discuss Installment sales and trademark issues

[markfromslo]

I have all my sales landers at DAN, at BIN prices with installment payments available. I've been questioning the installment idea due to too many cancelations lately, but today I realized a new problem with installments that is probably going to push me over the edge to get rid allowing a payment program. It's a trademark issue, one that has devalued a very good name.

I sold a domain name on 6/22/2020 on a multi-year payment plan. After six monthly payments, in January 2021 the buyer canceled the transaction. The name was returned to me.

I was thinking about this yesterday and did some research on it. I already knew that a trademark was filed on the exact two-word keyword of my domain name during the time the payments were being made. I didn't worry too much about it since the name was already sold, and nothing I could do about it anyway. What I discovered yesterday that it was filed only six days after I sold the name. And I saw that the trademark was officially granted to them in the month they canceled the transaction. Hmmm...

The timing sounded suspicious, so I searched the web with the buyer's name. I found one document where the name was associated with a Chinese company that happens to be almost the same as the name as the company who filed for the trademark. It's obvious to me that they are the same, or associated, entities.

So they bought the name on the longest possible installment plan, immediately filed for a trademark, and when it was granted, dumped the name. Archive.org doesn't show it, but they must have put something up quickly on the name to help their case for a trademark.

Why would they dump the name? I don't want to mention the domain name, but having the name is not necessary for a product that this domain name describes. This company is likely going to create and sell a product through retail channels to supermarkets, and does not require a website for it.

Regardless of their intent, I now have a domain name that can really only be used for one specific type of product, so the trademark will keep other buyers from buying it from me now. There is no other use for that name other than in this one particular market classification. So I'm screwed. Name was worth at least $10K.

I don't know how much the availability of an installment plan helps sell names. But I am seriously considering taking it off all my names. Too many others have begun to cancel on me now too--maybe 20% of them. So I wonder if it's really worth it. I've already reduced to 12 the maximum number of payments.

I don't know if I would have sold the name to that same buyer without an installment plan. But if I did, the trademark would not be an issue since the name would have been sold already.

I've posted this here because I thought some others might be interested. And this is no reflection on Dan's installment program, it could happen with any similar one.

 

[ravidesai]

Interesting.

 

[karmaco]

Don’t make long term payment plans. Make short term ones (if any) on domains you think are highly valuable. If the payment is high the chances of the plan tanking are lowered. People don’t like to throw money away.

I don’t think of any of this is a coincidence and there are definite downsides to going down the payment path. Keep everything you have gathered in case they try to extract the domain from you via udrp at some point.

 

[twiki]

Don’t make long term payment plans. Make short term ones (if any) on domains you think are highly valuable. If the payment is high the chances of the plan tanking are lowered. People don’t like to throw money away.

I don’t think of any of this is a coincidence and there are definite downsides to going down the payment path. Keep everything you have gathered in case they try to extract the domain from you via udrp at some point.

I don't see UDRP possible (edit: as in successful, though it can be filed but with no chances in my opinion) with the evidence at hand. Domain registration precedes TM filing. There was no existing product/service that could be eventually infringed on.

How things unfolded makes me think that, perhaps: Buyer wanted to pitch the brand + domain to a given seller, OR they heard about some deal and been frontrunning the name (the latter happened to me a few times).

They secured the domain for cheap from you via installments. TM is not that expensive, but then, end client probably declined (too expensive, maybe) and selected something else. So they cancelled payments and got stuck with the TM.

I think your best bet is to try to acquire the TM back from the Chinese buyer (give them the money paid?) and hold it yourself, along with the name. Otherwise, name becomes more or less useless, in any case not a $10K name or something that can be easily sold.

 

[ArielT]

I see that some terms can have more than 1 TMs. So if that type of name, I wouldn't worry. Of course don't park it

 

[Peter45]

I now have a domain name that can really only be used for one specific type of product, so the trademark will keep other buyers from buying it from me now. There is no other use for that name other than in this one particular market classification.

I'm not sure
Let's make an example: the domain eating-vegetables-is-healty.tld
This domain can be only used for a specific product in a particular market classification.
Ok.
There is the TM "Eating vegetables is healthy", so "the trademark will keep other buyers from buying it"?

Well, first, if that TM is not registered in something like the Madrid Database, or is not famous - i.e. if that TM isn't more or less internationally valid - it could be that that domain can be used in countries where that TM is not valid.

