question How to rid myself of a trademarked domain?

IMadeABigMistake said:

I was intent on making a fan site towards a global very well known tech company and managed to buy their .dev domain during the EAP. The site would teach users how to develop applications for use on their mobile platform. Hence (company).dev being a great name.

I was intending on having ads to cover the rather large cost of the domain (4.5k). I very stupidly bought it without thinking about the legal implications of using a trademarked domain and have now found out that not only can I not have ads on this website I likely wont even be allowed to use the domain full stop.

I have been informed that this 4.5k is down the drain, which is sad but in a way I deserve it for purchasing something without doing my research and hopefully this mistake saves me a lot of money in the future. An expensive lesson.

What is my best bet for ridding myself of the domain? I've contacted namecheap and they gave me three options

-Let it Expire
-Send it to a friend
-Sell on their marketplace

I do not want to hold onto it due to the possibilities of receiving a nasty letter. I do not want my name tarnished and would very much hate to have it published on the web in relation to a domain dispute.

How can I get rid of this domain? Bonus points if the method involves me recouping some of the initial cost...

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Offer to transfer the name to the company that holds the trademark for free!

Name tarnished in what sense? UDRP is not like a criminal liability or something? Why the so much fear???

If I were you, believe me, I'll offer it to the company for sale. Let the hell break loose!

Seriosly $5K for a .dev nobody knows about, do you know the caliber of established .com you could have got for that price, with a little bit of leg work. Did they provide you a tm clearly acceptance form?

dande said:

Name tarnished in what sense? UDRP is not like a criminal liability or something? Why the so much fear???

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UDRP rulings are published online and indexed in search engines. Losing a UDRP is not a criminal offense, and the odds are slim that an employer will turn you down (for example) just because they found out in Google that you are a cybersquatter but e-reputation is important. It is negative content about you, that you have no control over. 20-year old rulings are still online for the whole world to see. The right to be forgotten doesn't exist there.
If you lose a UDRP, you are also building up a negative history. If you get hit on another domain, the panelists are more likely to side against you in light of your past behavior, even if your guilt is debatable.

You can even be sued over cybersquatting (Lanham act). It does not happen often but it has happened. If you do stupid things, stupid things happen.

dande said:

Name tarnished in what sense? UDRP is not like a criminal liability or something? Why the so much fear???

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Bad baddddd advice.

This is what I love about this place!
A new member comes in with a legitimate problem and the experienced members step right up to help with great advice.

Thank you one and all.

Peace,
Kenny

wwwweb said:

Seriosly $5K for a .dev nobody knows about, do you know the caliber of established .com you could have got for that price, with a little bit of leg work. Did they provide you a tm clearly acceptance form?

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This is so true!

What industries does the trademark cover? Can your name do something else? Chances are you thought you could squat so really can't feel too sorry for you as otherwise you would have already a business of same name and needed the domain so paid 4.5k to get it. I assume you have done some mail out and that is your real worry.

First of all, is important to not give up the attempt to get the domain name grace deleted (and) to get a full refund - although success in this attempt may look like unrealistically at first glance.

Simply contact your registrar (again) and let them know that you understand the terms but you are still reckoning with their support and that you will also contact Google directlyyy

Then visit
registry.google/report
and choose the option "I have an issue that is not mentioned above."
Explain all to them in clear words and insist to get your domain name grace deleted and demand a full refund (both through your registrar of course).

At least you really should try this / go these steps - it is not excluded that they (your registrar in accordance with Google) will make an exception and will grace delete it / refund you.

+++

If it all won't work out, then write or call the appropriate company and tell them your problem and the circumstances.

Let them know that you are absolutely willing to transfer the domain name immediately (if possible / if not, then as soon it will be possible) and free of charge to them and assure them your full support in this transfer process.

In addition to that, let them know that you nevertheless would appreciate it if they would pay you what you have paid for it - remind them, that you would anyway not make any profit if they pay you what you have paid and that they would only help you not making a losss

Don't forget, behind all companies are humans, so its always worth a tryyy

Why is it that whenever someone infringes on someone else's intellectual property (in the domaining world) they say they are putting up a fan site?

You might as well wear a big bullseye and say come sue me.

IMadeABigMistake said:

an english name + a verb ... which is so common there is a 30% chance it is in your hand

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lock said:

Can your name do something else?

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I guess it depends on how good a singer Sam is.

There are only so many things for which there is an appreciable percentage probability that it is in your hand right now (i.e. reading a screen), and which are "an english name + a verb". I can only think of one.

