question Owner offered $XXX or legal process

[Bohdan]

Hi, pros. I need urgent advice.
Recently, I regged domain and made outbound to 3d studio with short exact match name.
They have responded, that they willing to get it for $XXX, othervise they will:
"...start a legal process to recover that domain which legally belongs to us as is a registered brand". But I have not found any registered TM for this name. Will PM with the name if needed.
Your thoughts, guys?

 

[NickB]

so they offer you money and threaten legal action if they can't have it on the cheap?

Tell them there are no TM issues in regards to the name and that the price is xxxx and leave it at that.....if they do not respond move on, if they come back carry on negotiations

As long as you are 100% sure there are no TM issues......

On the flip side, would you be happy with xxx for this name? If so complete the deal and ignore their sh*t attitude.

 

[EbookLover]

"Registered brand"? What does that mean? Did you do a trademark search?

You say "exact match". To me, that means nothing. It's just an SEO/domainer term. Exact match what? Exact match for their Trademark? lol Let's speak seriously here...

Is it a dictionary word/phrase?

For instance, Realtor.com sued someone over the use of the word "realtor" but they lost and had to pay defendant's legal fees + more for the troubles. Judge stated the lawsuit was the "epitome of frivolous", because "realtor" is a dictionary word. In fact, the only live TMs in the USA for the single word "realtor" are for companies that use the single word "realtor" as a brand name for products unrelated to real estate brokerage. One is for clothing and another for something else unrelated to RE. This is a legally acceptable TM for a dictionary word. But the TMs would only apply to their respective industries.

I would not even respond at all.

If you are infringing on a TM (in which case I would drop the domain), then if you accept even a dollar from them, they have undeniable proof that you profited from their TM...if they do have a case, this works against you in a big way.

If you are not infringing on a TM, these aren't the type pf people you want to do business with.

Without knowing the name, it's hard to say. But if you are worried about it, get am IP lawyer that specializes in domains. However, this is not usually necessary. Wait for correspondence in the mail then decide of you need to take legal action. It sounds like they may be jealous or they hate domainers and are engaging in extortion & scare you into letting the domain go for less-than market value. This is not uncommon.

But before you do anything, make sure you are not in fact infringing on a TM.

 

[Bohdan]

I used 3 different trademark services to find TM's. And only EU trademark service found active registered TM back in 2013. So I decided to sell it. Thanks to all for your advice.

 

[EbookLover]

Can you share those trademark services you used?

Also, at least in the USA, a company does not have to have a registered trademark with USPTO for a trademark infringement case to be valid. But if it is a normal dictionary word, then it is unlikely they have a case. I don't know about other countries.

 

[Bohdan]

https://www.trademarkia.com/
http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4805:g7qoyw.1.1
https://www.tmdn.org/tmview <------- only this one found TM at EU

 

[EbookLover]

Where is this 3d studio company located?

 

[Bohdan]

Spain

 

[EbookLover]

I used 3 different trademark services to find TM's. And only EU trademark service found active registered TM back in 2013. So I decided to sell it. Thanks to all for your advice.

I'm confused, is the EU TM still valid?

 

[Bohdan]

Probably, yes

 

[EbookLover]

Well, even if the 3D studio does not own the TM, then you still may be infringing on someone else's TM. The proper plan of action is not to sell when you find out you have a TM domain, it is to drop TM search should be done before domain reg, not after

 

[NYJimbo]

Since Spain is in the EU, can they enforce the TM worldwide ?

 

[EbookLover]

Since Spain is in the EU, can they enforce the TM worldwide ?

Good point, but UDRP is worldwide so they can do that route, no?

 

[Bohdan]

Well, even if the 3D studio does not own the TM, then you still may be infringing on someone else's TM. The proper plan of action is not to sell when you find out you have a TM domain, it is to drop TM search should be done before domain reg, not after

I do this mostly everytime I'm registering new domains, but searching only for US TM.

 

[BRANDERX]

I don't think they can enforce it worldwide but if they do go the UDRP & name is an exact match, & the OP approached them, then its a clear case of registering the domain in bad faith.

