Internet Lawyers Advice Required

[Web_Designer]

I am looking for some advice from a lawyer who deals in Internet law.

For example, a UK company is trying to claim the domain name of a website I have had for 2 years now, they claim it is too similar (OK, maybe, by one word, mine has UK in it),they also set-up 18 months before me.

Yes I provide the same service as they do and in a similar way, but its not a copy of their site or content, nor did I set-up the site with malicious intent.

They are claiming that my business is interfering with theirs and members are becoming confused between the two sites.
They want me to close the site and hand over the domain name to them. Their solicitor has sent a bullying letter and a form for me to sign to hand the rights over to them.

Yes this company is genuine and I can sort of see their point, BUT... for the passed two years I have built a business around this site and why should I give it up just because they got there first and they want me to.

Do I have any rights to keep it after all this time?, maybe fair competition laws or something? Can anyone help with this I would greatly appreciate it.

 

[Scottish Business Owner]

Andy,

I've actually had this done to me where an individual tried to copy this site using a very similar domain. They claimed to have never heard of this site but they were actually a member and had posted on here!

I appreciate the circumstances aren't the same completely but from my point of view it was important that I protected both the brand and the community we had developed and not allow anyone else to undermine this.

What I can tell you is it can get very messy and the solicitors letter is really only the tip of the iceberg. They can actually go to nominet and ask for the site to be taken down and passed over to themselves. Your going to need to show why you chose that domain etc, were you aware of theirs?

One thing I would say is a small anomaly is why they've taken so long to make an issue of it. I discovered my issue very quickly and was hot onto it but waiting 18 months to send a letter seems strange.

I'd love to try and sound more positive but it really all boils down to whether you feel strongly enough about it to fight it and that I have no doubt will cost money. From memory even a nominet dispute can costs over £700 when parties cannot agree and it has to go to arbitration. It's really easy to get caught up with things like this and it consume you, all I would say is try and not let that happen.

 

[Jack Kane]

I enlisted the help of Sneddon & Son for a dispute not so long ago, and the 'Son' is an internet specialist - Sneddon and Son SSC - Solicitors and Estate Agents, West Lothian. - Contact Us

Contact the Bo'ness office.

All the best.

John

 

[Canary Dwarf]

Andy
If it is a UK domain, the nominet website provides a lot of good information at nominet.org.uk

 

[Web_Designer]

Thanks for all your help and suggestions.

I did think of replying and offering the domain for sale at a reasonable price, to cover my costs, but this would put me in a legal predicament and make me out to have deliberately set out with the intent to make money from them by cyber sitting a similar domain to them.
I have read so much about this and most of it is conflicting and my head now spins.
The majority of the information seems to favour the other company simply because they were their first.
Seems very unfair really.

If anyone can add to this please do..

Many thanks

 

[stuarty]

I'm no lawyer but we went through this same situation and I can only pass on what we learned. (We were the pursuers)A company was "emulating" us, our services and even looked like our site. We thought we had the strongest case possible but unless we could prove that our domain was unique, a registered trademark and our service had a patent then we were totally stuffed. The only thing we could do was claim they were "passing off" themselves as us - at least I think that's what the term was. From memory, it means deceiptfully imitating a company to obtain business or something like that. Again I stress that I'm no lawyer so maybe a lawyer on here will set this right if I've got this wrong.

We were told if a domain name uses generic terms like "cheap printer cartridges uk .co.uk" and a rival sets up using "cheap printer cartridges .co.uk" then there's not a single thing we can do about it and it would be seen in court as sour grapes.

Re nominet - take apple dot com and apple dot co.uk - the computer giant can't do anything about obtaining the uk domain so but you'd need to do your own research from this.

I suspect their lawyer is not very clued up on this sort of stuff and is maybe trying it on. For example, ebay can't stop people setting up clone auctions, google can't stop someone setting up rival/clone search engines - there was one called booble and now one called oogle dot com. Poker companies like onlinepoker and pokeronline - both dot coms can't do anything about the so called "confusion" their lawyer is talking about.

I'm sure there will be a precedent that you can refer to.

Basically if your doing legitimate business in an open market and you're not copying anything such as logos, trademarks or mission statements then there's little they can do. But like I say - I'm not a lawyer and this is only what I learned from our situation. Yours may be totally different.

