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Ash
Ash, Solicitor
Category: Law
Satisfied Customers: 10915
Experience:  Solicitor with 5+ years experience
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I work in the medical health field.I have a website by way

Customer Question

I work in the medical health field.
I have a website by way of example called www.london-headclinic.com. [not real and note the hyphen.
I have been using this domain for the past 8-9 years, maybe more, which is the only one that I have. It was registered in November 2005 but I really can't remember when it went live.
I also have a registered limited company eg. London Head Clinic Ltd [not the real name] incorporated on 5th May 2010 but is remains dormant.
I got a letter from Patent Attorneys stating that CAL Ltd [not real] and a health professional were owners of LondonHeadClinic [not real] and also had corresponding domain names of www.londonheadclinic.com [not real] registered in April 2008 and www.londonheadclinic.co.uk [not real] registered in September 2005.
They state in the letter that CAL Ltd and the health professional have acquired a significant reputation and goodwill through use of these two domain names and corresponding business name of London Head Clinic even though I own the Ltd company name. They state they have carried out a lot of advertising and promotion in numerous ways.
I own the google adword for London Head Clinic. They have stated that have only recently become aware of London-headclinic website and make the following allegations:
1. As I offer the same services as they do that the registration of my website has been used in a manner which takes unfair advantage and is unfairly detrimental to them;
2. That it is an ‘abusive registration’
3. As they own ‘unregistered unregistered trade mark rights and goodwill in London Head Clinic within the UK that this amounts to mis-representation and this amounts to an actionable ‘passing-off’.
They want me to sign undertakings by end of the month that firstly I will transfer ownership of my website to them and also transfer the google adword and any re-branding should not be similar to theirs.
What are my rights to defend this action? Most of the work from referrals or word of mouth. I wouldn't loose a penny if I rebrand. Do you think there would be any mileage in order to get this off my back to simply offer to sell both to them? I am too busy to fight them and my ego is hurt more than anything as I feel violated.
Submitted: 8 months ago.
Category: Law
Expert:  Ash replied 8 months ago.
Hello my name is ***** ***** I will help you with this.It hurts them that much but it has taken them 9 years to find you?Are you offering services in the same location and the same industry sector please?
Customer: replied 8 months ago.
Hi, thanks for your message. Can you ask questions you require in writing please as may need to ask my wife who assists me for info etc. Please let me know the costs of putting questions to me. Also, I looked into registering the trademark of eg. London HeadClinic Ltd as someone who had it withdrew their patent app. It was for a different business altogether weirdly. I think her name may have been 'Head'. As stated I do own the limited company of London Head Clinic [by way of example again]., Many thanks
Expert:  Ash replied 8 months ago.
Do you trade nationally and do they trade nationally?
Customer: replied 8 months ago.
Hi, both are based in Harley St. London. Both websites state 'LondonxxxxClinic and mine is London-xxxxClinic. Clients/Patients come to us. They may come from any part of the country for medico-legal work but it is predominantly London and home counties based in terms of clients/patients for both me and the other company. The clients/patients come to us and not us go to them unless it is an exceptional circumstance such as immobility.
Expert:  Ash replied 8 months ago.
Ok - well then you dont need to worry. You have been trading for such a long time I cant see how they are saying you are passing off. They havent been bothered for the last 9 years and I cant see how they can say they are now.You have been trading without bothering them. I would write back and say its taken them 9 years to even bother writing to you and if they were that concerned about passing off they would have written earlier.Clearly your activities have not caused an issue and its clear that consumers wont be confused between you and them, which is the testCan I clarify anything for you about this today please?Alex
Customer: replied 8 months ago.
Well I was hoping for a bit more meat in response to their letter in particular a bit of law to throw back at them - dont want to get to point of them issuing proceedings. What can I say in legal terms as I have no law to back me up. I thought that is what I would get from you. A short note of the law
Expert:  Ash replied 8 months ago.
Passing off the test is this - would a consumer be confused between you and them as per Trade Marks Act 1994.If the answer is no, then there is no passing off. If the answer is yes then it could be.That is the legal position. However given you have been trading for 9 years and I assume have a different logo, style of font for letters etc then it would be difficult to see how you would be passing off.There is a great deal of guidance here:http://www.slaughterandmay.com/media/39139/is_there_still_a_hole_in_this_bucket_-_confusion_and_misrepresentation_in_passing_off.pdfBut from what you have not said, there is no confusion here, you have a clear right.
Expert:  Ash replied 8 months ago.
Can I clarify anything else for you? Alex
Customer: replied 8 months ago.
My web domain provider has a Dispute Resolution Service (DRS) for rights holders to dispute a domain name registration. The other party do not have a DRS. Is there an independant DRS for disputes as to Web copyright etc that I can refer to in my letter to them?
Expert:  Ash replied 8 months ago.
Web yes it would be WIPO:http://www.wipo.int/amc/en/domains/
Expert:  Ash replied 8 months ago.
Does that help? Alex
Customer: replied 8 months ago.
Yes. Thanks.Will call it quits. Thank you for your help.
Expert:  Ash replied 8 months ago.
Happy to help. If I could ask you to rate my answer before you go today, otherwise the site does not credit me for the time spent with you.
Expert:  Ash replied 8 months ago.
If you could rate 3,4 or 5 stars so they pay me I would be most grateful. Thanks in advance. Alex
Expert:  Ash replied 8 months ago.
If this answers your question could I invite you rate my answer 3, 4 or 5 starts before you leave today.I am only paid for my work on this question if you rate my answer, using the star system at the top of the screen. Please do not forget! Thank you.Please bookmark my profile if you wish for future help: http://www.justanswer.co.uk/law/expert-alexwatts/

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