Been asked to take down a website...

I agree with AGC...put up a fight...its your gold mine!

Well said, agc.

Given the facts here your first step might be to suggest to them that their claim is extremely weak, but that you would be willing to sell them the domain name for $200.

Thanks for as for many excellent replies to the question. In the USA one ensures name ownership by incorporating or at least registering the name. Individual product names may be registered to a single corporation. The domain has nothing to do with the rights of ownership of an incorporated company or registered product name. If the registrant believes a domain is infringing on its name rights it pursues action starting with request to take down any sites operating as the registered name or a close facsimile. I cannot comment about laws in other countries protecting registered names. In the USA there are several remedies for infringement even if the entity is not incorporated. An example is if I prove I have used a particular name over a period of time and am known publicly by that name I am somewhat protected. Proof is historical use in advertising, pr, letterhead, logo application on product and/or packaging and so on. Even though the company does not do business in the UK it may want to in the future. Therefore it is in the company's best interest to request (with stronger letter to follow) via a cease and desist letter for you to take the domain down. Did you receive the request in written letter form delivered by the post office? Did the letter originate from a UK representative or from the country where the product is located? If the company hired a UK representative to contact you they are serious, very serious. If you simply got an email you can ignore it. For future situations check you local laws for name registration and protection. A foreign entity may not have any rights to a domain in a country where that entity does not conduct business. This situation surely will become more complicated as the Internet gets more crowded . . . if that is possible.

Yes, advice given to you here is right. They would need to have the name trademarked, an that trademark registered worldwide. Then they would need to take legal action against you to enforce trademark enfringement. So they are trying to bluff you. Offer them the domain name an make some profit from it.

Reply to the email with a screenshot of your register date, and theirs. Ask them what they want to offer you for the site, that you're only to any that make reasonable business sense for you.

I was immediately struck by the thought, that it was unlikely that widgets.co.uk could have been registered BEFORE widgets.com. Furthermore, did anyone check widgets.com? It's a parked website, not an active business that could be threatening and sueing for infringement. Do you even check the facts before posting advice? Come on people, you are not very bright! Must try harder!

LOL. Finally, someone who actually has got guts to have an opinion.

Did anyone notice that WIDGETS isn't the actual domain name in question, it's just an example.
What is the real domain name that you registered? It makes a huge difference. Tell the real domain name if you want a serious answer. Is it a generic name?
If it's "apple", "people" or "sun", then should be safe despite the fact that those are brand names, because those are generic names. Unless you confuse visitors by operating in the same niche and pretend to represent the corresponding company.

The worst thing that any company can do, is pick a generic name, unless they don't intend to extort people out of all corresponding ccTLDs.
Eg. Apple. If they wanted to blackmail the owner of apple.ee domain, I'd tell them to get lost. But google or ebay would be a completely different story.

Every month the domain seller I use advertises new extensions pointing out the opportunity to acquire a desired domain name already taken with other extensions. So long as you are not pretending to be any one of them you should not have a problem even if selling the same type of goods. There are plenty of one word domains like halloween with every available extension taken and guess what, the sites are about halloween or parked.

Don't let them intimidate you. This is a common practice with businesses nowadays. Just because they have a trademark in the USA, does not give them the same right in the UK or any other country.
And even IF they had the right in the UK, I would not let the domain expire. I would keep the website up and running and have them offer you a 5 digit sum for the domain.

It's always sad to see how businesses especially from the USA think they have a worldwide right for any name that they have a trademark on in the US, and intimidate users in other countries. Don't do it!

So - it's a trademarked name and you knew it...right? Or was it registered as a domain BEFORE being trademarked as a brand?

This topic always yields macho advice like a few answers above...but those folks usually don't show up when you go to court. If you like risk - do what you please or take the "stuffit" attitude some recommend.

If you run a real business - check with an attorney. Most leading brands trademarked in the US are also trademarked internationally. If it's a "Big" brand...they probably have their own lawyers and even if you won a lawsuit, fighting it could bankrupt you.

If you registered a trademark as a domain ...and you try to profit by offering it to the trademark holder....you can be in far worse legal shape.

A small fee paid for a consultation with a legal eagle - who can evaluate the specifics of this rather than generalize about it - would be a smart move if you are considering trying to keep and use the domain.

Hi Jodie,

When it comes to pattens, trademarks, marks, registered & copyrights, the guidelines can be interpreted many different ways and usually every party involved thinks they are right. Real quick, I'm not an attorney so seek legal advice before taking a stand.

However, I think you posted your comment here because you felt intimidated. This is usually the point when someone sends you that kind of notice. But take a deep breath, because no-one can hold you legally liable for anything unless it comes with a seize and assist signed by a court of law.

Even if the guys attorney sends you a letter telling you that your are infringing on a trademark, it is still only the guy and his attorney who thinks so. When this happens to bigger companies they will usually get their own attorneys who believe the exact opposite, and thus the case must be decided in a court of law.

Words can absolutely be trademarked (even some rather common ones), although it states that common words usually cannot be trademarked.

You must remember that a Trademark is not only a word. It is usually a word written a specific way (font style, size and/or design). That is why several people can have the same word trademarked; however, each Trademark looks so different from one another that they will not be confused with each other.

Further, there are also many different categories under which a trademark can fall. Each category you want to register your trademark under will cost an additional fee.

If a guy trademarked the word Bell under the category for "church bells" a different guy can properly trademark the same word Bell but under a different category like "door bells" for example and so on.

If a funny fellow would want to own the rights for all the meanings of the word Bell & trademarked all the categories available. It still would only pertain to the unique way the trademarked was filed (font style, size and/or design).

To own all the rights to a word, written in any font style, size or meaning you would have to file for a copyright protection. But good luck with getting a single word copy written.

You see, if the guy who send you that letter thinks that he owns the right to use the word widgets period! then he properly needs to sit down with a patent & trademark attorney who can explain the exact conditions of his trademark with him (because they all have them).

Also, if you want to contest your name based on the fact that you used it first, there are a few things you properly should consider.

1) You need to be able to prove where, when and how you used the name

2) Also, is HOW you use your name, the same as HOW the one contested use their name (ex: does your bells refer to church bells like your competition or does it mean door bells. If your McDonald's is a Tire Shop there is no infringement on McDonald's the Food Chain (unless McDonald's the Food Chain, were thinking about going into the tire business :-))

3) Further, you must also prove that you have protected your name continuously since you began using it. Ex. McDonald's contesting a restaurant in Scotland using "their" name when selling food, (see the previous post).

The problem here is that if you, or McDonald's do not contest to the name being used in a similar manner (for food), they can loose their exclusive right to the name all together. In fact, you only have a specific amount of time to contest once you learn about someone using "your" name in the same manner you do.

If you allow your competitor to continue to use "your" name in the same manner and your competitor can prove that you for years knew but did nothing about it, chances are pretty good that you'll loose the exclusivity to your name.

Jodie, if you are still concerned, or if the guy keeps bothering you with this then ask for his Trademark filing number, look it up and find out under what conditions the Trademark was given. This is all public information.

However, on the flip side if you don't care about your website or the domain you can try to make some money on it and offer to sell it to him (use a domain trading service to do this). ;-)

Hope this helps,
Cheerio!