Yesterday I bought a domain name - carmodel.co.uk - where carmodel is the model name of a car produced by a major car maker. The car maker owns and uses the .com version.
For about 3 years I’ve run the same name with a .org.uk. Not had any problems running a simple fan based blog.
What I’d like to do with the .co.uk version is develop a more commercial site selling books, parts and possibly used cars of this particular model. Plus any add-ons I can think of.
My question is will I have any problems with trademark issues from the big car company? The way I see it, I’m not selling a competing product and certainly wouldn’t pass myself off as the company themselves.
I guess that’s the dif between US and UK. There is no way that would fly here. To many different possibilities for that to mean something else. Now if your trying to use that name to sell automotive/cars then obviously you are trying to capitol off their name.
That’s only the ICANN UDRP though, the Nominet DRS is different (not to mention the whole raft of IP law), past cases of the DRS would indicate that if the company went down that route it would win - if the domain is one that would likely type in when looking for the manufacturer/product and they hold a trademark for that term. You can actually look through past DRS decisions on www.Nominet.org.uk
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
I don’t see how they could claim any of these, since they have a domain name, and no attempt was made to obtain the one you have, nor could they prove you intent…
I say your claer
Yeah, I think it all comes down to “Bad Faith”. As anything I would do would be positive towards the manufacturer, I’d hope not to have any problems. I’d also explicitly state that I was not related to the company.
As AlexDawson says - they need to be proactive in protecting their TMs to be able to rely on them in court. But that does not mean you aren’t infringing to be using their mark as you are. It doesn’t matter if you are using theirbrank.co.uk or theirbrand.org.uk - you are using their mark.
Even if they don’t have a registered trade mark in that brand name (you can check at the IPO website), they may still have rights in passing off against you if you use their mark which has gained a reputation without permission.
And as everyone has said protecting this in court would be expensive.
That’s all well and good in theory, but unless you’ve got a lot of money in the bank then you’re never going to get anywhere near to proving that
I’d be wary of launching a more commercial site if the domain really is <their_trademark>.co.uk, as they could well claim you are profiting from their trademark and I doubt they’d take too kindly to that - although in most instances they’d usually write and ask you to cease doing so as a first point of call.
Agreed, you would also have the potential (if an issue did occur) to proclaim that as they didn’t go out of their way to enforce their mark, their case holds no strength and you shouldn’t be held guilty as they had no intention of enforcing it. If someone has a trademark, their meant to enforce it strictly without being lenient against people who may be seen to be associated with the brand (Though if they were to fire legal action your way it could get expensive!). The only thing that could probably occur is that you could lose the domain under anti-cybersquatting legislation. But I am not a lawyer, my advice is not a replacement for a legal superhero!