Use of websites - Laws

JW · Ace Joined: 11 Sep 2005 Posts: 1456 Location: hua hin

Currently Diageo group (Johnnie Walker Whisky parent company) are making us stop using Johnnie Walkers as the name of the bar - apparently we are breaking several laws, t are own www.johnniewalkers.com and they have also said that i have to stop using the website - anyone now if they can do this. What can they do?

Any help or advice would be very much appreciated. Its a bit crazy that a huge brand like this are concerned about our small bar!

Farang · Guru Joined: 09 Jan 2003 Posts: 661

Do a Prince here. Change the name to:

The bar formerly known as
Johnnie Walker
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JW · Ace Joined: 11 Sep 2005 Posts: 1456 Location: hua hin

We thought of that or JOHN e WALKERS, plenty of choices.

Really interested to know the legal side - it just seems mad that they are bothered about us!

Korkenzieher · Posted: Fri Apr 11, 2008 6:36 pm Post subject:

The website would probably be deemed as 'Cyber Sitting', though if you've registered it, it ought to be yours. Madonna successfully sued for return of Madonna.com, on the (alleged) basis that she was the most famous person in the world using the name Madonna. The Vatican's view on that claim isn't known :-).

As far as the bar name goes, if it is a registered trademark and they own it and Thailand is a signatory to the appropriate accords, then you would probably be on thin(ish) ice, should they decide to pursue it.

One approach would be to agree to a (subtle) name change, but only on the basis that they compensate you for a legally obtained asset - the web address (for inconvenience, re-building the site, advertising and the like). If they manage to issue a writ in Thailand, they will *probably* win. Depends how seriously you take the threat really. Do it through a lawyer, if you go that route.

STEVE G · Posted: Fri Apr 11, 2008 6:37 pm Post subject:

I haven’t a clue about Thailand, but in the UK I believe you have the right to use your own name for a business irrespective of anyone else using it.
It’s absolutely crazy that a company of that size could be bothered to take legal action over something like that, but I can imagine they would be much more bothered by the website than about a small bar in Hua Hin.
Let’s face it you see tiny bars all over Thailand named after drinks brands and I’m sure nobody can be bothered with them.
If I were you I would offer to sell them the website for a silly amount of money and see what they say to that.

Korkenzieher · Posted: Fri Apr 11, 2008 6:45 pm Post subject:

Yes, I agree - but it is probably the website that has brought the bar to Diageo's attention. Generally, you can have similarly named businesses so long as they don't trade in the same markets - either goods or jurisdiction. Think Woolworths in the US vs the UK, or GE & GEC, Countrywide and any number of others. The 'cyber sitting' thing is what has got them going, but since Pizza.com just sold for 2.5mUSD, someone at Diageo probably decided to go out and secure their e-asset rights. I agree with you, Steve G, my response would be to say 'OK, how much?'

Big Boy · Legend Joined: 04 Nov 2005 Posts: 3272 Location: UK

Just look on the bright side - any publicity is good publicity. Do a bit of brinkmanship in changing the name, with a bit of appropriate newspaper coverage - you'll be known worldwide Idea

Get what you can out of it first ................................ then just take the Mai pen rai attitude, remember TIT. Whatever you change it to, It'll still be known as Johnny Walkers for quite a while.
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Jockey · Ace Joined: 27 Jan 2003 Posts: 1851

Yes I think this could be an opportunity rather than bad news. Change the name to something like J Walkers and sell them your domain name.

Big companies are very protective of their brand names.

richard · Ace Joined: 18 Feb 2003 Posts: 1652 Location: Hua Hin

how about 'Onnie Alkers'
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crazy88 · Professional Joined: 21 Jun 2007 Posts: 463

JW

No Idea on the exact legality .If you were producing whiskey and selling it in square bottles with different coloured labels then maybe they would have a point .Your business is retail food and beverages, not production and distribution PLUS it is YOUR name .

Stick to your guns .Hope you do get a few quid out of them for the headaches .The guy who grabbed 21st century fox.com springs to mind .Nice try son ,no cigar .

Have a good Songkran JW

Crazy 88

KelpieKiss · Specialist Joined: 17 Oct 2007 Posts: 234

Just as a matter of interest, when did you register that domain name? I can't believe they hadn't registered it themselves. Most big companies will register all related domain names just to stop people from using them. You paid for that domain name, it was available and therefore, I would imagine you have every right to use it.

I would ask them to tell you exactly what law stops you from using the website. I'd imagine that won't be too easy for them to do. Once they see you're going to be a problem, offer to sell them the domain. You might get a big pay off for it.

KelpieKiss · Specialist Joined: 17 Oct 2007 Posts: 234

JW - You may find this link useful:

http://www.website-law.co.uk/resources/website-trade-marks.html

Read section 9. It would seem that trying to take a domain name from someone can be done but not easily. Basically, they should have already registered it themselves and have been sloppy but they do have it as a registered trade mark. Trade Mark law is not clear on domain names though. Good luck!

JW · Ace Joined: 11 Sep 2005 Posts: 1456 Location: hua hin

Thanks for all of the advice, all very useful. I do see it as an opportunity, i am sure its a newsworthy item at least in HH!

Will look at all of the suggestions and see how it goes, whatever happens a party will certainly happen, maybe free Black label all round!!

Cheers all, Cheers

buksida · Posted: Fri Apr 11, 2008 9:55 pm Post subject:

JW, you own the domain name so make them put their money where their mouths are and buy it off you for an obscene amount of cash and you'll agree not to use the name. If they refuse then they're not serious and are just trying to threaten you .... "sue me"!
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crazy88 · Professional Joined: 21 Jun 2007 Posts: 463

Surely "johnnie Walker" And Johnnie Walkers are as different as "Burger King and "Bugg*r King "

Cannot see the fast food chain rushing to buy that domain name .(Or associate themselves with a bar of the same name ! )

Wink

Crazy 88