Speaking with my personal opinion on this.
It all depends on how the company normally deals with people who register their domains. Some try to take the domain, some will ignore you unless you do something with the domain, some will try and buy it, and some will attempt to sue the pants off you and hope to bankrupt you and make an example for anyone else who wants to register their domains.
At the end of the day it makes no difference what the company decides to do, it is what you decide to do that matters. By that I mean do not register a domain that is a famous trademark or otherwise protected. Companies, people, and small businesses spend a lot of time, effort, and money building their brand it is not right to register a domain that infringes on their mark. I'm no lawyer like Mr. Berryhill and am not pretending to give legal advice in any way, just stating that registering a domain of a brand that you think 30% of the people have in their hand right now, it is very hard to see how you could not know this was a trademark.
This doesn't only reflect poorly on you for purchasing a domain like this but on domain investors as a whole who try very hard to invest in valuable generic domain names and steer clear of any kind of trademark but who many times, nonetheless, are labeled cybersquatters.
Everyone makes mistakes and everyone has to learn somehow. I am not trying to rub salt into your wound or saying you are a bad person. I just do not think this was a wise choice. I think your best option at this point is to cancel the domain, the registrar can do this whether they offered you this option or not via support. They can force it to delete and go back to the registry. You may, and there are many variables here which I am not privy to, be able to get a refund. It does not hurt to ask. Again, speaking for myself, I would prefer not to have a trademarked domain name associated with me personally and would ask the registrar to delete it and take my loss as a lesson learned. We all grow through these types of situations.
I hope you are able to get some other domains with that type of budget that you are able to resell and recoup your losses on this one.

What he said.

True story, by the way....

I got married in Las Vegas late one evening, and when we got to the courthouse for our license, we asked the security guard on duty which floor we needed to go to. He directed us to the correct floor, but I will never forget his name. I looked at his name badge and his name - I KID YOU NOT - was "Sam Sung".

We always think about him on our anniversary.

So, anyway, if he's moved on from being a security guard for the Clark County Courthouse, you might want to see if he's gotten into a development business of some kind.

But if you can't find him, yeah, delete this name immediately.

jberryhill said:

What he said.

True story, by the way....

I got married in Las Vegas late one evening, and when we got to the courthouse for our license, we asked the security guard on duty which floor we needed to go to. He directed us to the correct floor, but I will never forget his name. I looked at his name badge and his name - I KID YOU NOT - was "Sam Sung".

We always think about him on our anniversary.

So, anyway, if he's moved on from being a security guard for the Clark County Courthouse, you might want to see if he's gotten into a development business of some kind.

But if you can't find him, yeah, delete this name immediately.

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Lol, there was supposedly a guy named Sam Sung working in a US Apple store as well.

NameDeck said:

Lol, there was supposedly a guy named Sam Sung working in a US Apple store as well.

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...except on his business card, he's in Vancouver, Canada!

canswift said:

...except on his business card, he's in Vancouver, Canada!

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Hehe, thanks for that. My bad

It's a fun story though. I remembered reading about it because of @jberryhill 's story. It got quite some media attention at the time. If you Google it I'm sure you'll find the full story.

JudgeMind said:

......they contacted me again and said, we are prepared to pay $8,000 max to acquire this domain name, please reply. I replied with a link to escrow.com transaction and deal was done..... JM

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Really? Was it positively a trademark violation or just possibly? Can you share the domain?

If an obvious TM violation the trademark owner paying a high 8k is extremely rare and unlikely. Usually they want it for reg costs or may pay as much as 1.5k since a WIPO case is I believe only 1.5k or so. Sometimes they go direct to federal court without notice or trying to buy it seeking 100k in damages.

Bait & Switch Scam? Sounds like it to me.

JudgeMind said:

If you hold a trademark term, don't list for sale, don't auction it, don't put ads on it. A simple contact form lander will allow them to reach out to you. Doing it this way leaves things open to what your intentions are for the domain and whether they will threaten legal action against you for holding the domain. In the event they did threaten legal action, I would have just given them the name and it would have been over. Since I did not make any previous revenue on the domain, nor did I develop it or clearly post it for sale, its tough to prove I registered it in bad faith.

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that may not be true for famous TM s

when you check the trademark registers you may find the same term registered by multiple companies for multiple purposes

so you may have a different idea
that may still be completely legal

unless the TM is famous

--
no legal advice
I am not a lawer

No it is not sam sung although interestingly that does fit the name + verb and holding it clues.

I was being hyperbolic saying 30% have it in their hand, maybe 5-10%.

UDRP rules 4 b (i) state:

It is completely legitimate to ask for your documented expenses to be reimbursed and does not lead to violation of the rules. As such, keep the domain, no ads, no for-sale pages, and if you're contacted by the brand owner, provide them information about the price you've paid and ask for that much – it is your right and nothing is wrong with that. You have not committed a crime or violated anything just by registering the name.