I've recently received a notice from a company

Now that you are aware of a TM on the name, you should disclose this to any potential future buyer as
UDRP decisions view a sale as a "new reg" which puts buyer at risk for "bad faith reg" unless it is used asap for any other purpose not covered in the TM.
If you have owned it since 2005 and not used it for similar or confusingly similar purposes of the TM, and had no reasonable knowledge of the company and it's products in question, there cannot be a finding of bad faith and that effectively kills the UDRP. If you do get a UDRP, RESPOND especially if you are confident that you have never had anything on the site that infringes which equates to the company not having any evidence to prove their claim. Also, request a finding of reverse hijacking. Then file a federal case for reverse hijacking to recover your costs+. Don't ignore it unless the value of the name to you is less than the cost to defend in money and time.

This is my personal opinion and research, and not intended to be legal counsel.
Cheers

DU said:

"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.
.

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Who is infringed on who. Someone registered a name since 2005, they are coming in 2012 - 2015. I f that is how to file udrp, no one will have a legit domain on net. Because every jake and hary and harriress would just go and file udrp if they are intrested in one or other domains to catch any domain of their choice.

I forsee money coming to you rather than costing you your domain or problem. This same thing usually happens to many domain gurus and at the end it resulted in huge money into their bank account.

Cheers and good luck.

elevator said:

Who is infringed on who.

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You can't infringe on a domain name but you can infringe on a trademark.

Whether you can profit from this depends a lot on factors no-one here is privy to - such as the name, strength of mark, persons involved. etc etc etc, as outlined before.

tim ericsson said:

also they said that, they are legal owner of the domain name as they have registered trademark in their country.

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First, determine - How valuable is the domain to you? If your domain is worth tens of thousands, then, based on the valuation you KNOW it has, file a TM for your domain yourself by setting up a business plan. A TM does not have exclusivity unless your domain knowingly infringes on the opposing party's business interests.

If you can afford it, hire a lawyer. There are a few as members in NP.

Do what it takes.

For my opinion, if you are not german resident and your domains makes no business in germany, the story ends there. and also it must be considered that trade marks live in business classes. A mark can be protected only in certain classes. So if you own a mark in a certain class, you cannot claim rights in another class (of business types). Therefore i would not care

I can't stop laughing. If that is how trademark works, I will simply look for domain names that could fetch me around $10,000,000.00 and get them trademarked as soon as possible and thereafter threaten current owners with litigations and once they cowardly relinquish their precious domains to me, I put them up for sale.

Never allow yourself to be intimidated by anyone. I suspect they are interested in buying your domain but don't want to pay good money

Shams said:

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.

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That is simply not true. I was given notice and never mentioned a price. UDRP was filed because they were ready to play hardball from the get-go. You need to know who you're dealing with and go from there.

Gobs of horrible advice on this thread. DU shed some light on that.

@tim ericsson,
As I Know.
Its not a problem if nationality trademarked.
Its a Problem if International Trademarked.

If you have Mcdonalds.com of course its a trouble.
But if you have berkahbestari.com (a company in my country), its not a problem

apapu said:

Its a Problem if International Trademarked.

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To the best of my knowledge there is no such thing as an International TM. A company like McDonalds simply registers their name in every country they want protection in. You can use the "Madrid" system which allows you to file one application for multiple countries, but in the end it is still a series of individual registrations.

DU said:

Whether you can profit from this depends a lot on factors no-one here is privy to - such as the name, strength of mark, persons involved. etc etc etc, as outlined before

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That's true of many questions asked here, since people like to believe that simple questions always have simple answers.

168's comments above are generally correct.

The question can be much broader than "when was the domain name registered" compared to "when was the trademark registered". While sometimes the situation is that simple, there can be additional facts which change the picture, and most of the discussions here at NP reflect an extremely simplistic view of trademark registration as the be-all and end-all of whether and when someone may have had a trademark claim. In the US and many other common law jurisdictions, a company can go for YEARS using a trademark, and having perfectly enforceable trademark rights before ever getting around to registering the trademark. If there is one thing I would like to pound into people's heads, it would be that.

Completely unanswered here is how long has the OP had the domain name, as opposed to how long the domain name has been registered. It's not clear to me that the OP's registration and use of the domain name pre-dates the mark.

Another thing absent from the facts here is what has the domain name been doing? Has it been doing the same thing the entire time?

There are situations where a UDRP panel will have no problem transferring a domain name on these facts:

1. Bob registers the domain name dogfood.tld in 2010. The domain is put on PPC, and the ads are for dog food.

2. Charlie starts a shoe company in 2012 and calls his shoes "Dog Food" brand shoes. He develops trademark rights and the shoes are wildly successful.

3. By 2014, the PPC results on the dogfood.tld start coming up with shoe advertisements.

4. In 2015, the renewal payment rolls around, and Bob renews the domain name. The PPC page continues to show shoe advertisements.

