-

 

The domain name you have registered is being disputed by the owner of the Jacobscreek trade mark. They are requesting that you give the name to them and surender your registration.

Please inform us of the action you are going to take about this matter.

 

 

I know that in the initial pre-regestration period (before 7th April) companys with registered trademarks had the rights over an internet address at the time of pre-regestration (I think) but now the date has passed does it mean they own the rights to an internet address just because they have a trademark?

 

HOW DOES IT WORK PLEASE LEGAL BODS???

 

Should they submit it and take a loss or is the company just trying their luck to get the addy and they should negotiate for terms?

 

Thanks in advance peeps :D

Duuno how relevant it is but it reminds me of the time the DVLA tried to hijack DVLA.com from a company in America:

 

http://www.theregister.co.uk/2003/01/07/dvla_fails_in_reverse_domain/

 

http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0913.html

reply asking how much they are willing to pay for it?

DO NOT GIVE THEM THAT ADDY, legally she is the registered owner and has all rights to the domain name if the want it they must cough up cash!!!!

If I remember a few cases I've read on it the website has to pretty much step on their trademark before they have any grounds on taking it off of you by force. I wouldnt just surrender it, tell them to go bugger off. As long as the website isnt used to make money by using their name I dont see how they can do you for it.

 

In anycase they should have PRE-REGISTERED the damn name before hand.

Don't give it up ! People have made millions from owning domain names.

Hmmm - could be up for a legal fight here...

 

Ultimately, the responsibility lies with the domain name registrant, as the trademark laws that apply in the hard copy world also apply on the Internet.

 

Any company that registers a trademark has the right to protect their trademark and has the right to notify you that your domain name is infringing upon their trademark. Why? If your domain name has the potential of confusing the public into thinking the trademark holder is somehow affiliated with your web site, they may bring infringement claims against you. The courts would have to make the decision based upon the trademark laws and if your domain name, in fact, has the potential of confusing the public.

 

Its confusing to say the least - BUT as Royal said - people have made a fortune doing this & selling them on.

 

J

Thanks chaps :bow:

 

Will let her know and get her to send a factual email and see what they say :cool:

 

Any more info appreciated ;)

also from what i am led to believe under trademark law the trademark when taken out on aforementioned name, the trademark should also have a clause that states by all know electronic means, but must also stipulate known web domains that relate to the trademark. as the .eu wasnt running then it could be void. also you shoudl know that copyright and trademark are not always clear cut for claims from big companies.

 

this is a detail from one of my law books reguarding copyright:

 

Copyright, Designs and Patents Act 1988

Before the introduction of the Copyright, Designs and Patents Act 1988 ('CDPA') industrially applied designs were protected in the UK by copyright. The CDPA states, however, in s51 that if a design document, or model recording or embodying a design is copied in the making of an article, then (subject to certain exceptions) that will not be an infringement of any copyright. Instead, it may in the right circumstances be an infringement of design right.

follow up..

 

 

Qualifying for protection

Under the CDPA 1988, design right only exists in a design document (or article) if the document (or article) itself qualifies. Put at its simplest, a design document does not qualify for design right protection in the UK if it does not have a sufficient link to a qualifying country. The qualifying countries are at present the EU countries and a further list of mainly Commonwealth countries. The USA is not one of them.

 

If the designer, the person who commissioned the design, or the person who employed the designer was an individual, then the design document qualifies for design right protection if that individual was a citizen, subject or resident of a qualifying country. If they were a corporate entity, then the design document qualifies if that business was a legal body formed in a qualifying country and which had a substantial place of business in a qualifying country. A paper company or token activity will not suffice.

 

Alternatively it will qualify if the person by whom and the country in which articles made to the design were first marketed both qualify. They cannot be marketed anywhere else in the world before being marketed in an EU or other qualifying country if they are to be protected by design right from copying in the UK. Additionally, that first marketing must be done by a qualifying individual or other qualifying legal person who must have been exclusively authorised to put the articles on the UK market. UK law treats an exclusive licence as in many respects the equivalent of an assignment, and stamp duty may be payable on it.

 

So, if the design document qualifies because of its designer, his employer, or the commissioner of the design, it does not matter where in the world the article is first marketed: it qualifies for design right (assuming it meets the basic criteria of being an original design, etc). If it fails to meet these criteria, then to qualify at all the article must have been marketed first in a qualifying country by a qualifying person. If it was first marketed anywhere else in the world or if it was first marketed in the EU but by someone who was not a qualifying person with exclusive UK marketing rights for the design, then it is not given design right protection.

this also applies to trademarks i think under electronic means and must state the conditions in the trademark application and certification held by the trademark owner, i will however check it for you tomorrow

She can own it but can't use it, or so says our legal bods as it's reged in the UK, we had a problem like that with a security firm they has a .net on our TM they just took it off the net, no messing or fuss and changed the company name (don't ppl look b4 they name a company FFS)

the legal implications for trademarks on the internet are very muddied, this is due to the fact there is no definitive law reguarding the internet and its uses etc.

 

private companies try to use old laws that have not been updated to force an individual to hand over ownership, but in most cases this fails.

 

there has to be an intent to mislead or confuse the public reguarding internet domain ownership, also there has to be proven the the owner or registrant intended to profit from the use of the name or similar name from the origintaing brand.

 

she can in fact use the domain name , there is no re-course on that, she can also put a disclaimer on the website clearly stating that it has no link to the trademark holder, this is acceptable under english law and the trademark holder no longer has that case if that is clearly stated on the website.

