[WBC]

My friend recently bought a domain and began using it publicly.

Today he received a letter from an American claiming he'll sue if the domain isn't taken down.

The difference between the two domains is the word "the".

The American without doubt has had his domain the longest, but has never bothered to buy up the similar name.

Both websites are on the same subject but to different audiences, the American's website is said to be international while my friends is aimed at a British audience.

Trade isn't the right name but both websites use the same trade name, now if the American wanted to sue about that with a good reason I may be able to understand, but this obviously isn't his problem as he has suggested that to avoid the courts my friend should change from being .com to .co.uk.

I've read up a bit and found out a lot on american law but I'm not sure how this all works on an international level.

Anyone up on these things?

[MikeChipshop]

The American will get nowhere with his claim. He's been to lazy and cheap to buy up the other domain name and is trying his luck with this.

Obviously i'm not a lawyer but i'd be very surprised if he (American) could do anything about it. If he wanted to protect his 'trade' name then he should have purchased the other domain name. Double check if his name is registered everywhere. He may very well own a trademark in the US but if he didn't even bother to pay a few quid for a domain name i bet he didn't register his trade name here.

[WBC]

Yeah my friend checked to see if he could find a trade mark and couldn't. The guy has tried to use a lot of examples of his stature/ importance in the messages which make me think a lawyer has ever seen it even though it starts with something like my "lawyers are shocked".

I've advised my mate to let the domain name go but charge the cost of re-branding and loss of earnings during the change. An inflated £10,000 would suit.

This post has been edited by WBC: 19 September 2011 - 05:23 PM

[MikeChipshop]

Good idea. Guy sounds like a bullshitter at best and could be a pain the arse in the future. Making an offer like this shows that your client is willing to come to an amicable resolution and if the guy doesn't take him up on the offer it will still look good for your client if it was to ever be taken further.

It's funny because i'm dealing with a similar if not completely opposite thing at the moment.

A client parted ways with an organisation (because they were using under-hand dirty tricks in their business) and started her own. The former organisation found out the name of my clients business as she was registering it and they bought up the domain names to match and re-direct them to their site.

[WBC]

Came across a lot of that while I was googling, I do believe that is defiantly grounds for suing, well it is in america. I should read up more on UK law.

[pandadoodle]

Not 100% but can your friend register the company as a limited one here in UK? All legal action if any would then be taken against the company and not him.

I can't see the problem if there is no international trade mark. Legal advice is the way to go here rather than on a forum

[Sogo7]

The guy is probably an arse but if the name being used is a registered trade mark say for instance 'Apple' then calling your website 'The-Apple-shop.com' and selling similiar products then you're up excrement creek. I forget what the legalise is but basically it's using somebody elses tradename / brand to endorse your site without having permission to do so.

On the flipside if you were selling fruit and veg the you should be able to succesfully argue that you are not infringing the copyright merely by using the word. By the same token you could also use "Smiths-Computers-Apple-specialist.com" because there is no confusion to the consumer about who you are.

[cibgraphics]

What is the URL? It would make a difference (I think) if it was a generic name verses a trademarked name.

[joshfolio]

lol what a load of crap, please provide both url's

[byronc]

being in court is expensive, even if he is in the wrong.

[WBC]

Sorry I’m not in a position to provide the domain names for ethical reasons and it’s not my domain.

An example:

You have a blog site and you call that site www.theweeklyblog.com and someone emails you claiming it is infringing on the IP of their site www.weeklyblog.com .

Both sites do what the domain name suggest but for different target audiences. They do not trade or sell services and any income they do make, if at all, comes from advertising.
The main objection in the email is not about the name of your site but the extension being .com.

Personally in this case I don't think any suing will take place as money-wise it just isn't worth it and that's all suing is really about. But it does raise some interesting points specially as the UK laws differ from that of the US.

[zed]

write back and suggest he gets a .us domain name?

[itc]

zed, on 20 September 2011 - 07:16 AM, said:

write back and suggest he gets a .us domain name?

lol I like that solution, although .com .net .org are exclusively regulated by the US which again means that his claim might hold water if there is a registered trademark.

[Glowbridge]

Even if your mate bought a .co.uk, there is still grounds to sue. Both sites are competing in the same market and 'The' isn't a unique enough word for a person to reasonably differentiate both parties. Even if neither of them are real companies and wouldn't take it to real court there is still the arbitration committees of the various domain agencies and they are never going to side with a Brit using a .com to target only the UK with a name that is almost exactly the same as an older site doing the same thing internationally.

I can't sell computers under the name 'TheApple.co.uk'. Doesn't matter one jot if I never event hint at Apple or any of their trademarks, it's not different enough from what they do to expect any passing Joe to know the difference. It's why Apple and Samsung are suing each other stupid right now, there is a case to be made that if something just looks similar to your product and does the same thing you can sue on the grounds that people who intend to buy your product get confused and buy the competition.

I'd just suck it up and rebrand. Even if the other guy is willing to let him slide UK only on the .co.uk he is still going to be forever related to him. Absolutely not worth having your brand tied to something someone else controls.

This post has been edited by Glowbridge: 24 September 2011 - 02:12 PM