5. In 2016, Charlie files a UDRP against Bob.

On those facts, there are a good number of UDRP panelists who will transfer the domain name. While it is not a favored approach, they will argue that the 2015 renewal was a "new registration" of the domain name done in bad faith, because the domain name was at that time monetizing in relation to shoes, and not dog food.

That said, it is often the situation that the simple answer is the correct one, but belief in simple answers as if they are correct answers in all instances, can be hazardous.

I am not an expert, but have been already in UDRP decision because of Italian Phrase I thought it was generic and registered domains exclusively according to search volume. I didnt have a lawyer, but wrote a strong reply and prove them in my reply that their TM is not that famous as they think in my country and did a case study in addition with the help of Google keyword Tool.. So actually you can reply even without a lawyer and free of charge. This Italian insurance company in mediation process actually drop off the UDRP case (500 USD fee only) and paid for a domain

decades80 said:

I am not an expert, but have been already in UDRP decision because of Italian Phrase I thought it was generic and registered domains exclusively according to search volume. I didnt have a lawyer, but wrote a strong reply and prove them in my reply that their TM is not that famous as they think in my country and did a case study in addition with the help of Google keyword Tool.. So actually you can reply even without a lawyer and free of charge. This Italian insurance company in mediation process actually drop off the UDRP case (500 USD fee only) and paid for a domain

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Well, I acknowledge you for speaking up for yourself. Doing that alone, makes you a big winner; regardless of the outcome. Congratulation!

Thanks for that. Actually I argued Occam's razor in domaining . You have 14 days to respond, so enough time to analyze the text in details and argue at each paragraph. This was my second case. The first one was at UK, cause Ive registered Typo of enterprise.co.uk and even when full of TM violation ads in mediation process the Enterprise Holdings bought it from me...

decades80 said:

Thanks for that. Actually I argued Occam's razor in domaining . You have 14 days to respond, so enough time to analyze the text in details and argue at each paragraph. This was my second case. The first one was at UK, cause Ive registered Typo of enterprise.co.uk and even when full of TM violation ads in mediation process the Enterprise Holdings bought it from me...

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Oh, keep on winning

Yeah, I actually didnt register the domains in bad faith and when I am able to prove it, everything is fine. In both cases I stopped the ads immediately, because I didnt want to be ignorant. Anyway it was my mistake that I havent checked the TMs. But I guess all the process depends on the TM holder. I just wanted to add even when it comes to an UDRP, you have a chance to respond free of charge and you have nothing to loose. But it depends from case to case. Some complainants would simply skip the mediation process.

decades80 said:

Yeah, I actually didnt register the domains in bad faith and when I am able to prove it, everything is fine. In both cases I stopped the ads immediately, because I didnt want to be ignorant. Anyway it was my mistake that I havent checked the TMs. But I guess all the process depends on the TM holder. I just wanted to add even when it comes to an UDRP, you have a chance to respond free of charge and you have nothing to loose. But it depends from case to case. Some complainants would simply skip the mediation process.

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That's about right; the only thing that you can loose, is by not saying anything. And there are some people out there that are so negative. Discouraging you for speaking up and depend yourself. ...

They have my understanding. They are afraid because eventually UDRP can evolve into something worse. So if I knew by the registration I was profiting on somebody TM I would handle them my domain immediately and write an apology letter. But some are so arrogant they even put a price quote at 2.000.000 USD and try to profit in addition from the TM holder. And in those cases its not hard to prove the presence of bad faith. But the story continues, in addition there are small amount of cases when people get actually sued on the foundation of UDRP decision for tens of thousands of dollars.

decades80 said:

They have my understanding. They are afraid because eventually UDRP can evolve into something worse. So if I knew by the registration I was profiting on somebody TM I would handle them my domain immediately and write an apology letter. But some are so arrogant they even put a price quote at 2.000.000 USD and try to profit in addition from the TM holder. And in those cases its not hard to prove the presence of bad faith. But the story continues, in addition there are small amount of cases when people get actually sued on the foundation of UDRP decision for tens of thousands of dollars.

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Just like I said on my previous opinion; about you can still respond and tell your story. And it does not have to be mean and monetary approach. It's for win win situation. If you are going to be greed and the like, they can smell you a mile away.

I would compare it to poetry. If I copied and pasted some verses of poets I am familiar with, thats stealing intellectual property, BUT if I by coincident come up with 3 verses exactly the same as of one famous poet I wasnt aware of, this actually isnt ..

decades80 said:

I would compare it to poetry. If I copied and pasted some verses of poets I am familiar with, thats stealing intellectual property, BUT if I by coincident come up with 3 verses exactly the same as of one famous poet I wasnt aware of, this actually isnt ..

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Ok decdes80.

What's the update? How did it go?

First of all you have done a big mistake by not registering your trademark which is quite cheap in most of the countries. Secondly, If you are incorporated with same name in your country, you can put matter in your local high court as Writ petition to claim your domain. During this period, the other company will have to stop proceedings as the matter is sub judice.