Descriptive Trademark .com

[UrlPortfolio.com]

Hi there just looking for some advice on a domain I own.

After 10 months a large (£75,000,000) a year turnover company has decided to pursue the .com domain I purchased in 'good faith' to build a community portal relating to one of the words used in the domain. Unknown to me at the time of registrering the company owned the .co.uk domain and suprisingly had a UK trademark in place from not only a logo but also a two word descriptive company name. ( kinda like British Gas but more local and not gas related ;-).

The usual abandon the domain emails came through from a senior director, and after I replied politely yet forcefully that I had aquired the domain legitimatly and that I would not relinquish it, suprise suprise a letter turns up from their duly appointed solicitor.

Unphased by this due to dealing with a number of these before, from companies larger than this particular PLC, I am preparing my stratergy to defend the domain.

As I have never attempted to sell products as the company, use any trademarked images or attempted in anyway to portray myself as the company in question, the site is after all going to be an information portal for business's and residential use of this commodity, along with information from clubs and societies that are relevent to the 'element' used in the domain name; I feel I have good grounds to protect against their proposed injuction and due to the descriptive nature, possibly have a good case of overturning the text based element of their mark.

I dont have loads of cash, but am willing to invest some money in defending this name, so I suppose my question is, do I try and get the trademark reconsidered for £200, or spend this money on a fancy laywer who can wear a suit better than I can if it does end up going to court.

Oh yeah and I name other domains that have the same naming format, eg locationdirectory.com locationnews.com etc etc.
Any thoughts or questions are welcome.

 

[HOWARD]

As long as you have a legitimate business use for the domain (community portal web site) and did not know that they had a UK TM, it would apper that the domain could be successfully defended in a UDRP action. DO NOT offer to sell it to them, but if THEY make a reasonable offer, you MIGHT consider it.

 

[INFORG]

You said the site is "going to be an information portal". If you haven't made any progress (that you can prove) toward that end in 10 months, I think you will have a hard time showing legitimate use.

If the name is something like BristolEnergy.com and that is the name of your local electric company, you will also have a hard time pretending that you never heard of their TM, since it's on your monthly bill.

We don't have all the specifics, but I think you know which way this will go if you aren't being truthful.

 

[UrlPortfolio.com]

Couple of extra points,

a design was purchased within days of the domain, a template from templatemonster, and some customisation has been undertaken.In addition a number of companies were contacted and requests for brochures etc were reponded to.

Surely just because a utility bill turns up, doesnt constitute knowlege of trademark.

Thanks again for input.

 

[DaddyHalbucks]

Surely just because a utility bill turns up, doesnt constitute knowlege of trademark.
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I would not bet the farm on that.