What you could do is contact the citizens advice bureau or trading standards for free advice. You could write to their lawyer asking them to clarify their legal rights on the domain name and service line.This way they will have to write back to you but they would incur costs I'd imagine? You could present any info to the citizens advice for clarification. If you were to do one thing at a time - use the ebay example in one letter then wait for them to write back. Next use the google example then wait, then the apple example then wait etc. etc. You'd gather up info as you enquired.

Have you tried any of the legal forums?

Hope that helps.

By the way did I tell you that I'm not a lawyer.

 

[peteark]

A similar thing happened to Chris Slay, a current client of mine

Chris owns acronrecruitmentsw

He received a solicitors letter from acorn recruitment

Chris got his own legal team involved, I am not sure what went on exactly, all I know is it was a complicated process, even the lawyers were not 100% sure. As it turned out both parties have agreed to just leave it.

As the Internet is a fairly new invention legal precedents need to be set both national and international. Once precedents are set, from lengthy, expensive legal battles, lawyers will be better placed to give more accurate feedback to their clients.

I would imagine the changing of the odd word here or there is not really the issue, the real problem is you are supplying the same service. Would a person be justified to purchase e-bay.com and set up a very similar platform? I have just checked the domain and as I thought, it is not a 2 bit auction house.

Me, I would apologise and get a new name. You may dodge a bullet this time, however who's to say the same subject will not raise its head in the future.

Asking them to purchase your domain will just dig the hole deeper, I would ask for this line to be struck from this index-able forum.

 

[Web_Designer]

I'm no lawyer but we went through this same situation and I can only pass on what we learned. (We were the pursuers)A company was "emulating" us, our services and even looked like our site. We thought we had the strongest case possible but unless we could prove that our domain was unique, a registered trademark and our service had a patent then we were totally stuffed. The only thing we could do was claim they were "passing off" themselves as us - at least I think that's what the term was. From memory, it means deceiptfully imitating a company to obtain business or something like that. Again I stress that I'm no lawyer so maybe a lawyer on here will set this right if I've got this wrong.

We were told if a domain name uses generic terms like "cheap printer cartridges uk .co.uk" and a rival sets up using "cheap printer cartridges .co.uk" then there's not a single thing we can do about it and it would be seen in court as sour grapes.

Re nominet - take apple dot com and apple dot co.uk - the computer giant can't do anything about obtaining the uk domain so but you'd need to do your own research from this.

I suspect their lawyer is not very clued up on this sort of stuff and is maybe trying it on. For example, ebay can't stop people setting up clone auctions, google can't stop someone setting up rival/clone search engines - there was one called booble and now one called oogle dot com. Poker companies like onlinepoker and pokeronline - both dot coms can't do anything about the so called "confusion" their lawyer is talking about.

I'm sure there will be a precedent that you can refer to.

Basically if your doing legitimate business in an open market and you're not copying anything such as logos, trademarks or mission statements then there's little they can do. But like I say - I'm not a lawyer and this is only what I learned from our situation. Yours may be totally different.

What you could do is contact the citizens advice bureau or trading standards for free advice. You could write to their lawyer asking them to clarify their legal rights on the domain name and service line.This way they will have to write back to you but they would incur costs I'd imagine? You could present any info to the citizens advice for clarification. If you were to do one thing at a time - use the ebay example in one letter then wait for them to write back. Next use the google example then wait, then the apple example then wait etc. etc. You'd gather up info as you enquired.

Have you tried any of the legal forums?

Hope that helps.

By the way did I tell you that I'm not a lawyer.

From a non-lawyers point of view that was very interesting and thank you for your advice. I have been told similar advice from someone else just recently who has been through a similar problem.
I have contacted many lawyers/solicitors, online or offline, but the specialists cost an arm & both legs, the high street business lawyers are often not able to help because its not their speciality.
I think we are still in a grey area with domain name ownership and rights.
I was even told that it's their fault if others step in with similar domain names for not buying all the closest possible combinations when first setting up their website, after all they only cost peanuts to buy.

They are trying to accuse me of "passing off" , yes I offer the same services but I do not use any of their content, images or even site software.

Just one point that really gets up my nose, two years ago I set up this website and now because my domain after all the hard work is right under theirs in the results they now complain.
I think they just want the domain name for themselves, in which case they would profit from it, this cannot be allowed.

I do like the letter writing idea to their solicitors, that gives me something to think about.

many thanks for your advice, and I am aware your not a lawyer