Am I in trouble?

[gramathy2]

I just received an offer on a domain name and I did some research on the buyer and it looks like he is a lawyer, potentially a TM lawyer...
I didn't think anything of the domain name when I reg'd it, because it seems to be very generic. But i looked in more detail today and there might be a TM issue.
Basically my name has "online" in front of a TM'd site's name, but that which happens to be generic.
Let's say my site is "onlinediscountcars.com" (not really the name) and "discountcars" (made-up) is a website and TM...

Am I in trouble?
why would this lawyer offer to buy my name (it was through NameDrive, all I got was his email)...and not come to me directly through WhoIs?

Worst case scenario, what would happen w/ this?
Any chance I can just give them the name if they file UDRP?

 

[clocker24]

Is the offer reasonable? I suggest you simply take the offer. Don't look a gift horse in the mouth.

 

[gramathy2]

Yes I had an asking price listed and the buyer offered the asking price + $5... I them emailed him about transferring the name, etc and he has yet to reply. That is when I did some research on his name from his email address and began to speculate that he is after me.
Ha, if you can't tell this is my first sale.
hopefully I am just worrying w/o cause but I need him to send a reply that is not a notification of a suit before I chill out...

 

[Acroplex]

Lawyers respond at their own pace. I made a large private sale to a lawfirm by being patient and sticking to my guns. As long as the application for the TM was made after you registered the domain, you don't have to worry.

 

[gramathy2]

I am afraid the the TM was made years before I reg'd the domain... hopefully this lawyer is working for the company who owns the TM and trying to acquire names similar to their TM for them... the offer was low $xxx, so it is not a huge number

thanks for the replies, Clocker and Acroplex...
I would rep but last time I did that someone said it didn't matter since I am still a "new member"...

 

[Abu Gabby]

In order for you to be "in trouble" you would have to be guilty of three things according to the UDRP.

1. You have to have registered the domain in bad faith.

2. You have to have a site or service that is confusing the other brand.

3. You have no rights or legitimate interests in a domain name.

I would say if he is offering to buy it from you, you are safe. Sell it. It costs $1000 to file a UDRP complaint so if the buying price is less than that, they might be taking the easy and cheap way out.

SELL IT.

 

[gramathy2]

Thanks Abu, I feel better now.
much appreciated.

 

[Spade]

Based on your description, it sounds like your domain may be too generic anyhow. Plus not to mention the fees involved in filing the UDRP, its much cheaper to just buy the domain from you and make you sign a NDA....

Good luck, let us know what happens.

 

[gramathy2]

I will definitely let you know. Right now I am still waiting to hear back
Thanks alot
G

 

[AdoptableDomains]

If the offer is $XXX, that is less than to file a UDRP and certainly less than a lawsuit. They are probably just acquiring at the least cost to them. If they were fishing for bad faith answers, they would likely either offer a low amount near reg fee or a high amount to prove a point that the price was exorbitant. I personally would sell. They may not be completely sure themselves that they could win a case if the name were found to be too generic.

 

[Acroplex]

Just remember that a corporation that employs a legal team to protect their interest, does not consider $1k to be a prohibitive expense.

 

[Abu Gabby]

Just remember that a corporation that employs a legal team to protect their interest, does not consider $1k to be a prohibitive expense.

Agreed, but they also are in the business of making money. Why would they spend $1000 + legal fees when they can buy the name outright for $100 and save a lot of time and money?

 

[loko123]

just sell it, less troubles. specially if TM involved.

 

[IAmAllanShore]

As long as the application for the TM was made after you registered the domain, you don't have to worry.

Usually true, but not necessarily (I post this like a broken record - Straight from WIPO, which is not the word of God, but is fairly authoritative as it takes the lion's share of UDRP actions.)

WIPO has updated their page on this question:

1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.

Relevant decisions:
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827 , Denied
AB Svenska Spel v. Andrey Zacharov D2003-0527 , Transfer
Iogen Corporation v. Iogen D2003-0544 , Denied
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer



3. Third UDRP Element

3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

Relevant decisions:
John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited D2001-0074 , Denied
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827 , Denied
PrintForBusiness B.V v. LBS Horticulture D2001-1182 , Denied

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.

Relevant decisions:
ExecuJet Holdings Ltd. v. Air Alpha America, Inc. D2002-0669 , Denied
Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc) D2003-0320 , Transfer
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer
General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online D2003-0845 , Transfer

 

[verbster]

In the amount of time it takes to make you an offer, an attorney could have edited a boilerplate Cease & Desist letter demanding that you turn over the domain. This is normally the beginning move for a legal claim on the domain.

If the attorney is in fact employed by the company and has the intention of legally forcing you to turn over your domain, he would not approach you with an offer to buy the domain, as an offer from him (as a legal representative of the compny) to buy the domain complicates his legal argument concerning your intentions.

So just sell it and forget it.

 

[DNQuest.com]

So just sell it and forget it.

I didn't realize Ron Popeil was a member?!?!?

Sorry, too many late night informercial watching lol

 

[DylanButler]

I didn't realize Ron Popeil was a member?!?!?

Sorry, too many late night informercial watching lol

Haha, thanks for the great idea, the REG-O-MATIC!

 

[DNQuest.com]

LMAO!!!!

Damn, I wish I would have thought of that.

reg-o-matic.com is not available.

 

[labrocca]

Be aware that if it's a lawyer representing the TM holder..by making you an initial offer they are pretty much saying you have legitimate rights to the name. At least that would be my argument. If they wanted C&D they would have done that FIRST. And he didn't ASK if you were selling it. He actually just made the offer. I say take the money. Whenever I have a TM domain and money is thrown at me I take it and say thank you.

Take the offer.

 

[jberryhill]

Why would they spend $1000 + legal fees when they can buy the name outright for $100 and save a lot of time and money?

To make an example of you. Sometimes that happens.

If you received a definite offer in the form "I will buy the domain for $xxx", and you accepted that offer, then the only person with worries at this point is the attorney. He/she entered into a contract with you and now must perform.

If you received a communication stating "I would like to buy the domain, how much are you selling for?" then you have not received an offer to buy the domain name. You have received a probe for evidence to be used against you.

Depending on the state, if that attorney did not identify him/herself as an attorney acting in a representative capacity for a potentially adverse interest, then the attorney has engaged in an ethical violation.

Be aware that if it's a lawyer representing the TM holder..by making you an initial offer they are pretty much saying you have legitimate rights to the name.

That point is debatable, and hasn't always flown successfully.