Hello i run a web site that offers free email, a forum is proposed but not yet implimented.

The domain is very similar to another web sites name, they have demanded, through a solicitor, that we cease trading and give up the domain.

i will not give the domains out but here is a comprason

our domain = dogfriend.co.uk

there domain = dogsfriend.co.uk


their service is to help owner find lost dogs

our service is free email for dog owners with possible forum.


they claim we are

"relying upon the illcit appropriation of the substantial good will invested in their mark and provide services under a business name and url that are confusingly similar to theirs."

we registered our domain nearly 2 years after them.

the domain name is not a registered trademark

does anyone have any experience of such a dispute?


thanks for help

We had a similar problem with someone, but we worked it out without lawyers. On our issue, we were the plaintiff, though.

Seems like if they got a solicitor, you might want to get one to respond.

But you might want to see if you can politely work it out with them.

If nothing else, they should pay you for the domain name if they want it.

i believe that you are entitled to use your domain name.

Dont be the slightest bit intimidated by letters from lawyers threatening legal action, especially if there is no trademark on the domain name.
Not sure what they mean by "good will invested in their mark", if they do have a trademark and it was registered prior to your registering your domain name, then they may have a strong case.

The main thing is not to do anything that would liken your site to theirs, keep your site unique and your own fresh design.

I agree with bitserve, that if they want your domain name they should at least offer to pay you for it.

if it was mydomain.com and mydomain.net - that would be a different story.

There's nothing wrong with having a domain with a differnet letter in it. I think they need to read up on trademark law (not sure about UK laws, but in the USA their lawsuit would be thrown out of court).

Just because your domain might sound like theirs, it doesn't allow them to claim ownership. If they truly want it, sell it to them.. or force them to spend lots of money on a lawyer. I really don't think they're going to spend the lawyer fees over a domain like this.

Let them play there little games...

One of my ex partners had a .com domain exactly the same as a .com.au from Australia and since my partner was based in Australia they wanted to take him to court... They would send him all this legal info clause this this and that, he would come in and show them to me!

They took him even to court, It was so funny cause the other guys were not after the domain name really, they were after his money...

he represented himself in court, let them give out there case why he was making them broke and all this bull...

The sites had nothing to do with each other, my partner did not even have a product on it ( It was no illegal material either).

Well ended up they paid alot of money for court and lawyers etc etc and fell into bankrupcy a fee months later!

just alittle experience that i thought was serious but since playing it cool all paid off!

Originally posted by xnet
There's nothing wrong with having a domain with a differnet letter in it. I think they need to read up on trademark law (not sure about UK laws, but in the USA their lawsuit would be thrown out of court). It wouldn't be likely to be settled in the courts in either country. A domain name dispute, if it were in a gTLD like .com would be settled under the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

A dispute in the .uk TLD is handled under Nominet's Dispute Resolution Policy (http://www.nic.uk/ref/drs-policy.html), which is essentially similar to ICANN's UDRP.

In any case, registration of a trademark isn't essential to winning either a disute under the a domain name dispute policy or a trademark-infringement lawsuit -- more important is the establishment of "prior use." On the other hand, there are points that can be won simply because a name or term has been registered; the issue of whether it is a "generic term" is one of those.

In trademark disputes, making a mark plural or making a mark singular has no trademark significance -- that is, an automaker calling itself Generals Motors would be infringing on the trademark rights of General Motors; existence or non-existence of pluralization isn't relevant.

Similarity, or dissimilarity, of the two sites isn't relevant in a domain name dispute.

These are general points, and since carpman hasn't said what the actual domains in question are it's not possible to comment accurately on the specific case. In general, though, it seems like it might hinge on wheter the other party can establish that they have rights to the name they have registered. Presumably the next point of a dispute, whether the names are "confusingly similar" would be an easy win for the complainant if in fact the only difference is the existence of the plural form 's'. There have been several UDRP decisions which would back that idea: the addition of such minor elements has consistantly been found not to offer protection.

The best argument might be that the term is generic; that might be winnable if the name (or part of it) hasn't actually been registered as a trademark. It also might be helpful if the complainant company has little name recognition. Again, without knowing what the name is, there's no way to say. It's also impossible, without knowing a complete history, to judge the other key element of a domain name dispute, whether the name was registered and is being used "in bad faith" by the respondant.

I know this is an old thread, but I just couldn't help but reply on this one!

This happened to me a while ago.

I purchased the domain digital-siren.net as a personal domain almost a year ago. Just before I sold the domain to someone else, I recieved an email from some asking me to hand over the domain.

Their company was fully entitled digitalsiren.com

my domain was digital-siren.net

Needless to say, a friendly phonecall from my lawyer got them to shut up and leave me alone. Sometimes, lawyers are the best thing to frighten little insecure buisness that want to ramp on the personal domain communities. The lawyer stated the facts, and then urged them to drop the matter, or else he'll be more then willing to met them in the Texas states courts with his team beside him. *grins*

I feel that unless trademark is fully registered and paid for with the US copyright offices, I could care less whether or not you think I am infringing on your freaken "trademark". If they want that domain, they should have registered it, and the only way I'll hand it over is if they pay double or tripple (depends on how much I paid for the domain, how much I love it, and how popular it is with my visitors) how much I paid, and the next 2 years of a new domain to replace it.

Originally posted by Filia
I feel that unless trademark is fully registered and paid for with the US copyright offices, I could care less whether or not you think I am infringing on your freaken "trademark".Of course, what you "feel" would be irrelevant if were to go before a judge or a WIPO arbitrator, but in the case as you've told the story here your potential opponent was right to back down. They wouldn't be likely to win a dispute under the UDRP. But that doesn't mean that under other circumstances with different domain names and company names involved someone couldn't take possession of a domain name you own regardless of whether they have registered the same term with the USPTO. Such registration, both under the rules and with regard to existing case law and precedent, isn't necessary. No matter how you feel.

As for the Texas state courts, by registering an ICANN-administered domain name you implicitly agree that arbitration under the UDRP is the first recourse in a dispute. The case would only end up in court as an appeal to an arbitrator's opinion.