Fair or foul?

[soj]

Interesting situation has arisen, and I thought I'd publish it here to get some comment and opinion.

This is about a person who has a two word domain name (both words are dictionary generic). He has just received a solicitor's letter on behalf of an established business
telling him to hand over the name. One of their client's has a business called the same except the names are reversed.

Names / product have been changed to protect the innocent.

• Person owns OnlyCaffiene.com.au. Domain is 7 years old, and is now a fully developed website.
  
  
• He has a registered company called Only Caffiene Pty Ltd
  
  
• He has numerous other coffee related websites.
  
  
• He is not passing himself off in any way, shape or form as the complainant.

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• Complainant's main claim to fame is a website called CoffeeOnly.com.au. They have a TM for this term and image. Been established for a long time.
  
  
• They also own the domain name CaffieneOnly.com.au, though this doesn't resolve to a website. They also have a TM for this term and image. (Which surprises me that it would be allowed).

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Until I saw the existence of the TM's, I would have said that the complainant had no case.

Particularly given that they are such generic words and a generic product, and that there are many, many other sellers of the same product on the internet.

I still feel that way, but I am thrown by the TM's.

What do you all think?
.

 

[DavidL]

Well I have a natural bias against complainants I guess but sounds like another case of big company trying to bully small company into handing over something they want.

In any case, it's the repondant's right to defend a name if they feel they haven't been infringing and they should exercise that right to the nth degree.

Contrary to popular domainers fears, no one has ever been sued in Australia for infringing on a domain name and there have been some absolute blatant abuses.

Also the TM's have little to do with it. Whether the company had a TM or not, they could still argue the case that they are well known by the brand and that the respondant is trying to cash in.

 

[soj]

Also the TM's have little to do with it. Whether the company had a TM or not, they could still argue the case that they are well known by the brand and that the respondant is trying to cash in.

Thanks David - appreciate your opinion.

With regards the TM's, I imagine a big law firm would be brandishing this fact to try and bolster their case and scare the other person away.
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[Cooper Mills DomainLawyer]

I see this every day, the big guys bullying the little guys. You need to be careful with TMs involved, it is best to PM me Ned or we can chat about it in person

 

[soj]

I see this every day, the big guys bullying the little guys. You need to be careful with TMs involved, it is best to PM me Ned or we can chat about it in person

I'll see you on Thursday in Melbourne Erhan.

As I said, this isn't me, but someone who I have sold names to in the past.

But it is nothing more than total bullying imho. The initial letter is a stock standard "shock and awe" effort based on them holding TM's to the words (even if they are transposed).

 

[Cooper Mills DomainLawyer]

I'll see you on Thursday in Melbourne Erhan.

As I said, this isn't me, but someone who I have sold names to in the past.

But it is nothing more than total bullying imho. The initial letter is a stock standard "shock and awe" effort based on them holding TM's to the words (even if they are transposed).

The funny thing is that many letters we see indicate that the lawyer doesn't know the law.

Chat tomorrow

 

[findtim]

i've said this in many other posts in DNT that this tactic has been done on me twice and both times i have just surrended because of the potential legal costs.

Thats whats sad about it, these companies can go and allocate 20k + just to get rid of you.

but what i don't understand is in my last instance which was with "packer newspapers" once i said i wouldn't develop the domain they went away !

that was it ? maybe they knew they had no leg to stand on ? i let the domain drop 18 months later and that was that.

its the "passing off" that seems to be the biggy and i don't want to get on my bandwagon again but this issue KEEPS coming up, when will someone set the standard rule so we can all move forward.

its a BIG BEE in my bonnet

sounds to me your friend doesn't have an issue buut will have spend moneyyyyyyy to get it sorted which is crap.

tim

 

[findtim]

sorry but just had to come back to this.

byronbayweddings.com.au
byronbayweddings.net.au
byronbayweddings.com
byronbayweddings.net
byronbayweddings.info
byronbayweddings.org

byronbaywedding.com.au
byronbaywedding.net.au
byronbaywedding.com
byronbaywedding.org

are all registered and owned by many different people and i know most of them and there has been no law suits to my knowledge !

WHY, all small businesses just doing it instead of muscling it.

and then lets not get started on "weddingsbyronbay.com.au" etcccccccccccccc

this is how it should be, first in first served and if you compete on the same turf then so be it.

tim

and PS: my baybrides.com.au ranks above all of them except 1, so a domain name isn't the gold road