Advice Please.

[chriswalton74]

Earlier this year I registered ha^^o.in for my son and pointed it to his ha^^ohotel fansite that he created.
On Monday I received an email asking if I was the owner....

This is the email:
**S^^^^^ corporation are requesting if you are the owner of ha^^o.in?
Please contact me regarding this site as we are interested in obtaining that
domain. **

I replied that I was the owner, and got this reply back:
**How much are you prepared to sell the domain for? I will have to check
prices with our lawyer before I can confirm anything. Please let me know
how much the domain cost you and we can promise that we will pay a higher
amount or match that amount and give your son credits on our website.**

I emailed back and suggested that £1000 would be reasonable and got this reply:
**I don't think we will be paying that amount of money as domains generally cost around £20 or cheaper nowadays. I will speak with our lawyer but I am positive that he will tell us not to pay that amount of money for a domain that we can obtain by going through legal channels for copyright infringement and use of our trademark.
Please re-consider your asking price...**

I removed the forwarding of the domain as a precaution and parked it back on a ppc site with some adverts for india flights and then emailed back to say that I had removed the forwarding and would be happy to take £100 for the name. I received this reply....
**I'm still waiting on our lawyer getting back to me.
We need the domain for forwarding to our main site.
I will get back to you as soon as possible!**

I am assuming that I am now going to get a letter in the post telling me to surrender the name. What would be my best course of action now?

Advice would be helpful.
I have blanked out a few letters as I am not sure if I would get in trouble for naming the company or the domain name.

 

[Peter]

in my opinion you should have kept the domain pointing to the fan site, they can now argue that you are trying to profit from the domain by having it on a ppc site.

 

[.Mike]

I am no expert in this area but it sounds to me like an underhand, bully-boy tactic to get you to give your name over for next to nothing.

It also sounds as though they really do want the name! I think that if you really were infringing on their copyright, it would have been one of the first things they would have shoved under your nose when they contacted you and they wouldn't have spoken about value.

If I were you let them try and play their game (I think they are just using slightly underhand techniques here) and stick to your £1000 until they start negotiating properly.

I would say you made a good move by pointing it too a ppc site though - better safe than sorry! - you can just play ignorance

If things do start to get heavy (and you can see proof of them spending $xxx on legal fees, solicitors letters etc) i would then say reconsider your position and maybe let it go as this is a company who is actually interested in protecting copyright and paying more to sue you than the domain is worth - I very much doubt that this is the case though!

This is my opinion from the info you have given (it is imposible to say if you are infringing on copyright without the name though)

Good Luck, keep us informed %%-

 

[chriswalton74]

Thank you for the advice so far. Please keep it coming.

Just out of interest........
At the minute I own this name and have had no letters from solicitors etc to tell me to surrender it. Would it be ok for me to sell the name on to a friend before the letter comes?

What I mean by this is...
1) ask one of my friends who lives in another part of the uk to set up a domain discount24 account
2) Sell the domain to them for something like $50
3) Push the name of to their account
4) Email S^^^^^ Corporation and tell them that I'm no longer the owner of the name.

By doing this I am definately not breaching their copyright/Service mark as I no longer own the domain and also, the new owner will not be able to be acused of breaching trademark etc as they have only just got the name.

Also, when I looked up Ha^^o on the US patent and trademark site I found that the word had been registered as a Service Mark rather than a TradeMark. What is the difference?

 

[DNQuest.com]

WOW, that is all I can say. With all the mistakes and mis-advice, where do I start????

First - Do not listen to a thing Auntystatic has to say. Auntystatic, please do us a favor and in legals again until you know what you are talking about. Sorry to be rude, but that is the worse advise I have ever seen here with the exception of giving them the name if things "got heavy".

Second - You registered a known TM, you know there are risks involved. I am very familiar with "the hotel". My daughter is on it all the time. They developed and branded a unique name for thier site. Any registration of that name and you are intentionally infringing on thier TM.

Third - You have given them proof of bad faith usage. You gave a price for the domain, you sent it to a "back" to a PPC, that means it started there at one point and then maybe went to the fansite. You also have adverts on the site. To me, it looks like the name was registered to profit from it.

