I've recently received a notice from a company

[tim ericsson]

I own a domain registered in 2005 and I've recently received a notice from a german company saying that they own the trademark that is the domain name. So I've confirmed with USPTO database search, there's not any such trademark applied/registered, so i checked in their countries (germany) tm database site and find that they filed trademark application in 2012 and got registered trademark in 2015 .
Does the UDRP apply if I'm not the germany resident? For example, the trademark is registered in the germany, but I (the owner of the domain), live in a different country, where the trademark is not filed. Is the domain legally theirs?
Does the UDRP apply in this case ? am I infringing on their trademark by owning the domain? What should I write in the reply mail ? Please help.

 

[enlytend]

Even though the name was registered before the tm, nobody can say if this is reverse hijacking or if they have a valid case without access to all the details.

When did they start using the name in commerce?
Did he at any time after the tm was registered have ads on the domain for that company or competitors? That could be used to argue bad faith.

At any rate, if defending the registration is going to involve legal fees and the registrant doesn't have those resources, it becomes an issue of taking the best option from a practical standpoint.

 

[frank-germany]

the only question is :

do you infringe their trademark or not




---
I am not a laywer no legal advise
just my private knowledge

 

[nvdomains]

I heard many udrp decisions was in favour of big companies, also that udrp can take domain without notify the domain owner or did not wait for domain owner response on udrp filed cases. Is that true?

Just forget their warnings. Do not even respond unless they come up with an offer.

Even if they sent a mail with a request for price quote - please do not quote any price.

Just say - "I am not interested in selling the domain and want to build a website. But, I will think about selling only ......" like that.

Some companies try all sorts of tricks to capture it. Don't worry...you have a strong case.

 

[frank-germany]

there is no problem in selling when you did never infringe their trademark




---
I am not a laywer no legal advise
just my private knowledge

 

[campout]

One problem I see is that UDRP's don't always follow common sense. I'm no expert at all, but that is what I gather from hearing some others on the subject.

Sometimes trademark filing is not the only issue. Like someone above asked, were they using this name to do business (without a TM) prior to 2005? You don't need to have a trademark to file a successful UDRP.

Have they even threatened legal action and/or UDRP? Or are they just trying to get you to give it to them through their own arguments alone now?

Also: think about what this domain may be worth to you or an expected buyer. Unless you want to take a stand on principle, maybe this fight is not worth it..

In the end, here is what you should do:

1. Find out what hotel they are staying in.
2. Dress up as a maid.
3. Go get their laundry.
4. Bring it down to the laundry room.
5. Do their laundry in dirty Flint water.
6. Give it back to them with a mint that is past its expiration date.

 

[frank-germany]

One problem I see is that UDRP's don't always follow common sense. I'm no expert at all, but that is what I gather from hearing some others on the subject.

Sometimes trademark filing is not the only issue. Like someone above asked, were they using this name to do business (without a TM) prior to 2005? You don't need to have a trademark to file a successful UDRP.

Have they even threatened legal action and/or UDRP? Or are they just trying to get you to give it to them through their own arguments alone now?

Also: think about what this domain may be worth to you or an expected buyer. Unless you want to take a stand on principle, maybe this fight is not worth it..

In the end, here is what you should do:

1. Find out what hotel they are staying in.
2. Dress up as a maid.
3. Go get their laundry.
4. Bring it down to the laundry room.
5. Do their laundry in dirty Flint water.
6. Give it back to them with a mint that is past its expiration date.

I really like the idea better to sell them the domain

of course not for cheap

 

[campout]

I really like the idea better to sell them the domain

of course not for cheap

I like that idea, too, but the problem seems to be that if OP shows any intention of wanting to sell to them, that could be used against him in a UDRP.

 

[d-e-x]

I own a domain registered in 2005 and I've recently received a notice from a german company saying that they own the trademark that is the domain name. So I've confirmed with USPTO database search, there's not any such trademark applied/registered, so i checked in their countries (germany) tm database site and find that they filed trademark application in 2012 and got registered trademark in 2015 .
Does the UDRP apply if I'm not the germany resident? For example, the trademark is registered in the germany, but I (the owner of the domain), live in a different country, where the trademark is not filed. Is the domain legally theirs?
Does the UDRP apply in this case ? am I infringing on their trademark by owning the domain? What should I write in the reply mail ? Please help.

Your domain is .king? (.com)

 

[DomainVP]

I own a domain registered in 2005

Let me share my opinion with you.

The domain might have been registered in 2005, but have YOU had ownership and possession of it since 2005?

Yes, this matters. If you just acquired the domain name, then you can not stand on the registration date as a defense against their claims.

This is actually very easy to resolve.

If you are in another country and there are no trademarks in your jurisdiction pertaining to this domain, then make use of it immediately. If it is parked, remove it from parking immediately! Set up some eMail services and go participate in some forum discussions, create yourself a business card in photoshop etc...

There has to be a reasonable expectation that you have never heard of their business, and that their mark does not rise to the level of 'being famous'.