IMO

 

[EbookLover]

I do this mostly everytime I'm registering new domains, but searching only for US TM.

So then I take it you are in the US?

 

[Bohdan]

I know that some EU-based companies offering worldwide TM registrations. But I think they just have their worldwide filials to cover most countries.

 

[Bohdan]

So then I take it you are in the US?

No, I'm from Ukraine

 

[Bannen]

In fact, the only live TMs in the USA for the single word "realtor" are for companies that use the single word "realtor" as a brand name for products unrelated to real estate brokerage.

Not sure of your source - or maybe you didn't look deep enough? - there are hundreds of TMs for 'realtor', best to check the WIPO site for worldwide TMs (just type in 'realtor' in the Text field, hit enter). Many of those TMs are by the NAR. And they do include TMs for real estate services, like this U.S. trademark by the NAR for the single word 'Realtor':

BROKERAGE OF REAL ESTATE, INDUSTRIAL BROKERAGE, FARM BROKERAGE, MORTGAGE BROKERAGE, IN THE APPRAISAL OF REAL ESTATE, MANAGEMENT OF REAL ESTATE, IN THE BUILDING OF STRUCTURES ON REAL ESTATE, IN THE SUBDIVISION OF REAL ESTATE PROPERTIES, AND [ FOR CONSULTATIVE AND ADVISORY SERVICES ] IN COMMUNITY PLANNING FOR THE DEVELOPMENT OF RAW LAND AND SLUM CLEARANCE AREAS

The NAR also diligently pursues trademark infringers (and often wins). You can use this section of the same WIPO site, type in 'realtor' (or any other keyword) to see a history of UDRP cases for that keyword, and see who won those lawsuits.

To OP: Also, in many cases a company does not need to have an actual registered trademark on their business name, in order to make a case for cybersquatting and to take a domain name from you. Use the trademark checker sites only as one level of reference; but also use the search engines, check out what companies are using an exact term as a business name and what their services are, etc. There is a lot more info to this than simply 'do they have a trademark on this term or not?'. Check out the legal threads here for more information.

Good luck

 

[EbookLover]

I am wrong. I apologize.

Firstly the case that I was referring to that Realtor.org lost was a case where they sued a over a domain Real Tor [KEYWORD].com I guess the defendant was able to prove that the domain was in fact not meant to be related to Realtor but Real Tor.

Secondly, all my life I have used the word "Realtor" as a synonym for the word "real estate agent" or "Realty Brokerage Firm". But in fact, it is not. Realtor isn't really a word, per se. It is a proper noun made up by the NAR which people use as if it were a real word. Like Kleenex for facial tissue or like Q-tip for cotton swab.

 

[Bohdan]

Thanks to all. Domain sold. Will report sale.

 

[EbookLover]

 

[Bohdan]

I decided not to hold possibly TM-related domain. And you know, a bird in hand is worth two in the bush.

 

[Bannen]

Secondly, all my life I have used the word "Realtor" as a synonym for the word "real estate agent" or "Realty Brokerage Firm". But in fact, it is not. Realtor isn't really a word, per se. It is a proper noun made up by the NAR which people use as if it were a real word. Like Kleenex for facial tissue or like Q-tip for cotton swab.

A lot of common trademarks become 'genericized'; they lose their trademark status either due to simply being 'too identified by the public as generic', or due to TM status being dropped by original holder. For example, Videotape, Trampoline, Linoleum, Heroin are just a few of the many, many terms that started out as trademarks and then were genericized so they are now considered generic terms and not trademarks.

The NAR fights hard, legally, to maintain their word 'realtor' as a brand and not let it become genericized. We all pretty much think of it as a generic word, just like we do Band-Aid or JetSki or Popsicle... but those are all still trademarked terms, not genericized legally. Google 'genericized trademarks' for more info

 

[EbookLover]

Yes, they are all over the place, but I just never knew Realtor was one of them. I knew about the other you mentioned, but who wants to say "frozen treat on a stick"? lol