Trademark dispute from business owner who forgot to buy domain name that we now own
So happy to come across this forum.
I'm from the USA and have recently entered into the domain name seller arena.
Most of the domains I have are niche-oriented but more generic in nature.
To make a long story short I recently received a note from someone in the US last week who stated that we were using her exact registered trademark name in a domain name and asked that we release it to her since through a complete oversite on her own part, she forgot to secure it months ago.
I must tell you that before purchasing any domain we always do a search to see if it has a pending or registered trademark with the US Patent and Trademark Office online (TESS) and also do a search as best we can through the internet using the actual domain string/phrase minus the .com
In this case we couldn't find anything at all that indicated a trademark was registered, in addition to any search for same online. This was performed BEFORE purchasing the said domain (at the time of registering) and AFTER the notice via email she sent last week.
We did ask that she supply proof that the trademark was registered and she DID SO, however it appears she only registered it locally within her state and NOT with the US goverment.
She is a sole proprieter and the only reference she couldpoint us to "suggesting use" was the logo itself referenced on another website she owns and where it stated it was coming soon in November of 2009. I will say the site looks quite amateurish and by no means does it resonate high quality.
Of course I have no problem with releasing the domain but hardly feel we should just hand it over for FREE, given it did cost us something to buy and register it ourselves to begin with.
I explained in a very nice manner that she could certainly submit us an offer for the domain but it was at our own discretion to to accept or refuse the offer. She replied a bit defensive after that stating she knew what it costs to buy a domain name and that it wasn't much money.
She is starting a niche publication with this domain (not sure of the scale and reach) and preceded to come back with a bid of a mere $6.
OK...let me just say that this is not what we expected. I mean I'm not sure when she last bought a .com domain but most are much more than $6.
This is certainly not the return on investment we are seeking obviously but as an honest and nice person I'm trying to put myself in her shoes, as a website owner in two niche markets as well.
She did state that in consulting with her TM attorney that he assured her he could get the domain from us and that it would just cost her some money, and she would do it if necessary should we try to come back with some riduculous price and not accept a reasonable offer.
She also stated as the sole owner and working with a shoestring budget she'd would rather not go that route unless deemed necessary.
In another note she indicated that she paid a TM attorney a hundred dollars to show her how to submit a registered TM on her own to avoid the high cost of having them do it.
Since we still own about 42 other domains, I realize at times you many times have to know how to "pick your battles".
And the other voice that resonates in my mind is "do unto others as you would have them do unto you."
The last thing we want to do is create hard feelings over this.
Obviously she could file a UDRP or WIPO action however at the mimimum it could cost her $1300 to my knowledge if she did this herself no less and well into the $1000s if she took it to court.
Again at this point we are not looking or asking for her to pay some exhorbitant amount to acquire the domain but $6 does seem rather insulting given given we did not act in "bad faith" by any means and it was clearly HER fault for not registering the domain from the getgo when she first used it in January of this year.
We only acquired the domain in question ourselves in April 2009.
She is aware that we know of the costs involved in her taking it to the next step legally and filing such action so it seems silly for her to even go that route when we would accept a much lower price to obtain it outright.
When emailing her back to mention that the $6 offer was not accepted we were very careful not to upset her of course. She then came back with a counter offer for $25 and stated that was all she could afford.
This new offer came to us over the weekend but to be quite honest we were thinking more along the lines of $100.
However will she perceive this as cybersquatting? Again I am not sure what does or what doesn't suggest that and if it has to be over a certain amount to be considered such.
The last thing I want to do is spend our energies dealing with a dispute that would yield us the same result anyhow which would be a less than favorable return on the investment for this domain to begin with.
We are willing to take less (as much as $50 less) however my next question is in regards to payment.
We prefer it go through escrow.com but with the minimum fee for them being $50 to process such, it hardly seems like a viable option in this case.
Would it be safe to have her send a money order/casheirs check or pay us via PayPal?
My concern with Paypal is that she could reverse it after the fact. But not sure she will send payment the other way PRIOR to transferring the domain to her. I really do not wish to do any transfer of the domain however until we have received the funds.
Then comes the domain buyer/seller contract in question.
We still need to put this together and wondering if someone has a copy of a CONTRACT form online we can use for such but one that would give us legal protection?
Sorry for all the details but hoping to gain some wisdom here from more experienced domainers and so appreciate any help we can get. .
Last edited by Domainer2; 09-20-2009 at 02:38 PM.