Also, avoid as much confusion as you can, and show as much good faith as you can.

Reply to their letter and tell them you have interests in the name, and that you weren't aware of their business, and that you would be happy to consider putting an above-the-fold link to their service to avoid any potentially unintended confusion.

You don't have to, but not responding and not trying to avoid confusion has been seen as 'bad faith' during a UDRP if there is an existing trademark.

The most important thing is to just let them make offers until their offer is well above registration costs and expenses. With a TM in play, I wouldn't even suggest a price, and would let them just keep making offers.

Good luck.

*I am not a lawyer, just knowledgable in the UDRP process. This is my personal opinion, and not intended to be legal counsel.

 

[ZapNano]

Not sure how you got that out of it, maybe re-read? The OP doesn't have the resources to defend even if he is 100% right. So in an attempt to make the best of a bad situation, I suggest he try to find a compromise. A compromise is always better in business and NOBODY wins if you have to go to a UDRP or involve any litigation.

Compromise is a good way of resolving issues; however if the term compromised is used negatively, then the situation can not be reasonable justified. In this case,Tim has some case, I'm not sure how strong. But based on the above situation mentioned he had something to looking into. Regardless, of Tim does not have the "100" resources to go on to depend himself. Again, there are many honest lawyers out there that will take free concilltation and no fee till you win. But of course an honest lawyer would tell you if you have a strong case. Given up all the way because of fear that you are dealing with big company; is weak of solving an situation. Domain was purshased in 2005, trademark was file in 2012; trademark was approved in 2015. 10 years gap? It's time to enclude in the trademark policy, rule and regulation statue of limitation, if there aren't any. My no sense contribution.

 

[cocaseco]

My no sense contribution.

Well you are right about this.

There are lawyers that do as you say. But not in the IP area. Those contingency lawyers are largely and almost exclusively in personal injury. Anyway, thanks for your "no sense contribution".

 

[Kate]

I can see that you all are experienced member here, thank you guys for valuable advice, I will upate here if receive any other mail from them.

No, I don't think you are getting such good advice And I don't think you should wait for another mail from them. The next step might be a UDRP, that you could lose by default if you don't present an adequate defense. You should address their claims, and decide if they have merit or not.

Just because you did not find an exact match for the TM, doesn't mean they don't have TM rights. Their TM does not even have to be registered.
It depends on the circumstances and many things, like how you have been using the domain. For example, if it's been parked and showing ads for their competitors, you could be violating their TM without knowing it. But your are still ultimately responsible as the domain holder.

So what are their assertions ?

 

[ZapNano]

Well you are right about this.

There are lawyers that do as you say. But not in the IP area. Those contingency lawyers are largely and almost exclusively in personal injury. Anyway, thanks for your "no sense contribution".

If I dediced to have a company and used a DN for my company; I know damn right as an owner it is my responsibilities to secure my business. However, if I wait that long to get the most important thing for my business; then you can assure I will be as a reasonable person as I can. Numbers and dictionary letters, and words; is another thing to considered. You are right, your exactly right; my no sense, doesn't smells strong likes yours.

 

[Asfas1000]

Just so you get a better idea of THEIR position, they'd need at least $1,500 and likely $3,000+ to start a UDRP and without any kind of warranties that they will win the domain.

 

[frank-germany]

If you are in another country and there are no trademarks in your jurisdiction pertaining to this domain, thenmake use of it immediately. If it is parked, remove it from parking immediately! Set up some eMail services and go participate in some forum discussions, create yourself a business card in photoshop etc...

thats good one

best way to avoid any infringement of the most trademarks
is to set up a dating site


datingfactory

and off you go with content and legal use





---
I am not a lawyer no legal advise
just my private knowledge

 

[john888]

If they have proof that he has infringed on their trademark, couldn't he sell and transfer the name to a friend. Friend then immediately puts up a coming soon business web page. Soon after site is now full of Amazon widgets selling products that are not related to company's trademark. Any time you get am email making a claim on your domain name, don't expect an easy sales transaction. Expect a domain name theft.

 

[mattG]

That company sh*t smells worst than all sh*ts put together in the whole world!! My zero cent opinion.

No, not a good idea. If I was in his shoe I would not take your advise. Sorry my no sense opinion has made a sense here.

Agreed. Treat their notice as spam and ignore it. IF they're motivated, you'll hear from them again (unlikely). This would be a very costly, uphill battle for them.

 

[mattG]

If they have proof that he has infringed on their trademark, couldn't he sell and transfer the name to a friend. Friend then immediately puts up a coming soon business web page. Soon after site is now full of Amazon widgets selling products that are not related to company's trademark. Any time you get am email making a claim on your domain name, don't expect an easy sales transaction. Expect a domain name theft.

Doing this would be a trademark violation. Best bet is to sit tight.

 

[ResoluteDomains]

Next time they contact you say what they are trying to do is reverse hijacking the name and that will give a very bad publicity to both the legal firm and the startup.

