Domain Name Similarity, possible problem, or not?

[SusanneUK]

Hi Everyone,

I just wanted to check with anyone that might know whether or not I have a problem or a possible sale LOL

Last year, I bought for my daughters (now ex) boyfriend/fiancee the domain name of swanseahomeimprovements.com and set about building a website for him and his partner. When I bought the domain name the co.uk version was gone, so I bought the .com version.

As it happened not much happened with it as the boyfriend kept forgetting to get information to me so I could build the site for him, so it pretty much sat there with his contact details on it.

Today I get a call from him saying the owner of swanseahomeimprovements.co.uk has been on the phone to him have a right old go at him because some of his customers keep landing on the .com site and this is causing him problems and demanding that the site be taken down.

So what I did this evening was to take the name Swansea Home Improvements" off the blog title, took off ex-fiances contact details, put on a simple contact form, rename the blog "Home Improvements" and then came here to see if I have a problem or not, I think not so I guess I am looking for confirmation of sorts. Do you think I have a problem firstly?

In fact, I have the other guys number and wonder whether I should get in touch (as I still own the domain name) and see if he wants to buy the domain off me. What do you think of that idea?

Or

Should I just put some DIY articles on there and monetise the site and leave it at that.

Thanks for any help, thoughts or suggestions, I need to pop out now for a while but will check back later.

Sue

[rosetrees]

If it was me - I would phone him, be extremely nice to him (always takes the wind out of their sails) and simply offer to transfer the domain name to him.

You never know, being nice to him might turn him into a potential client.

[SusanneUK]

Thanks for your input guys.. I will have a think about it all tomorrow.

If anyone else has any input I would be pleased to hear it

Thanks and night all.
Sue

[lharding]

I'm not sure there is anything the guy can do about it. He had the same opportunity as you to buy the .com domain, his loss. You can always be nice and put a link on the top of your page to his (saying something line, we're you looking for blah blah blah.). An example of your situation is tomtom. a pretty famous satnav company, checkout tomtom.co.uk, it a cigar company. Not a lot tomtom can do about it (unless they want to buy the domain off the current owner). It's really all about trade mark infringement, so if you're OK in this area, then nothing can be done.

So, you can put adds up on your site to Home Improvement companies within the area, and offer to put the guys site at the top (for a price, or even free) and make money from advertising, or carry on doing whatever you like.

Tp put your mind more at rest, another classic example, check out: BT sacks domain grab contractor ? The Register

What a star Rick!

Cheers, Lee.

[liquidroofcoatings]

You never know, being nice to him might turn him into a potential client.

[JeffMitchell]

Ask Him What the monetary value of having the .com is. I think that it was his responsibility to take the .com also. People do it all the time, just flip the site. It may sound rude and selfish, but what do you say?

Jeff Mitchell

[Rich Struck]

Originally Posted by lharding

I'm not sure there is anything the guy can do about it. He had the same opportunity as you to buy the .com domain, his loss.

I agree with this. It wasn't worth $10 to him before, why is it so special now? It's not your fault his surfers can't type.

[SusanneUK]

Thanks everyone for your input on this, certainly put my mind at rest on it.

Update is that I did in fact hear from this guy myself via the website. I took the telephone details off the website and just put in a contact form and also took out the name "swansea home improvements" from the header (in case he has actually tradmarked that company name) and basically left it at that with the intention of calling him later this week (didn't have time before).

This is the message I got from him, with the subject heading of "Litigation":

furher to telephone conversation.unless this site is immediately removed from internet we shall instruct our solicitor to commence immediate legal action against you for infringement.we have been trading under our name for twenty years and own the domain name

This was 6 days ago and I responded to him on the say day basically pointing out nicely to him that he owns .co.uk and we own .com and also pointed out that he had the opportunity to buy that when he bought his own. I have told him the site will be changing to an informational site in the near future and that if he wanted me to place his contact details on the site that he should get in touch and I also mentioned that if he wanted to discuss buying the domain he should get in touch but that it was not necessary for him to do so.

Anyway, that was 6 days ago and I have not heard another thing from him nor from any solicitors, so that is were this is left at for the moment, we will wait and see what happens next.

Thanks again guys
Sue

[Andy Fletcher]

If he'd contacted you in a nice way to start with I'd probably have just said, "You're not using it so do the right thing and transfer it for a nominal fee to cover your time/expense" but since he apparently wants to go the angry route I'd make him pay heavily for it.

I'd also be tempted to reply and say that you've forwarded his threats to your solicitors and they'll be in touch shortly

[Kishor Karsan]

Hi Susanne

I don't think you have done anything wrong at all, you were not aware of his domain being out there in the world, .com is the most popular extension, if he does not know that and he never bought .com at the time he bought his .co.uk then what can he do.