Even in the same country where that TM is registered, that domain can be used by a business which existed before the registration of that TM, imo.
It's not unusual for - mostly little - businesses to have the same - or similarly confusing - name as a TM registered in their country.

I have even seen the same term being registered in the same country under the same Nice classification!
(No idea how is it allowed)

 

[Andreas B.]

I have all my sales landers at DAN, at BIN prices with installment payments available. I've been questioning the installment idea due to too many cancelations lately, but today I realized a new problem with installments that is probably going to push me over the edge to get rid allowing a payment program. It's a trademark issue, one that has devalued a very good name.

I sold a domain name on 6/22/2020 on a multi-year payment plan. After six monthly payments, in January 2021 the buyer canceled the transaction. The name was returned to me.

I was thinking about this yesterday and did some research on it. I already knew that a trademark was filed on the exact two-word keyword of my domain name during the time the payments were being made. I didn't worry too much about it since the name was already sold, and nothing I could do about it anyway. What I discovered yesterday that it was filed only six days after I sold the name. And I saw that the trademark was officially granted to them in the month they canceled the transaction. Hmmm...

The timing sounded suspicious, so I searched the web with the buyer's name. I found one document where the name was associated with a Chinese company that happens to be almost the same as the name as the company who filed for the trademark. It's obvious to me that they are the same, or associated, entities.

So they bought the name on the longest possible installment plan, immediately filed for a trademark, and when it was granted, dumped the name. Archive.org doesn't show it, but they must have put something up quickly on the name to help their case for a trademark.

Why would they dump the name? I don't want to mention the domain name, but having the name is not necessary for a product that this domain name describes. This company is likely going to create and sell a product through retail channels to supermarkets, and does not require a website for it.

Regardless of their intent, I now have a domain name that can really only be used for one specific type of product, so the trademark will keep other buyers from buying it from me now. There is no other use for that name other than in this one particular market classification. So I'm screwed. Name was worth at least $10K.

I don't know how much the availability of an installment plan helps sell names. But I am seriously considering taking it off all my names. Too many others have begun to cancel on me now too--maybe 20% of them. So I wonder if it's really worth it. I've already reduced to 12 the maximum number of payments.

I don't know if I would have sold the name to that same buyer without an installment plan. But if I did, the trademark would not be an issue since the name would have been sold already.

I've posted this here because I thought some others might be interested. And this is no reflection on Dan's installment program, it could happen with any similar one.

That's a sick story.

Can't you still make use of it`?!

I learned, that as long as the content of the site does not contradict to the TM of someone else,
its possible.

For ex.,
if I'd be the owner of windowscopilot.com
and I would have developed something upon it (marketplace for house-windows)....

Microsoft could not come along and say: We filed for 'Windows Copilot' TM, give us the name (you must sell us the name).


I could simply say no, as long as there is nothing on the site which is TM of Microsoft.

But, I am still able to sell that website / name to someone else.


Isn't that right?!

 

[Andreas B.]

The more I think about this case, the more there are 2 questions that have to be made:


1) They would not have needed to 'rent' the domain (start the inst. plan);
what counts is the date they initiate the TM case.

If they drop the domain after 6 months (when getting the TM granted), why did they need to hold that domain for this time?!
...when the only thing that matters / counts, is the date of TM inititation...

2) Isn't it totally possible to assume, that they truly wanted to start a business with this name -
and therefore initiated TM registration + inst. plan for the domain?!

Then, after 6 months when they were granted the TM, they already had made another decision and were no longer interested in this TM / domain?!


Maybe not, but who knows...

 

[Peter45]

That's a sick story.

Can't you still make use of it`?!

I learned, that as long as the content of the site does not contradict to the TM of someone else,
its possible.

For ex.,
if I'd be the owner of windowscopilot.com
and I would have developed something upon it (marketplace for house-windows)....

Microsoft could not come along and say: We filed for 'Windows Copilot' TM, give us the name (you must sell us the name).


I could simply say no, as long as there is nothing on the site which is TM of Microsoft.

But, I am still able to sell that website / name to someone else.


Isn't that right?!

Yes, I think you are right.
As long as you don't target the TM owner's business, you are good.

No domain infringes per se a TM. It comes always to the behavior of the domain owner.

Of course the more renowned and distinctive a TM is, the easier for the TM owner to prove that you targeted them, so it's easier to prove infringement of TMs like Windows Copilot or Ebay then of Twitter or Apple.

Imo