And refer them to this site:
http://www.hallofshame.com/

 

[DU]

No, I don't think you are getting such good advice And I don't think you should wait for another mail from them. The next step might be a UDRP, that you could lose by default if you don't present an adequate defense. You should address their claims, and decide if they have merit or not.

Just because you did not find an exact match for the TM, doesn't mean they don't have TM rights. Their TM does not even have to be registered.
It depends on the circumstances and many things, like how you have been using the domain. For example, if it's been parked and showing ads for their competitors, you could be violating their TM without knowing it. But your are still ultimately responsible as the domain holder.

So what are their assertions ?

You're right, there is some really terrible advice in this thread.
----For Op-----
There are, however, some decent questions that have been asked that you need to consider. As usual, advice in general is difficult to give without knowing the actual details

How long have you owned the domain?
How strong is the mark? (The fact that you've not heard of them actually refutes bad faith.) How much reach does it have?
What is their first use in commerce?
How generic/applicable is the domain name to be put to other uses not infringing?
What have you done with the domain? (Does it infringe directly? i.e. through ads)
Most importantly, do you actually have a legitimate interest in the name?

If you respond you should respond with minimal details and no bullshit.

Don't talk about your research into their TM, don't make an offer for sale, and don't do the "It's cheaper at $1200 than filing a UDRP" thing. I suggest that domainers are unethical and get slapped down by everyone taking offence and then people suggest basically manipulating the system a little. Don't talk about Reverse Hijacking (they may legitimately feel that they have a real interest) and just is aggravating people that are already not thrilled with things.

Finally, factor in the reality that a strong Trademark can drastically reduce and diminish the value of your name as that's baggage that any future buyer has to overcome or be wary of. You should disclose this warning on future sales.

After answering all the questions above you may feel there are no UDRP issues.

"I registered the domain in 2005 for my own use. Thankyou for your communication".

It lets them know you are alive. It lets them know you will respond and gives them no leverage.

If you have no legitimate interest in the name don't bother making one up. Panels have seen through that before. If you claim legitimate interest you would have supporting evidence and your one page lander and a couple of forum posts mean nothing.

 

[tim ericsson]

Thanks to all, I will update here if receive any other mail/message from them.

 

[premkumar]

Tim don't reply to them and don't offer any sale or intent to sell. Most probably a german company don't spend time to file case in US. If they do, their expenses will be 5X to 10x times higher for them. Also Germnn domain is not .COM and its .DE, just avoid them until you get anything from court.

 

[ZapNano]

Tim don't reply to them and don't offer any sale or intent to sell. Most probably a german company don't spend time to file case in US. If they do, their expenses will be 5X to 10x times higher for them. Also Germnn domain is not .COM and its .DE, just avoid them until you get anything from court.

For 7-10years they have been avoiding trademarks; now they want trademark? if I was a trademark co. I would have charged them 7X current fee + accrude interest + penalty.

 

[Shams]

Well at this point there's nothing more to say. many good domainers like @Nat Hunt @ZapNano @Kate and @enlytend already told you the circumstances of both good and bad results.
I can only suggest make a stand. Don't let them feel your fear. reply them in a decent but hard wording and see what they reply. if they already offered you. reply them that you are not interested in selling this domain and you have registered this domain long before their trademark.

if I were in your place and unless I'm not afraid of losing the domain name.I would reply them in such manner as they approached me. Filing a UDRP cost I think is around $2400 - $2500. No company will file it unless you demand more than that. You should reply them. I'm sure they will offer you. Let us know and you will get more good opinions by experts here on NP.

 

[ZapNano]

If they have proof that he has infringed on their trademark, couldn't he sell and transfer the name to a friend. Friend then immediately puts up a coming soon business web page. Soon after site is now full of Amazon widgets selling products that are not related to company's trademark. Any time you get am email making a claim on your domain name, don't expect an easy sales transaction. Expect a domain name theft.

That is the whole point; they have not proved jack that he did something such thing to this big ass co. This company wants free ride all the way to hell! Analyzed of his bahavoir pattern; first he didn't registered this most important piece for his company; for freaking years.Now he is trying to send harassing email to someone. Hoping to get more free ass shit ride. Now "Cocaseco" wants him to get more free ass ride!! We have all kinds of opinions and thoughts here. So Cocaseco choose to dislike my opinion and thoughts. You can do all you want; the key word here you don't take free for everything; you need to earn. Also, this is not a workplace; that when some controlling management ass tells you if you are not happy here, why are you still here? And then they fired you. Allowing him to voice his opinion it's the right thing to do; regardless of what the outcome of the situation. It does not have to be mean and monetary approach.. At least he has voice his opinions. Don't just scared and discouraged him; using the trademarks and UDRP words. Don't just find him guilty and discourage, using negative thoughts and opinions that can lead to being unreasonable approach from you. My no sense does not smell; the synoname I can smell you a mile away. Sure you're right.