+ Reply to Thread
Page 1 of 4
1 2 3 ... LastLast
Results 1 to 15 of 47
  1. #1
    Join Date
    Sep 2009
    Location
    USA
    Posts
    15

    Trademark dispute from business owner who forgot to buy domain name that we now own

    Hello everyone!

    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.

  2. #2
    Join Date
    Oct 2002
    Location
    Wisconsin
    Posts
    2,580
    Let me answer your questions. Please be advised that I am not a lawyer, but I am good-looking.

    1) From a legal perspective, if the facts you described are true, it is unlikely she could take the domain from you. She would lose a UDRP as fast as hell because her trademark sounds very obscure and very local in scope. Plus, you couldnt reasonably be expected to have known about her domain when you registered it, and therefore it will be very hard to prove that you registered it in bad faith.

    2) From an ethical perspective, you shouldnt feel compelled to part with the domain so cheaply. It is silly to sell it for $50 or $100.

    3) From a time-management perspective, do you really want to waste time with a contract over a lousy $50? Really? I know people in Peru and Bolivia who earn $100 per month and they wouldnt waste time with a contract over such tiny amounts.

    4) If she reverses a paypal payment after coming to an agreement for the purchase of the domain, that is fraud and she would be getting herself into hot water.

    5) Seriously, tell her to get lost unless she raises her offer substantially.

  3. #3
    Join Date
    Sep 2002
    Location
    Wales (UK)
    Posts
    24,745
    I really struggled to read your posting style for some reason so I may have missed something, but here's my take.

    there are a bunch of udrp cases listed in our tools section to give you an idea of the circumstances where a dispute can be defended:

    http://www.domainstate.com/custom.php3?action=positive

    also reading the actual udrp helps explains why it requires more than just a trademark to win a dispute:

    http://www.icann.org/udrp/udrp-policy-24oct99.htm

    4a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

    (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

    (ii) you have no rights or legitimate interests in respect of the domain name; and

    (iii) your domain name has been registered and is being used in bad faith.

    In the administrative proceeding, the complainant must prove that each of these three elements are present.
    but it basically comes down to the perceived reason why you registered the domain, how you used it, when the complainants rights started, the scope of their usage, the nature of the domain (generic/descriptive) etc.

    given your price expectations, I'd be inclined to give a broad outline defense of your position along with citing examples of previous cases that were won by the domain holder in comparable circumstances and ask a reasonable amount to bring the matter to a speedy conclusion in an amicable manner without admitting liability.

    given the monetary amount involved, I'd not be too worried about sales contracts - maybe just get her to send you the money by wire.
    When using google for counts - use double quotes for usage counts for multiword terms and set "match type" to "exact" for all search volume lookups. Click here for more info

  4. #4
    Join Date
    Aug 2004
    Location
    Avalon
    Posts
    1,525
    That's a whole lotta blah blah blah for a $100. Geez.

  5. #5
    Join Date
    Oct 2002
    Posts
    10,988
    Originally posted by InnovationHQ
    That's a whole lotta blah blah blah for a $100. Geez.
    In some countries that is a fortune.
    "

  6. #6
    Join Date
    Jun 2004
    Location
    west coast
    Posts
    714
    If your happy with $100. tell her you will transfer the name for that amount but that you'll only hold it for her for 5 business days. period!
    As far as payment, fax a simple contract "Seller agrees to sell, buyer agrees to buy ... etc." Have her mail a check, when the check clears transfer the domain. Done.
    If she dosen't agree, forget it. No further contact.

  7. #7
    Join Date
    Nov 2005
    Location
    near Chicago
    Posts
    355
    if she is starting a real business on it it should be worth 3-500$ to her. She went through the trouble to hire a lawyer, register the name locally and contact you... So 300$ is not a deal breaker.

    Then why did you want it in the first place? If you have mo real plans for it sell it for the 300 and buy guitar hero

  8. #8
    Join Date
    Apr 2003
    Location
    Santa Barbara CA
    Posts
    763
    I'd tell her to go get stuffed.

    ...but that's just me

  9. #9
    Join Date
    Sep 2009
    Location
    USA
    Posts
    15
    Thanks so very much for the comments. I am in total agreement with everyone.

    Especially the one comment that says it all "That's a whole lotta blah blah blah for a $100."

    You've got that right!!!

    I will admit her trademark is obscure in the sense she has not developed it and instead only references it as "coming soon" She registered only the mark itself..... being the full name of the business only in two different font styles used together.

    I really don't think she has the money to defend herself but who really knows for sure in these cases.

    Just seems like allot of hoops to jump through for sure.

    Her trademark is related to womens apparel/clothing and the two terms are generic in the sense that you do see the same exact string used together in doing a search online but used to perhaps give a title to or describe someone with a certain "edge in an industry" but definitely not used as a domain name or business name. It is referenced as a title given to a person with experience or say "know how" .