 

this is the joy of a disclaimer, that the holder know there is a possible link but publicly states to all that view , that it is in no way linked to them.

 

she does not have to give up the domain, she can use it, put in a disclaimer, get your isp to also forward a copy of the disclaimer, and if the other company threaten legal action, then let them try as you have fully complied under english law as to the non intent of a trademark breach. also as this is a new domain the (.eu) prefix i think that you will find that unless stated in thier trade mark apllication it will not be covered as it is a new domain prefix.

Can I ask why she has that name ?

 

Does she promote holidays to Jacobs Creek ? Is she from Jacobs Creek ? Is it the name of her house ? In fact does she have any reason whatsoever other than trying to get money out of the wine company to register that name ?

 

I don't mean to sound harsh so please don't jump on me but in my experience the courts take a very dim view of what they consider a form of extorsion. IIRC there have been several instances of this nature and they all go in favour of the original owner of the trademark/name/logo etc.

 

Be careful you don't get involved in a potentially very expensive court fight. Definitely in my experience the big boys use big expensive lawyers and will pursue you for costs if you lose..........

 

Having said all that......good luck !

could be a floor comp

My dad owned egg.com until the company came along and offered him a large sum for it. He now owns egg.net and some others, inc yourbank.com etc.

 

There have been cases where people have tried to make money out of buying domain names and selling them. If you buy cocacola.com (if it existed) and tried to make any money from it, then cola could take you to court as the name is a trademark. You cannot make money using a name if it is a trademark name, no matter what.

 

Since jacobscreek is a wine merchant and is a trademark, they will win in any court case...

 

 

Look it up, it has happened many times. I remember a few times it has been publicised.

If however you have been trading under the same name, but say in a different business vertical, then you are entitled to it. We had a battle with a very large company in the UK who’s initials were the same as ours, they tried to get .co.uk from us but lost even though the had existed for longer and had the .com

 

A good example would be say a car spares dealer in Scotland and the owner was called Mr Macdonald, if it was free, he would be 100% entitled to set up a website called Macdonalds.eu and the fast food joint would have no right to it, if they wanted they could offer money for him to release or transfer it.

 

If you have just registered it to make money, then you have to be prepared to put up money in legal fees to fight for it, and probably only then will they come across with the money to by it from you.

hhhhmmmm

 

some really mixed veiws here which is great to have...

This site is a font of knowledge :bow:

Thanks for the bundles of info there PK1...just wish I was clever enough to understand what the bottom line is...or is that just it...there is no hard cut rules on this and its more down to small print?

 

Can I ask why she has that name ?

 

Does she promote holidays to Jacobs Creek ? Is she from Jacobs Creek ? Is it the name of her house ? In fact does she have any reason whatsoever other than trying to get money out of the wine company to register that name ?

 

lol....No...she doesnt have a vineyard :D

But she does have an interest in storys/novels of which she was intending to put on a "Blog" page as this is the new craze of putting your own work on the net without charging for it so there would be no profits or trading to do with the domain name.

It must just be coincidence that the title of her story shes mentally composing happens to be a match for the companys ;)

 

 

So can she keep it and use it if she does the following? :-

 

1)Places a disclaimer on the page

2)Does not profit/trade from the domain name

3)Did not intentionally aquire the domain for the use of a trademark

 

Whether she does or doesnt use the domain does jacobscreek have the right to the domain?

 

Thanks again everyone for really informative info..

I havnt the foggiest with law..

All I know is my insurance costs are criminal :rofl:

So can she keep it and use it if she does the following? :-

 

1)Places a disclaimer on the page

2)Does not profit/trade from the domain name

3)Did not intentionally aquire the domain for the use of a trademark

 

Whether she does or doesnt use the domain does jacobscreek have the right to the domain?

 

 

put up a legal disclaimer waiving yourselves and the isp from legal recourse, use the name if you want to, make sure the details of the disclaimer are specific, do not link to the jacobs website at any time or reference it they own the hyperlink and you would need permission. make sure the disclaimer also details the purpose of the site, put that as the entry page on the bootom have a logo with a small bit of info and then an if you agree to this then enter...

 

that will cover you fine, you can also get the isp to get in touch with them and let them see this.

 

however the host can if they feel pressured enough pull it on their own without your consent and block that name for registration in future unless its the aforementioned company.

 

 

and also the wanting money for the domain wont stand up as she has

 

a: never approched them for payment for the domain

b: and will not ask for payment for the domain.

 

if she sticks to that there is no grounds for monetary intent

Wooooo.... :hyper:

 

Thankyou very much PK1 :duffer:

That is all explained very clearely and even I could understand it :rofl:

 

If she was to ignore the original email then what would happen?

Could jacobscreek do anything?

 

If for hyperthetical reason she replied saying something like:-

 

"I have aquired the "jacobscreek.eu" domain for non profit making causes and will in no way relate to the afore mentioned company or trademark.

This domain was purchased for the single requirement of posting a "Blog" page about personal fictional stories and for no other reason .

There will be a disclaimer on the page to disclose such statements.

If youre company feels you need to pursue this matter further then contact me for further enquires."

 

would that be appropiate as she doesnt know whether to keep it or pass it on if you know what i mean :cool:

you could also add that if they wish to word a section for the disclaimer they can, however remember that the provider/host can at anytime pull the plug on the domain so i would forward your intent to them and see what they say first. before they forward it to the other company.

 

see where the host stands with it first, as they may just be a bunch of cowards and pull the name