Get a solicitor of your own just to be sure where you stand, if things do go nasty, im sure they won't but you got to be prepared

good luck to you,

Kish

[SusanneUK]

Originally Posted by Andy Fletcher

If he'd contacted you in a nice way to start with I'd probably have just said, "You're not using it so do the right thing and transfer it for a nominal fee to cover your time/expense" but since he apparently wants to go the angry route I'd make him pay heavily for it.

I'd also be tempted to reply and say that you've forwarded his threats to your solicitors and they'll be in touch shortly

Yeah I agree, I took the name of the header really to stop my daughters ex fiancee from worrying over it all as he was the one who got the threatening phone call in the first place.

And yes, it is VERY tempting to do the bold thing above LOL however, I think I will save that one for if I hear anything back from this bozzo (sp?).

Thanks Andy

And thanks Kishor for your input also.

Sue

[rapzet]

Looking at whois details, it is clear that his domain is an old one. Confirm that he does not have any trademark etc. for his domain, if he has, then you can think of selling it to him at a higher price. Otherwise, you can simply monetise your site. If he does not have any trademark, there is no need to help him without returns. You may also think of HIS PRIVATE AD, say some flat rate for a banner.

[Pat Jackson]

Considering the way he acted I would do some SEO work and out rank him in the search engines and approach all of his competitors for advertising space on your site.

That is, of course, if the name isn't trade marked.

If you did this successfully I'm sure he or one of the competitors would be willing to pay a fair amount for it, too.

[SusanneUK]

Originally Posted by Pat Jackson

Considering the way he acted I would do some SEO work and out rank him in the search engines and approach all of his competitors for advertising space on your site.

That is, of course, if the name isn't trade marked.

If you did this successfully I'm sure he or one of the competitors would be willing to pay a fair amount for it, too.

Also a good point! thanks.. does anyone know how I can find out if the company name is trademarked? Never had to find out before, I will go and do some searching myself on that but just in case anyone has a link alread and can save me some search time.

Thanks guys
Sue

[Bev Clement]

try this site as its the UK

Welcome to UK trade mark registration, your one-stop trademark registration site

Did you get my email or did it end up in your junk folder

[SusanneUK]

Originally Posted by Bev Clement

try this site as its the UK

Welcome to UK trade mark registration, your one-stop trademark registration site

Did you get my email or did it end up in your junk folder

oh thank you Bev for the link

Just going to check junk as well.

Cheers
Sue

PS lovely meeting you on Tuesday, hope you are still enjoying Swansea

[R.O.I.]

In Australia under the trade mark laws a domain name can be taken from anyone without compensating them. This stops what happened in America, (corporations paying huge amounts to people that had the intelligence to pre buy domains) happening in Australia.

Personally i think its bull s**t! A fine example of how the Australian government looks after the big corporations and burns the little guy.

Hopefully the law in the UK isnt the same.. good luck

[la dominatrix]

When the puchaser of
swanseahomeimprovements.co.uk
bought his domain name it would have been sensible to purchase the .com version as well. If I buy a .uk.co domain name I always buy the .com as well. It is his loss he did not and so what if his customers end up somewhere else that is his fault not ours. I would definately monetise it

LA dominatrix

[Bill Farnham]

What's the meaning of Swan Sea or swansea?

Is this a geographical name (town, city)?

Fwiw, if he is willing to spend money on a lawyer he should be willing to buy the domain name from you for the same money and be done with it.

Assuming he's thinking clearly about this...

KJ

[SusanneUK]

Originally Posted by Killer Joe

What's the meaning of Swan Sea or swansea?

Is this a geographical name (town, city)?

Fwiw, if he is willing to spend money on a lawyer he should be willing to buy the domain name from you for the same money and be done with it.

Assuming he's thinking clearly about this...

KJ

Swansea is a town in South Wales, UK..

Thanks for all the extra input guys, I will give him another day or so to see if he responds to my email.

Cheers
Sue

[Alexa Smith]

Ok ... I'm not trying to start an argument here, at all, far from it (nor am I a lawyer), but I'm sorry to say that I suspect you have been consistently mis-advised by well-meaning people here who are mistakenly applying "logic" and "morals" to what is in fact a "legal" situation.

From my limited experience of other, similar, UK circumstances, I suspect that you do actually have a problem here, and that if this person has actually been trading from the .co.uk version before you registered/bought the .com version, there's no certainty at all that "you win".

Part of the potential difficulty is that in the event of any serious dispute, the burden of proof may well be on you to prove that you registered or bought the name "innocently" and that may be very difficult to do.

For myself I would not be investing time, effort or energy on that domain without a clear opinion from a lawyer first. Hope I'm wrong. Sorry.

[SusanneUK]

Thanks for your advise to Alexa, I welcome all sides of this particular problem.

I just did a search to see if the name has been trademarked and so far, through what I can find, it has not been trademarked.

I have a lot of other work on at the moment so I can't do anything else about this so I will wait and see if he responds in some way to my very nice email I sent six days ago.

