For some reason a certain manufacturer doesn't like the use of one of the brand names in domain names even if those domain names are promoting a car club which is a fan of the brand in question. I have been dragged into potentially being sued for passing off as clearly the legal profession are unable to understand what a car club is and what it is for. Luckily the one domain that they are trying to maul me over I have already transferred ownership to the other unfortunate who is getting sued for the same reason. I am no longer anything to do with the club in question. They claim a person would be 'confused' by the use of the manufacturer's name and logo. Yes, only if they were terminally stupid.
How will car clubs survive if heavy handed manufacturers prevent the use of logos or even the name of the brand in question? How confusing will it be to have 100s of car clubs with no reference to which manufacturer they refer! Another club promoting the same brand have also been collared. Since that club was formed many moons ago you'd think they would want positive promotion. Apparently what they really want is to hack off loyal owners and club members and remove their rights to even use their names. Taking to its illogical extremes are we even going to be preventing from taking their name in vain? How would be order one if we aren't allowed to use their brand name!
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That doesn't strike me as being unreasonable at all.
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teabelly, I guess you won't be sued (again) or HJ threatened if you tell us who you are talking about? Or are you under orders not to mention them by name?
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I don't want to mention names as it isn't at court stage yet. Either the club has to cease to exist or they will sue. Some thanks they get for a club promoting their cars!
MM do you mean what I said doesn't sound unreasonable or the m/f's attitude ie they want to shut down all club sites using their name?
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It's a bit difficult to picture exactly what you are describing without reference to real names and precise context.
So, I own a Boggs Super Oaf Mk2. I am a member of the Boggs Owners Club, and it has a subsection dealing with the Super Oaf model. The website states that it is in no way owned by or part of the Boggs Corporation Inc, and any views expressed are purely those of the club or its members. The register sub-section displays the well known Oafish logo at the head of the page. The web page can be found at www.Boggssownersclub.co.uk.
There are sections specialising in other Boggs models - eg the Snail, and the classic 12345 .
Which of these words are they claiming ownership of - Boggs, Super, Oaf, Snail, or 12345 ?
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The website has the disclaimer to say that it is copyright of the club and it is nothing to do with the m/f It is called club[m/f name]sport.com and there are a few others like m/f name.model.co.uk and a few other related sites that point to the same place.
It really is a serious issue. They are claiming ownership of anything with the manufacturer name in the title. They have ignored another site that is related which just modelnameforum.net.
They are also complaining about an animal logo that is used in relation to their cars too.
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Don't you just love the daft laws in this country?
I see it that a club will promote the brand and the need for spare parts direct from a manufaturer.
Seems they're cutting off their nose to spite their face.
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The official Mazda site has a link to an MX5 owners' club site, with the usual disclaimer.
Problem in the OP's case might be the manufacturer concerned had a bad experience with an owners' club full of numpties using its name.
Scatter-gun approach to solving the problem and the sensible clubs get wiped out with the idiots.
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I've heard of this occurring before, and I am the web officer for one club where there are two associated with a manufacturer. However both clubs get on well with each other, often invite the other club to events, and both have a good relationship with the maker in question - indeed, they sponsor our race series!
I know what the maker has copyrighted and don't use any of it on our site although I would have thought if I wanted to, permission would be quite easy to get.
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The club was in the process of obtaining explicit permission for logos etc and the m/f group had been positive to the club's existence so why it has suddenly turned nasty no one knows.
Bored ip lawyers is probably as good an explanation as any!
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The club was in the process of obtaining explicit permission for logos etc
If I've read this correctly you were using the logos, etc, without permission before, then?
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The m/f was approached and they were positive about the club and positive about granting permission. The club has its own logo which incorporates the m/f name and the m/f name is used within the site and a few of the m/f's logos. There is a disclaimer on the front page to show that it is not the m/fs own site. If the m/f had been negative about granting permission then they wouldn't have been used. Permission was applied for but nothing was heard from the m/f until this legal threat appeared. Obviously there were a few of us that did suggest that using the logos at all before permission was granted in writing might not be the most sensible thing to do but the web master who was the person seeking permission assured us it would be ok and that the m/f had been positive and was enthusiastic about the club. Clearly this wasn't the case and the future of the club has been threatened through the aggressiveness of the m/f and the stupidity of the web person.
I am no longer anything to do with the club but have been dragged into it as the club haven't updated the details for a domain name which I used to own which I transferred to them when I left. Clearly if this had been done no one else in the club would have been any the wiser as the web master hadn't informed them of the legal problem and claims to know nothing about it.
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What if you register/host the site in a different country's server?
If it really happens, it is definitely not a good sign. I often find car club/forums more useful and informative than actual manufacturers website.
Could you please reveal the manufacturer? I know naming/shaming not allowed here, but this allegation goes against very nature of all car related sites.
