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Imitation is the best form of flattery...

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Scottish Business Owner

Scottish Business Owner

New Member
I've had our solicitor look at this thread this morning and she seems pretty comfortable with it. All I can say is that steps are being taken to pull this domain down. This whole experience has frankly been dreadful but i'm now clear in my mind that I wont be allowing anyone to try and piggyback on our site.
 

Brian McIntosh

New Member
Well done . After our chat last night, it's good to see the forum going places. PM me your number and I'll give you a call later on.
 
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stugster

stugster

Active Member
There are one or two comments on this thread that could potentially be regarded as libellous or be very close to it.. Careful.

No they couldn't. It's only libellous if it's not true. There is absolutely no reasonable excuse for trademark infringement.

Please, just to settle me, give me a reason on what grounds she should purchase a domain name that is one letter off this site's, and then forward it to her own business-related forum site?
 
PC

PC

New Member
There is absolutely no reasonable excuse for trademark infringement.

Did trademark the domain name?

In order to prevail, the trademark owner must show:

1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
2. that the party that registered the domain name has no legitimate right or interest in the domain name; and
3. that the domain name was registered and used in bad faith.


For example...

WIPO Domain Name Decision: D2000-1188


I am not saying that what has happened is ideal but where does it stop? Do I complain about pc-support.co.uk or you complain about easypcsscotland.co.uk or do we accept that it may/will/has happen and make ourselves better than the offending domain name?

Having watch the other sbf forum for over a week it is nowhere near as busy as this one and will probably never be. As I said elsewhere, from the impression I have of both sites, we are the John Lewis, they are the Lidl.


Just my 2 euro cents worth.... someone somewhere will no doubt object to them...
 
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stugster

stugster

Active Member
In order to prevail, the trademark owner must show:

1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
2. that the party that registered the domain name has no legitimate right or interest in the domain name; and
3. that the domain name was registered and used in bad faith.

If someone registered EasyPCScotland.co.uk, yes, I'd be going after them with my lawyer without doubt. There's not a genuine reason to be using the domain name other than to pass off their site as mine. The same applies here. The registration of the domain has been done so purely to try and divert any mistaken traffic from SBF to this other forum.

What is a trade mark?
A trade mark protects any sign or symbol that allows your customers to tell you apart from your competitors.

Here, there is absolutely no doubt (I have consulted someone who specialises in trademarks) that the text "Scottish Business Forums" is a trade name of this forum. There can be no doubt either that the domain name in question (the inappropriate one) is a close and intentional misrepresentation of the genuine one.

In my research, it is also evident that to secure a case against someone, it is much easier to do so with a registered trademark at the patent office. If the trademark has not been registered, then common law prevails and is used to make judgement.

The trademark is unequivocally owned by , and there is certainly a reputation of the trademark too. The difficulty lies within proving that the forums have been harmed by the illegitimate domain name... if that can be proven, then there is no defence.

Luckily, this law relates to trademarks in general, and not of domain names, where the regulations (especially of Nominet's .co.uk tld) are even more strict and precise. They are in place purely to prevent this kind of thing happening. Upon registering a .co.uk domain name, the registrant will have accepted the terms, and the domain in question is without doubt violating them.

From Nominet's website:

The 2005 case of <citigroup.co.uk> has potentially widened the law, with the judge making a statement to the effect that the possibility of confusion could lead to a domain name being actionable passing off. In his judgement, Park LJ said that passing off was occurring even though the registrant had registered the domain name some 8 years before and had not actively used it.

A very similar case to the one we have in question just now can be read as follows (in fact, it is almost identical to the situation we have just now):

Also in 2005 the Court of Appeal considered the case of <phone4u.co.uk>. The registered trade mark that the Claimants relied on was a graphical one, and the court spent a great deal of time considering the extent to which is could be relied on. However, in paragraphs 30 to 47 of the judgement the court found that there was passing off, finding that the use of the domain was leading to deception. The court also explained the difference between 'mere confusion' which was permissible and 'deception' which was not.

Domain names and trade marks

Using Nominet's dispute service, we can see:

What do I have to demonstrate to make a successful complaint?
In order to make a successful complaint you must prove, on the balance of probabilities, that:
a) You have Rights in a name or mark that is identical or similar to the domain name(s); AND
b) That the domain name(s),in the hands of the respondent, is an Abusive Registration.

In relation to section A, there can be no doubt that owns the mark and has an established and active trademark in use. Addressing section B is a bit more tricky. Nominet outlines an "abusive registration":
1. It covers both (a) the time of registration and (b) later use; and
2. It requires that there is unfair advantage taken of, or unfair detriment done to, the rights.


Timing Examples
# There was an 'unfair' motive when it was registered [ can prove this because of the current forward to the owners business forum]
# There is something 'unfair' going on now [ditto]


My biggest issue which is outlined perfectly by Nominet is this line:

Has the domain name been used to confuse Internet users?
If you are suggesting that users are confused by the registration of the domain name by the Respondent, how you say they are confused, why they are confused, what the effect of the confusion is, and preferably any proof that it has actually caused confusion (rather than just that it is 'likely' or 'obviously' going to do so).
 
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