Advices please! TM issues

[zhisede]

I recently acquired a .com domain and have developped it into a small site. Today, I received an email from a UK company claiming that they have trademark of my domain and ask me to transfer my name to them. I did a search on www.uspto.gov but find nothing. It seems that they only registered the trademark in UK and don't have an international trademark. In a situation like this, is it easy for me to win a ICANN dispute? has anyone here experienced the same situation before?

I am in US, so are my registration info of the name.


Thanks a lot!!

 

[DNQuest.com]

Many countires will honor other countries TMs. Just because the UK TM is not registered in the US does not mean they do not have rights. As in every TM case, each situation is done on a case by case basis, but similar cases can have similar results. You have not given us anthing to go on. But challenging on a basis of not having an "International TM" may not be the wisest defese to go on.

 

[JYM]

It also depends whether or not your two websites are in the same category... for instance if i had googles.com and i was selling hats (and my company name was googles), I'm not sure they could win a case because the websites are in two different categories and are completely unrelated.

However each case is very different... also what is your .com domain?

 

[createmx]

Let the domain expire. Make them pay to register it themselves.

 

[labrocca]

Also remember that a WIPO will cost them at least $1k-$3k....so let's say you do have a legit interest and this small site cost you say...$500. I don't think it would be too out of line to respectfully ask if they have interest in just buying you out at a very fair price. At least it's worth considering...I don't know your entire circumstance without the domain name (wise though not to post it).

 

[DNQuest.com]

Just when I thought you came to the dark side.....

1- Since we do not know the domain, you really can't good advice, posters tend to slant stories in their favor in order to get favorable feedback when in truth, there may be somethig else going on. 2- If there is a TM involved, asking for $$$ is a sign of bad faith. Regardless how the numbers work out, a company may rather fight for a TM than negotiate. Yes, it has happened, so we need to be real about this.

 

[IAmAllanShore]

Does the UK company conduct any business in the US?

This "small developed site", is it related to the same service that the UK company is.

Did you really register this domain because of the similarity in name?

-Allan

 

[zhisede]

Thank you all for the advices. Appreciate it a lot!!!

After negociation with the company, they have finally agreed to pay me low $X,XXX for the name. I explained to them I registered this name in good faith and for my own use. Also, I listed my cost associated with this site.


As to the questions: the UK company has no business in united states. My small site has some similarity to its business because of the name (the name is very well suitable for loan business, I think anyone get this name will make it into a loan site).

 

[labrocca]

Just when I thought you came to the dark side.....

1- Since we do not know the domain, you really can't good advice, posters tend to slant stories in their favor in order to get favorable feedback when in truth, there may be somethig else going on. 2- If there is a TM involved, asking for $$$ is a sign of bad faith. Regardless how the numbers work out, a company may rather fight for a TM than negotiate. Yes, it has happened, so we need to be real about this.

Since it seems they want the domain and are willing to go after him why not ask for money...what does he have to lose really? I know posters don't always tell the truth but I ain't a lawyer either so what does it really matter. He asked for an opinion and he gets one. I have no vested interest in his domain. DNQ I wonder how good you truely are at negotiating. I have done some amazing settlement deals where others thought I would get nothing. Many things are possible with the proper negotiator.

 

[DNQuest.com]

Labroca, while it may be true with your negotiating skills, this is the LEGAL section, not the "BS and Fluff" section. Is anything possible, heck yea. We both realize that, but how many times has bad advise been given and thena newbie would only listen to that bad advise? I happens a lot. We do give good point/counter point at times that gives readers both sides (and implications). And I think you realize I may not be as hardlined as my posts indicate. But you have to realize there are people who will only read what they want to read and I make sure they understand teh consequences of some actions.

As far as this thread, the OP never gave the name, so we do not know the extent of the TM. I am glad he was able to get some money from it (and decent amount at that), but some newbie reading this might think it is a good idea to negotiate a TMed domain (when in fact, this particular TM may have been weak, which is why the company settled).

 

[createmx]

As long as the request to sell is not recorded then it can't be used against you.

 

[labrocca]

Labroca, while it may be true with your negotiating skills, this is the LEGAL section, not the "BS and Fluff" section. Is anything possible, heck yea. We both realize that, but how many times has bad advise been given and thena newbie would only listen to that bad advise? I happens a lot. We do give good point/counter point at times that gives readers both sides (and implications). And I think you realize I may not be as hardlined as my posts indicate. But you have to realize there are people who will only read what they want to read and I make sure they understand teh consequences of some actions.

As far as this thread, the OP never gave the name, so we do not know the extent of the TM. I am glad he was able to get some money from it (and decent amount at that), but some newbie reading this might think it is a good idea to negotiate a TMed domain (when in fact, this particular TM may have been weak, which is why the company settled).

Oh cmon now..when was the last time a n00b took even 5 minutes to read past threads before posting a topic like "Is Microsoft-Google.com illegal"...You need a beer DNQ...heck so do I. too bad you aint in vegas otherwise I would buy you one.

Thank you all for the advices. Appreciate it a lot!!!

After negociation with the company, they have finally agreed to pay me low $X,XXX for the name. I explained to them I registered this name in good faith and for my own use. Also, I listed my cost associated with this site.


As to the questions: the UK company has no business in united states. My small site has some similarity to its business because of the name (the name is very well suitable for loan business, I think anyone get this name will make it into a loan site).

Do I get a tip at least?

 

[DNQuest.com]

Oh cmon now..when was the last time a n00b took even 5 minutes to read past threads before posting a topic like "Is Microsoft-Google.com illegal"...You need a beer DNQ...heck so do I. too bad you aint in vegas otherwise I would buy you one.

That was funny, I think I woke my kid up.

Side note, I've been to Vegas about 50 times in my life, I'll have to remember my free beer next time lol