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The issue is teabelly you are doing it for good reason. There are many people out there ripping off trademarks and misrepresenting all sorts of manufacturers and these are not wanted. Unfortunately you have to manage this to the lowest common denominator, which isn't someone with good intentions.
I know the smartclub have an excellent relationship with smart UK and smart Europe, but this has taken years of relationship management. So not all manufacturers are as twitchy.
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I blame search engines. They make it too easy for underworked IP lawyers, retained by the manufacturers for other, more valid, reasons; to pad-out their massive fees by searching for anything with the brand name attached.
The lawyers representing both a UK luxury manufacturer and their Bavarian owners, are pretty legendary at this - even down to spewing-out threatening letters to, totally unconnected, tiny village garages with, purely coincidental, initials.
As the manufacturer probably has no detailed knowledge of their delegated trademark-enforcement activities; maybe a letter to the UK CEO would be a good idea?
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Might not a face-to-face meeting with the mfr's PR or publicity supremo sort this out reasonably painlessly? At least some explanation of the company's apparent volte-face would probably be given. A civil approach at high level seems to be indicated, unless it has already been tried of course with very negative results.
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It can't be Vauxhall - they spend a great deal on helping the various clubs, turn up at shows and hand out Trade Club membership cards to club members which saves us all quite a bit. www.vboa.org.uk/
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So the logo WAS used before permission was granted and you only have the other guy's word that the manufacturer was enthusiastic - one for everyone to learn from, I think.... Obviously somethings riled the company into action, either your site or another... I'd get yourself distanced asap if I were you!
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I have distanced myself already!
I think the UK arm of the m/f is getting it in the neck as they have let go/didn't register in the first place quite a few domains which I assume the parent company is annoyed about.
Why they couldn't just approach the current owners and do a reasonable deal rather than this heavy handed give them back or else we'll sue I have no idea. It is really reflecting badly on the m/f.
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teabelly,
No criticism, but this is nothing to do with car clubs using a manufacturer's name in the course of legitimate club activities.
Your last post tells me it has all to do with domain name ownership - different kettle of fish altogether.
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How can a car club operate these days without owning a domain with the m/f name in it somewhere!? If you are m/f X motor club then you need m/f x motorclub domain or similar. They are objecting to that and demanding the return of all the domain names as well as removal of logos etc which in essence will shut the club down as it is mostly an online entity.
One domain has been registered for 5 years. Nominet approved the registrations and could have objected and indicated the domains were unsuitable to be registered outside the m/f group. They didn't. Icann didn't step in and say the same either. The m/f has had plenty of time to do something, plenty of time to be reasonable but no it goes at a small club with all guns blazing and demanding money with menaces.
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Have you got the opinion of a trademark attorney? - They are a very different thing to a lawyer, even one specialising in IP. They will be able to give you proper advice about where you actually stand on trademark infringement, and tell you what your options actually are. Trademarks are a very 'fluid' area of law - negotiation is very much the done thing.
If you need a recommendation of someone you could use, make contact with me via the mods - I'm happy to recommend the lady I use for my company, she is excellent.
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Teabelly,
Reluctant as I am to enrich the legal profession, the advice of Gordon M to get the opinion of a specialist should be heeded.
You say the manufacturer is 'demanding the return' of domain names.
Really? Tell 'em to make an offer in the region of £1m and see what they say.
Seems to me they've messed up big style and have now hit the panic button.
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Can you afford £275 per hour?
I would recommend a softly softly approach and see if you can appeal to their better nature........I know what you are all thinking, but would any of you want to go head to head with a barrister/solicitor on retainer?
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There is a database of decisons of the Nominet Dispute Resolution Tribunal at:
www.bailii.org/uk/cases/DRS/
Looking back through the past 5 years, there does not appear to be a single case relating to car clubs though. The key issue to be resolved is generally whether the registration is abusive or not but registered trade marks do come into play. This is probably a case of the m/f's TM attornies using every effort to maintain the distinctiveness of their client's TM registration, seeking to prevent any unauthorized use of the mark in whatever form, hence the warning letters.
As Gordon said, negotiation is usually the best route and if the use of the TM by the club is licensed, it is no longer a threat to the m/f.
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Having been there last year domain names are a nightmare. We sold a domain name for a reasonably large sum to a large company with the same name. But we did not register it with that intention, it was a "pre-nominet" name and we were the registrar for the name which made the transfer interesting.
Taking Ford as an example.
Copyright does not stop me registering ford.co.uk or ford.com if Ford are stupid enough to let the registration lapse. I could then stop them from using it - but nominet may take it off me and pass it back to Ford because for domain names being the registered owner is not everything. Also Ford's copyright / registered design rights may stop me using it for any purpose related to the motor industry - but probably not for selling baby clothes or baked beans. Oddly enough JCB could stop you selling baby clothes under that name as could Caterpillar - neither related to clothing 10 years ago.
As Gordon suggests - take advice. At worst the advice will be to do as the manufacturer demands, at best you may be in a very strong position. The specific details of the case will decide which.
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