Forth - Getting rid of the domain may not release you from liability. You already did the action, you can't just forget about it. The new owner would then be liable and if you did not tell him you have been contacted about TM infringement, he could have a case against you along with "the hotel".

Fifth - Claiming ignorance is usually not accepted as a defense in court.

You got caught by the lawyers of "the hotel" and you played right into thier hands. They have you pretty well beat. At this point, just do whatever they ask. They are playing scare tactics with you because you made several mistakes to help their case. I would do exactly the same thing if I were them.

Things you could have done differently?
Never ever talk about selling a TMed name. If it was truely for a fansite for your son, tell them so. Tell them you do not want to sell. Let them come back to you with a $$$ offer, bt never ask for an offer. If it is too low, just re-iterate, you have no interest in selling.

Never ever send a TM to a PPC, you are trying to profit off their name. A big "no no". Profiting or trying to profit off of someone else's TM name is illegal and cybersquatting.

It seems to me that "the hotel" is not going to tolerate games played by squatters. You have already proved your bad faith intentions, they have all they need. Just do as they ask and apologize to them.

 

[.Mike]

WOW, that is all I can say. With all the mistakes and mis-advice, where do I start????

First - Do not listen to a thing Auntystatic has to say. Auntystatic, please do us a favor and in legals again until you know what you are talking about. Sorry to be rude, but that is the worse advise I have ever seen here with the exception of giving them the name if things "got heavy".

Second - You registered a known TM, you know there are risks involved. I am very familiar with "the hotel". My daughter is on it all the time. They developed and branded a unique name for thier site. Any registration of that name and you are intentionally infringing on thier TM.

Third - You have given them proof of bad faith usage. You gave a price for the domain, you sent it to a "back" to a PPC, that means it started there at one point and then maybe went to the fansite. You also have adverts on the site. To me, it looks like the name was registered to profit from it.

Forth - Getting rid of the domain may not release you from liability. You already did the action, you can't just forget about it. The new owner would then be liable and if you did not tell him you have been contacted about TM infringement, he could have a case against you along with "the hotel".

Fifth - Claiming ignorance is usually not accepted as a defense in court.

You got caught by the lawyers of "the hotel" and you played right into thier hands. They have you pretty well beat. At this point, just do whatever they ask. They are playing scare tactics with you because you made several mistakes to help their case. I would do exactly the same thing if I were them.

Things you could have done differently?
Never ever talk about selling a TMed name. If it was truely for a fansite for your son, tell them so. Tell them you do not want to sell. Let them come back to you with a $$$ offer, bt never ask for an offer. If it is too low, just re-iterate, you have no interest in selling.

Never ever send a TM to a PPC, you are trying to profit off their name. A big "no no". Profiting or trying to profit off of someone else's TM name is illegal and cybersquatting.

It seems to me that "the hotel" is not going to tolerate games played by squatters. You have already proved your bad faith intentions, they have all they need. Just do as they ask and apologize to them.

:lol: - You obviously know what this name is and know that it actually does have TM problems with it - I didn't (and still don't) - However I bow to your greater experience / knowedge (I am assuming you have in this area as I am supposing if you were not qualified you wouldn't make this post).

So best of luck to Chris and a great big cuddle for DNQuest - nice to make your acquaintance :blink:

 

[primacomputer]

In addition, the fact that you have a number of other trademarked names would look really bad for you in any dispute. You're pretty much screwed no matter what you do. Just keep dropping the price until they accept --even if that's $0. That's the only solution that may make you money instead of costing you money.

 

[Peter]

:lol: - You obviously know what this name is and know that it actually does have TM problems with it - I didn't (and still don't) - However I bow to your greater experience / knowedge (I am assuming you have in this area as I am supposing if you were not qualified you wouldn't make this post).

So best of luck to Chris and a great big cuddle for DNQuest - nice to make your acquaintance :blink:

In all honesty it is common sense. As soon as they see that someone is profiting from their trademark they are obviously going to take offence.

 

[.Mike]

In all honesty it is common sense. As soon as they see that someone is profiting from their trademark they are obviously going to take offence.