    One word represents a specific industry with the other representing their particular edge/experience/style in that industry.

    And I had absolutely NO clue whatsover that this domain was registered in her state.

    Outside of her sending me the link to another general website she owns with the jpg referenced ONLY on the page, her logo, which said "coming soon", there is no way you would even find the reference online in a general search period. And again the site she has it referenced she did hersef.

    All of the domains I own represent a two generalized industries. One industry more vague than the other in that the domain names could apply to many businesses.

    I fully expect her to beat me up over even requesting $100. Some people you just have this "sense" about and she is one of them.

    I'd only hate for her to start posting bad press about me and the website I personally own for which list all of the domains I have for sale or to enquire about. This is NOT the kind of press anyone needs.

    So to clarify if I did ask her for $100 in this case, could she say I am "cybersquatting" since she actually registered this as her business name and trademark in her state first?

    I just really want to know where the fine line needs to be drawn before getting back to her and would really appreciate a someone pointing us to a "generic domain sales contract " to use to cover ourselves.
    Last edited by Domainer2; 09-21-2009 at 01:00 AM.

  10. #10
    Join Date
    Apr 2003
    Location
    Santa Barbara CA
    Posts
    763
    it isn't "registered in her state"... you're not getting it, you're being hustled. She does not have an enforceable TM at all, from the sound of things.

  11. #11
    Join Date
    Sep 2009
    Location
    USA
    Posts
    15
    Your comment "it isn't "registered in her state"... you're not getting it, you're being hustled. She does not have an enforceable TM, from the sound of things."

    Why do I always see mentioned the fact that you don't necessarily have to have a trademark/business name registered period... for it to always be enforcable?



    Just that they 1st used it.

  12. #12
    Join Date
    Sep 2002
    Location
    Wales (UK)
    Posts
    24,745
    as noted above there are 3 prongs to the udrp - having registered/unregistered rights in a similar mark is only one of those 3.

    So to clarify if I did ask her for $100 in this case, could she say I am "cybersquatting" since she actually registered this as her business name and trademark in her state first?
    she could call you a little blue tomato - it wouldn't make it so. the word "cybersquatter" is often misapplied to actually mean "you have a domain I want and I think have more rights to it and I could use it better".

    if you took some time to read the past cases I linked to before, you will have already seen that even where entities have federal registered trademarks and an active trading history they don't always win cases if the domain is descriptive/generic.
    When using google for counts - use double quotes for usage counts for multiword terms and set "match type" to "exact" for all search volume lookups. Click here for more info

  13. #13
    Join Date
    Sep 2009
    Location
    USA
    Posts
    15
    HI safesys,

    I just had the opportunity of looking at those UDRP cases and you are correct..it certainly isn't an open and shut case and looks like many of those go in the favor of the original domain name holder.

    Other than they try to determine I have not made use of the domain such as development of a site specifically catering to this domain, ( other than listing it for sale amongst several others I own as part of our website), this is probably the only area they could try to get me on but still wouldn't be a rock solid defense on their behalf.

    We DON'T park our domains either so as not to cause any issues if they should arise.

  14. #14
    Join Date
    Apr 2003
    Location
    Santa Barbara CA
    Posts
    763
    You've already answered all your own questions.

    She pointed you to some other amateurish website suggesting FUTURE use of the term?

    She claims to have REGISTERED a TM with her State? << yeah, right...

    It will cost her well over $1500 just to FILE a UDRP...

    ...and you want to roll over and play dead for $100? that makes no sense at all. Tell her $1k or she can go pound sand.

  15. #15
    Join Date
    Sep 2009
    Location
    USA
    Posts
    15
    She actually did file it in her state only ...(had me look it up online) but that's it.

    I agree the UDPC would cost her WAY more than what she was originally looking to buy it from me for anyhow.

    Part of me thinks she is using idle threats to just intimidate us, but again hard to say.

Posting Permissions

  • You may not post new threads
  • You may not post replies
  • You may not post attachments
  • You may not edit your posts
  

Sponsors

Ending Auctions

Poll

Besides domain registrations, I prefer to work with a registrar that also offers this service?
1. Hosting
2. Marketplace for buying/selling domains
3. Domain Parking
4. Free Webpage with For Sale message
5. Other
to see the Poll results!
 
DomainState.com
Domain Tools | Domain Directory | Registrar Stats | Domain Glossary | Industry Events | FAQ | Members | Terms | RSS | Link To Us | Advertise | Contact Us
Other Related Trellian Services:
Above Domain Parking Manager   |   Free Search Toolbar   |   Free Webpage Builder   |   Keyword Research   |   Search Engine Submission   |   SEO Tools
Copyright © 2002 DomainState.com a Trellian Company