Where do i stand?

DingleBerry

DingleBerry

DingleBerry

Associate
Joined
19 Oct 2002
Posts
1,731
Location
Cloud Cuckoo Land
I do a bit of freelance webdesign under a name, say for instance bubblepond.com and I own bubblepond.com and bubblepond.co.uk. I have just had some emails from bubble pond ltd (who didn't initaly identify themselves) asking if I wanted to sell my domain. I mentioned I used it for buisness contacts (fishing for a higher price :P), to which they identified themselves as Bubble Pond Ltd and asked if I present myself as "Bubble Pond" obviously hackles being raised.

Now...Bubble Pond Ltd is different to bubblepond.com BUT they are registered and did it first but are (I presume) in a different line of buisness. They clearly want bubblepond.com (and probably .co.uk) and to be honest I could live without them for adequate recompense.

The question is am I in a leagal bind as far as Bubble Pond being similar bubblepond.com. If so I cease using that as a "trading" name. i take it I can leagaly retain my .com and .co.uk and use them for a personal website should that take my fancy.

Bear in mind i turn over less than £1000 a year (told you it was small scale!) and I had no idea this company existed (and perhaps didn't when i registered it) nor do they have the trademark (by the sounds of it).

its not bubble pond by the way
 
Last edited:
ooo interesting. An update!

The tight wad has offered me £100 pounds for the pair!!! A shocking lack of grasp for their worth and how stuborn I can be.

He has told me to stop representing myself as bubble pond....which I'm not. I am bubblepond.com there is never a space and the .com is never missing. Plus he is a ltd and I am a sole trader in different buisnesses and areas of the country. He does not own the trademark either.

To be fair there isnt a website on that address, only a holding page...but that is largely irelevant.

£100 is taking the urnine though!
 
what would you be prepared to accept.. ?

think of a figure, and then email him back with more than that, then he will haggle and hopefully youll get what you would be happy with..
 
Maybe if you said what the domain was, we could make a better judgement to whether you had a case. If your business was called "cadburychocolate.com" you have no case at all.

You should use the www.companieshouse.gov.uk to find out how long the other company has been trading. Then do a bit of background research on the company.

As you are a sole trader, you can simply say you were trading under the name for several years as it would be hard for the company to prove otherwise. (although if you specify to the company you ALWAYS traded with ".com" at the end, you would really be shooting yourself in the foot as all they'd have to do is look up when you registered the domain name!)

The fact that they contacted you anonymously in the first place did not mean they were interested in buying the name from you. They were meerly trying to see if the domain was in use AND if you were just holding it to sell it. As it happens, you said you have a customer base.

Tell the company you have no interest in selling the domain name, as you have a loyal customer base and it would cause a lot of confusion for them.
If they threaten legal actions, simply say you are "eager to avoid any action which could adversely affect your company, however, the offer of £100 barely covers admin costs of transferring the domain, let alone lost revenue from changing the website address and the costs of informing your customers of such a change."

They'll take the hint.
 
Be careful because there are various dipute proceedings they can initiate, which could result in them forcibly removing the domains from your ownership.
 
I would have problems with cadburies for instance because of the trademark issue which these people don't own.

The domain is this. They are the Ltd version of the name without the .com.

They are not in the buisness of web design (admittedly I barely am). They only show up as registed at companies house, and as an agent for someone on imdb...thats it. And he emailed from a framestore cfc address (his employer i assume) so they are undoubtedly small.
 
PsiFox said:
Be careful because there are various dipute proceedings they can initiate, which could result in them forcibly removing the domains from your ownership.
Click to expand...

I doubt there's much they can do though as it's a different type of business and he's not using the same name, technically the .com and lack of space makes it an entirely different title in terms of trademarks (which nobody has in this case).

£100 is a joke I was offered far more for my own domain 5 years ago and turned it down. it's your domain, keep it unless he throws a wad of money your direction. I doubt anyone will find in his favour and if he's so tight he'll only offer £100 it's unlikely he'd want to initiate a legal battle.
 
Tell them to go jump.

You can legally trade as whatever you like, the only exceptions are registered trademarks and brands...of which bubble pond ltd are none!!!

How many people do you think are trading as say PC Clinic - probably a fair few hundred across thr country, every one of them is entitiles too as well. The only "problem" arises is when you register it as a limited company, and then the names tent to change a bit, say:

PC Clinic Ltd
PC Clinic
PC Clinic UK

All are essentially the samre, they all trade under pc clinic legally and not one has a claim against another to ask/tell them to cease trading.

So the bottom line is tell em to go away politely, they cant do anything as you are legitimately using the domain and you have every right to trade under that name.
 
Splendid. I'm going to ignore them then. This will either get them over excited or make the offer me more cash. I liked the way he justified the £100 by saying that I'm not really using it. Completely missing the point that its value is determined by how much he wants it rather than how much I use it.

Its not actually bubble pond by the way. I just used that just in case it was supposed to be a secret (considering the emails came from a film studio...might have been the next film or something) and so google might not find it. Its actually Thousand Monkeys Ltd for them and thousandmonkeys.com for me.
 
