I've received a DRS

**martinc** · 28-01-07

Hi,

I've received a DRS from Nominet with a complaint form via the Complainant's big, nasty lawyers regarding my registration of <brand_name>.co.uk.

It quotes many past cases, uses lots of legal-speak and gives me the overall impression I don't have a leg to stand on.

Quite frankly, I'm not massively bothered, having read experienced AM's like Shoemoney give up similar domains without a complaint.

However, I'd just like to know if anyone had any tips for replying to the DRS - given that I'm keen to wrap it up quickly.

Also, what are the changes of getting the transfer and associated costs covered?

**Lee_Owen** · 28-01-07

It depends what the domain is.

Transfer is £10 plus vat.

**Stellar** · 28-01-07

On what grounds do they have rights to the .co.uk?

Is it trademarked or someones registered business name?

**accelerator** · 28-01-07

Things to consider would be:

- What services are covered by their trademark.

- Have you used the domain in a way that has traded off their trademarked brand. It will weaken your case if you have.

- Whether you have used the domain name at all.

- The date of the domain name registration versus the date of their trademark registration.

- Have you attempted to sell the domain.

There are a number of people that have been through the DRS procedure over at:

http://www.acorndomains.co.uk

and they will provide their opinion. There are lots of past case studies there too.

Rgds

Accelerator

**martinc** · 28-01-07

It's trademarked in the USA. It's a popular brand. I don't want to say to much more about it. They have the .com.

The website has been in use for under a year and it's just come to their attention. I've not attempted to sell it.

I'll check Acorn Domains. Thanks for the tips.

**bapages** · 29-01-07

Originally Posted by martinc

It's trademarked in the USA. It's a popular brand. I don't want to say to much more about it. They have the .com.

The website has been in use for under a year and it's just come to their attention. I've not attempted to sell it.

I'll check Acorn Domains. Thanks for the tips.

If it is nit TM in the UK I would tell them to stuff it. Also was not there a thinsg about non UK registering a .co.uk

**rob.co.uk** · 30-01-07

Hi,

feel free to drop me a PM with details of the DRS case. I have worked on both sides of the DRS system for various clients with good results

Cheers,
Rob.

**Dynamoo** · 30-01-07

Yes, my understanding is that if it isn't a trademark in the UK then the trademark status in the US is irrelevant. Nominet also have a concept of an "abusive registration" which is explained here: http://www.nominet.org.uk/disputes/drs/abuse/

These are generalisations - much of it depends on the specifics of the domain, the name in question and the likelihood of confusion.

(I am not a lawyer, btw, but I did successfully use the trademark argument to block a C&D from another party).

**martinc** · 04-02-07

No word of UK-specific trademarks:

1. Registered trade marks Complainant has three registered Community trade marks and four pending Community trade mark applications for <removed> and <removed> (Annex 1). Complainant also owns US registered trade marks for <removed>, <removed> and <removed>. Complainant's marks are not generic or descriptive of its business, and are closely linked with it in the minds of consumers and the general public.

Registration of a domain name will act as a blocking registration where Internet users in the UK are likely to try to find a website by typing in a trading name or mark followed by the ".co.uk" suffix, for example by typing in www.<removed>.co.uk, especially where the mark owner already operates a website incorporating their trading name or mark and a ".com" suffix.

**Lee_Owen** · 04-02-07

You need to explain what you're posting or it's all gibberish.

It doesn't help that we don't know what the domain is, it doesn't help that we don't know which words form which parts of the complaint, and also is your last post detailing their arguement or some IP law? their arguement I would think... don't take what they write as given.

So what if they have the same wording with a different extension, it all depends how hard you argue your side at the time and from which angle, I can argue both sides and invariably do, I get mixed up sometimes but as long as I'm in the right argument I can usually explain myself.

I have domains that all other extensions are held by domainers, I have domains where all other extensions have sites on them, some the same, some different, my reasons for holding some domains are wide reaching, find an excuse/reason of your own and fight it rigorousley, fight everything they state and more on top, leave no stone unturned, react to everything.

It doesn't matter if the domain you have represents anything you have running currently, just the fact you might have in the future should suffice the adjudicator. I've got domains ranging from broadband to adult content to a cup of tea and christmas, there's no way I can work on all of them without staff, people buy up assets in advance of using them, so what if your business is diverse and has scope, what's that got to do with their arguement?

They talk about a blocking registration so you talk about a reverse domain hijacking, who regd first, who got there first, who did what, when, where first. Without knowing what domain, what keywords, what history, people on here won't be able to suggest the right course of action, my suggestion, get yourself in contact with someone willing to help on the acorndomains forum and go through it with them.

Also if you have the wedge, there might be some private IP'ers about, contact or shout for Mike Penman, not sure he can trade in this stuff for a certain length of time after leaving the halls of Nominet but he might.

It's not your fault their brand is weak and that a few people are forgetful and might type in .co.uk instead of .com, choose your arguement and fight it, you've only got one chance, put up a decent enough fight with a lot of content and they'll give in at mediation, alternatively if they're loaded know they'll win then they will pay the £750 and get a judgement and then pay a further £3k if they lose, if they lose that, well your price is there for asking.

But it's up to you where you go with this, you say you're not bothered, so ring 'em up and get the domain transfered. They're only lawyers, if they talk funny tell them it's ok they can be human for the next ten minutes.

**martinc** · 05-02-07

Sorry, my bad. I replied in response to Stellar's earlier post.

It's a quote from their argument.

"...if they're loaded...": they mention UK sales of $6M in 2005, I believe.