I accept that and wouldn't argue over it - In my defence though, I honestly do not know what the name is, I have a feeling that you guys may have worked it out straight away and then continued to read the post knowing it was infringing a Trademark - I read it thinking it could be any word that just suited his sons project.

Re-read it the way I have... I know I have had approaches from individuals on some of my names where they have pretended to be something they are not just to try and get me to give them the domain. And this isn't a million miles away from one that springs to mind...

Incidently had I known that the domain was a TM name from the outset I wouldn't have reacted the way I did (hence my closing comment) - Can somebody do me the favour of PMing me what this name is, I am now very curious...

 

[Peter]

In all honesty I have absolutely no idea what the domain name is

BUT re read his original post. He said that the other company said the following:-

he will tell us not to pay that amount of money for a domain that we can obtain by going through legal channels for copyright infringement and use of our trademark.
Please re-consider your asking price...**

that is when he changed the forwarding to the PPC site. He would have been better keeping it forwarding to the supposed fan site to claim he was unaware of the trademark and if they came after him he could habnd it over or possibly get a sum for the domain.

As things stand now he is almost inviting them to come after him. He has also handed them their best argument for wipo. That excuse being that he is profiting from their trademark.

 

[.Mike]

In all honesty I have absolutely no idea what the domain name is

BUT re read his original post. He said that the other company said the following:-



that is when he changed the forwarding to the PPC site. He would have been better keeping it forwarding to the supposed fan site to claim he was unaware of the trademark and if they came after him he could habnd it over or possibly get a sum for the domain.

As things stand now he is almost inviting them to come after him. He has also handed them their best argument for wipo. That excuse being that he is profiting from their trademark.

Thanks Filth, I see that and certainly in hind sight I would retract my statement "I would say you made a good move by pointing it too a ppc site though - better safe than sorry! - you can just play ignorance" and agree that is was probably a bad move... To be honest I think I have approached this differently to everyone else in that I have assumed that it is a buyer playing games (due to the recent 'game' that was attempted on me that is so similar to this) and that there was never actually any confirmation that it was a TM name until after my original post.

Thanks for your time filth, very much appreciated :tu:

 

[DNQuest.com]

Auntystatic - It is aTM name, yes I know it well. So yes, I DO KNOW the actual name. I give $20 a month for my daughter to play on that site. I know this as a fact. The 2 ^^ are actually BB. Look it up www.ha^^ohotel.com replace the 2 ^^ with BB and you get the site.

The advice you gave is the exact opposite of being correct. The reason I point this out is because people WILL read your post and start assuming what they are doing is correct. You came off as being knowledgable and you gave bad advise. It needed to be directly addressed. Though I did give you credit for saying to give it up if it got "heavy".

Like I said, you gave the lawyers more than enough to win the name. You don't want to challenge them at this point. You don't want to be branded a squatter. Fansites are ok (even then, do not profit for the domain) and have been upheld in challenges.

I speak openly about TMs because people need to realize the truth. I am direct because that is the only people will learn. I have been in the domain field for almost 4 years now and have done a ton of research on TMs. I read the decisions and learn from others. I do know the loopholes, I have given a lot of advise on protecting yourself. I have fought successfully against C+Ds agaisnt my fansites (and I am actually a fan). If you serach, you will see I am consistant in my posts. I will be harsh on wrong advise, I will take it easy on "newbies". but the bottom line is still the same. You cannot profit from another persons name.

 

[.Mike]

DNQuest:-
I have approached this from a sales position when I should have given more credit to the thread starter that he placed it in the legal advice section because he knew there were TM issues. I looked at it with a sales cap on, and I still say that it does looks like unethical purchase approach. However I now openly accept that this name has glaring TM issues but this was not made obvious at the time of the original post (other than the 'buyer' claiming to have a registered Trademark) but you were fortunate enough to have the prior knowledge.

If this had been posted in the domain discussion forum I dare say I would not have been on my own in this approach - but it wasn't.

Incidently, if I ever make a cock-up I wouldn't expect anything else than a strong 'don't be an idiot'. The other thing is there is no need to justify your credentials, I never questioned them...