Thanks again Alexa
Sue

[Bill Farnham]

Sue,

That's why I asked you if the word Swansea was a geographical name.

That makes a big difference.

Names that are made up (Kodak, as an example) hold significantly more legal status when protection is sought over names like Swansea which is in the public domain (it's a town).

Just food for thought, I'm not giving you legal advice.

KJ

[seasoned]

Originally Posted by SusanneUK

Hi Everyone,

I just wanted to check with anyone that might know whether or not I have a problem or a possible sale LOL

Last year, I bought for my daughters (now ex) boyfriend/fiancee the domain name of swanseahomeimprovements.com and set about building a website for him and his partner. When I bought the domain name the co.uk version was gone, so I bought the .com version.

As it happened not much happened with it as the boyfriend kept forgetting to get information to me so I could build the site for him, so it pretty much sat there with his contact details on it.

Today I get a call from him saying the owner of swanseahomeimprovements.co.uk has been on the phone to him have a right old go at him because some of his customers keep landing on the .com site and this is causing him problems and demanding that the site be taken down.

So what I did this evening was to take the name Swansea Home Improvements" off the blog title, took off ex-fiances contact details, put on a simple contact form, rename the blog "Home Improvements" and then came here to see if I have a problem or not, I think not so I guess I am looking for confirmation of sorts. Do you think I have a problem firstly?

In fact, I have the other guys number and wonder whether I should get in touch (as I still own the domain name) and see if he wants to buy the domain off me. What do you think of that idea?

Or

Should I just put some DIY articles on there and monetise the site and leave it at that.

Thanks for any help, thoughts or suggestions, I need to pop out now for a while but will check back later.

Sue

Sue,

Yeah, it is not legal. If they have a recognized link to the name, you may be forced to give it up. frankly, the whole idea of domains for domain names is all messed up.

nissan and mikerowesoft are two good examples of what I am talking about.

Steve

[davezan]

Originally Posted by R.O.I.

Hopefully the law in the UK isnt the same

IIRC, Australian and U.S. trademark law practically originated from the U.K. A
trademark holder can seize the domain name without compensating, and even
penalize, the domain registrant, though others have fought back.

Essentially the question here is does the other party have a trademark. A TM
isn't required to exist as long as it's used in commerce, especially if its holder
is prepared to demonstrate it.

But...I agree with alexa. Seek a solicitor for a more informed opinion on a legal
issue.

[Bill Farnham]

Originally Posted by seasoned

Sue,

Yeah, it is not legal. If they have a recognized link to the name, you may be forced to give it up. frankly, the whole idea of domains for domain names is all messed up.

nissan and mikerowesoft are two good examples of what I am talking about.

Steve

To clarify my last post, and again this is not legal advice, if someone wanted to open up another business in that town using this name they would SOL.

However, as a domain name the other company does not hold claim to either Swansea or home improvements.

If you're not doing trade under the business name of Swansea Home Improvements, ie improving homes, but the website has links or content about home improvements, it could be a 'snooze you lose' situation for the .co.uk holder.

Those examples Steve refers to are doing business on a global scale and are not names in the public domain. They were made up for the purpose of being unique.

KJ

[SusanneUK]

Thanks everyone, well it is confusing to say the least. I have searched and so far can't see that the trademark "swansea home improvements" has been taken. I don't have the spare cash to hire a solicitor myself at this time so I will just wait and see if there is any more contact before making any decisions on this one.

Thanks again everyone.

Sue

[Robyn8243]

Sue:

I don't know what you are hoping to do with this site, since the person you originally
bought it for does not seem to be all that interested in proceeding.

Personally, my initial reaction to this guys threats, would be to want to build up the
site and use it to benefit his competitors. However, after the initial emotional reaction to the threats of a jerk wears off, who wants to spend a lot of time in what might end up being on ongoing negative situation?

One thing you might want to consider (despite his being a jerk) is to send him an
email or letter, more or less telling him that you have sought out legal advice, and while
you believe that you would win any legal action, you would just as soon reach an amicable solution that will fairly compensate you for the time you have already invested. Rather than both of you spending a lot of time and money on solicitors and court costs, you would be willing to sell him the domain for $_____ .

You might want to add that as a result of his unfounded hostility towards you, that if you can't come to an agreement that you will....__________fill in the blank however you see fit.

Ultimately, you need to choose a resolution that makes sense to you.

I do not pretend to have much specific knowledge about the established laws on
domains and trademarks. However, as a recovering attorney, (not giving legal advice)
regardless of established law, litigation is always expensive from a financial, time and emotional standpoint. It is always a risk to both parties, regardless of what the established legal precedent is. Established law is only established law until it is overruled. And specific facts of any case can inspire courts to carve out exceptions.

Good luck with this.

Robyn

[SusanneUK]

Thank you Robyn for your reply, more food for thought for me, as I say, I will wait and see for a few days more to see if the "jerk" does respond in some way to my last email.

Thanks again
Sue