Last edited:
Be careful before telling him that they are both different businesses because one is "limited" and the other is ".com". You seem to be putting a lot of emphasis on this, but the truth is that argument isn't going to get you anywhere.

As I said, all it will do is prove that the date of incorporation of his "limited" company predates the registration of your ".com/.co.uk" domain names.
 
yes but it means its a different name! plus the lack of space. As slime pointed out there are buisnesses which have the same name +/- Ltd I don't see .com as being any different.
 
tenchi-fan said:
Be careful before telling him that they are both different businesses because one is "limited" and the other is ".com". You seem to be putting a lot of emphasis on this, but the truth is that argument isn't going to get you anywhere.

As I said, all it will do is prove that the date of incorporation of his "limited" company predates the registration of your ".com/.co.uk" domain names.
Click to expand...
Bubblepond Ltd does not exist though: A Companies House search for Bubblepond shows nothing.
 
Some basic stuff from notes for you to think about.

Intellectual property issues

Passing off (common law)

An established trader (individual, partnership, company, foreign company, etc) can sue if:

 a new business is using the same or a similar name (or copies product, packaging, etc);
 so as to cause confusion between the businesses (area, type of business, etc);
 with potential damage to the established trader.

Passing off is a common law action to protect business names and trade marks (even if they are not registered as such). The business suing would usually have to show:

 a property right in the name, e.g. by long usage and reputation;
 that the defendant is infringing the name in broadly the same line of business and geographical area;
 the likelihood of damage, e.g. by establishing diversion of trade or loss of reputation.

The usual remedy sought is that of an injunction, although damages are also possible but they are difficult to quantify.

Ewing v. Buttercup Margarine Co. Ltd. 1917

An established sole trader (Mr. Ewing) used the word 'Buttercup' as a business name for his grocery stores, and his products were sold under the Buttercup brand. The Buttercup Margarine Company Limited was registered as a limited company with the primary object of manufacturing margarine. Ewing succeeded in obtaining an injunction to restrain them from selling margarine under the name Buttercup in the areas of the country where his established shops were situated.

A more modern case is Exxon Corporation v. Exxon Insurance 1982, and shows the time and money spent by a big multinational corporation on researching a new name and getting it established.

Trade marks

Trade marks are registered with the Trade Marks registry, part of the Patent Office. A trade mark is registered in one or more classes of goods and services. Once registered, the owner is entitled to an injunction to restrain infringement by any other person.

A trade mark is usually a word or logo or a combination of both, used to distinguish the product or service of a particular trader. A trade mark must be distinctive. It must not just be a description of the goods or services covered by the application, nor must it be a word which another trade may legitimately wish to use in connection with their own goods or services, for example, one could not register 'sharp' for knives. The mark must be distinctive and not too like an existing registered mark. Also, it is not possible to register a mark which is very similar to an existing mark, as this could lead to confusion, or one which is deceptive or suggests connection with the Royal family or uses the union jack or other official flags or symbols.

Subject to any earlier rights which may be established, registration of a trade mark gives the owner a right to exclusive use of the mark in respect of the goods or services registered. The owner can sue for infringement of his registration if someone else uses the same or a similar mark on the same or similar goods or services. Every application to register a trade mark must specify the goods and/or services of the mark. The list of the goods and services must be a clear and complete description. The Registry uses The Nice Classification System which divides goods and services into 44 classes.

A European Community trade mark can be registered at the office for harmonisation of the Internal Market in Alicante. This will provide protection in all the countries of the European Union including the UK. The difficulty, however, is that if the mark is found unacceptable in any EU country, then the application will be refused completely. The advantage is the time saved in using one registration instead of registering the trademark in every EU country.

A trade mark can also be registered in other countries both within and outside the European Union. In most countries the procedure and classification of goods and products are similar to those in the UK, though the registration procedures and costs vary from country to country.
 
Jet said:
 a new business is using the same or a similar name (or copies product, packaging, etc);
 so as to cause confusion between the businesses (area, type of business, etc);
 with potential damage to the established trader.
Click to expand...

That makes me the winner then does it not. PLUS they are hardly established...in fact I might almost win that one.

Borris said:
I still see no reference to Bubblepond, however. As I said, it's your trading name, so register it as a Ltd company too.
Click to expand...

You've missed the part where I said that was an example :)

Freefaller said:
Why don't they just buy the .ltd.uk domain then if they are a ltd company?
Click to expand...

because its not as good :p
 
DingleBerry said:
yes but it means its a different name! plus the lack of space. As slime pointed out there are buisnesses which have the same name +/- Ltd I don't see .com as being any different.
Click to expand...
Trust me on this one. It's a poor argument. By all means, emphasise that you run a business called "thousandmonkies.com" but as soon as you start bickering that you're ".com" and he's "limited" you have already lost your case.

Simply say you have a different client base, different industry, and have been legally using the domain name since before the internet was invented.

By darting back and forth poorly thought out correspondence with lame arguments, you'll come across as an amature, and he'll put together a correspondence file, bring it to his solicitors, and say "get this domain name for me."
 
You must log in or register to reply here.
Back
Top Bottom