The lessons learned? - Well, my first question should have been to the thread starter 'Have you checked to see if there is an actual trademark registered' instead of assuming it was a bluff on the 'buyer's' part and second... If you want a great fight come to the 'Legal Issues & Disputes' Forum

P.S. - I had a look at the website, still means nothing to me, I would never have guessed it - lol

Friendly regards and respect, Mike

 

[primacomputer]

The thing I find so ironic is all this secrecy over a name which he has posted in the for sale section a number of times.

 

[DNQuest.com]

Auntystatic, good post. It shows your good character and professionalism, I do appreciate that. :tu: We all make mistakes and as long as we learn from them, it's all good.

No hard feelings.



I did not know the site was posted for sale here, yet another bad move. So the story of registering it for a kid seems more like an afterthought AFTER being contacted.


EDIT TO ADD:

I researched the domain, you asked for an appraisal 4 days after you registered it (reg 5-16, appr request 5-20), then you offered it for sale at least 10 times according to a search here. You are a cybersquatter, period. Additionally, your story you told is not completely true, you wanted to profit from the name, you weren't completely being honest with our community. This is the reason why domain speculators get a bad name. Sorry to be harsh.

 

[cjcjcj]

Even though TM'ed - might still want to confirm that the contact is from the Company and not a scammer tyring to get the name for cheap.

Just my opinion.

 

[Argos23]

Open a new account false name etc and send the domain there, When you get an email say you will not sell the domain name as it is going to be a free fan site.

 

[DNQuest.com]

Open a new account false name etc and send the domain there, When you get an email say you will not sell the domain name as it is going to be a free fan site.

False Whois is grounds for losing the domain additionally it shows that someone is trying to "hide" something. Plus the seller already has shown bad faith, you can't just say things (or lie) for the sake of saying them in hopes of trying to dave the domain.

 

[Morph]

Their correspondance doesnt sound like a big company like sula^e to me.

Id be careful, im not going to advise you on laws but check to see if whoever they are REALLY ARE who they say they are.

 

[The Prodigy]

Just surrender it over, that way you won't have any trouble from them.

 

[Dave_Z]

Just surrender it over, that way you won't have any trouble from them.

You're thinking just handing over the name will close this story?

If the complaining party proves they indeed have a trademark, they can also
sue for monetary damages if laws apply.

Great posts BTW, DNQuest. :great:

 

[primacomputer]

Open a new account false name etc and send the domain there, When you get an email say you will not sell the domain name as it is going to be a free fan site.

Don't do this! You may be able to talk your way out of legal action by offering to just hand over a name. As soon as you piss them off they will slap you with a trademark suit. They will take your money in addition to the domain. Don't make things worse for yourself.

 

[DNQuest.com]

Just surrender it over, that way you won't have any trouble from them.

There is a great analogy that I will sort of plagerize here....

I walk into the a store
I steal a candy bar
I get caught
I offer the candy bar back
They call the cops
I say "It's only a candy bar!"
Store says we prosecute all shoplifters to the fullest extent of the law

Just because I offered the candy bar back does not mean I did not commit a crime. Would a store just take the candy bar back and let me go? probably. (This would be like handing over a domain and then they forget about you). Do they have to? Heck no! (That would be a TM holder making an example of you)

Infringing with the intent of bad faith of a TM domain is against the law ($100,000.00 penalty plus the label of a squatter which could affect any future disputes). Are there exceptions and loopholes? Yes... do you have the money to fight it and is it worth it? You decide...

 

[Shorty]

From a legal point of view, this has both actus reus and mans rea. You did the crime, you registered the domain name, the intent was to profit from a TM you were aware of. Email them and tell them you will hand them the domain immediately providing they agree not to prosecute you, they have a strong legal position over you.

 

[namenut]

excuse my input but I would like to comment on DNQ and AUNty. I am empressed with the discusion I just read. Both of you are sencerely trying to help this guy and you have done so in great tact. Hats off to both of you for sticking to your guns until it was no longer prudent nor correct. Quite a display of characture and professionalism. Makes me feel I'm in the right place.

Not to mention the content now has me thinking. I will take stock and make any apropriate changes.

namenut