An unhappy globefrog... TM screw over

[globefrog]

Hi Guys,

Im seeking independent advice from a lawyer on this one so I apologise for the vague details. Here's what happened in a nutshell. Seen as though its about to the hit the roof we will suggest the following hypothetical situation

I registered a domain that was <a name of a place + generic term.com> The name of the place is also the name of a company. So for example we will use XXXXXXXHOTELS.COM

At the time there was no trademark against this term (also its a suburb) so I registered it and advertised it on a site for sale.

The company named after the suburb have now trademarked the term which is my domain name and have sent me an email asking nicely for their newly trademarked name back otherwise they will send me a C&D and follow formal procedures. They have invited me to invoice them for the reg fee and my time to transfer it etc of up to $200.

PRIOR to all this the company emailed me and asked if the domain was for sale etc and I told them a price & they said they were liasing with their marketing department and then went quiet. The amount was in excess of $20k.

So, if this is bona fide and can be pulled off does this mean that someone can come along and TM the term used in a domain already registered and then ask for it back even though you owned the first?

In addition to this the lawyer the company used conveniently has offices in Australia as part of their global presence and have told me to communicate with the Australian office despite the company being based in the states and east.

Any thoughts appreciated. I am happy to clarify if I havent explained this clear enough.

 

[Ronald Regging]

Well, I'm sure your lawyer can advise you better, but I might suggest that you do not communicate with their Australian office at all, otherwise it may show consent on your part in creating jurisdiction over this matter in Australia. Which in the end, would probably screw you over completely, because who can afford to goto Australia to defend something this stupid? This may be what they are counting on. I wouldn't respond at all until you speak with your lawyer.

But basically speaking, this definitely sounds like a reverse hijacking attempt. I'm sure your lawyer will be able to handle it.

 

[DNQuest.com]

For Clarification, when you say there was no TM, do you mean a registered mark or teh company was not in business at teh time you registered the domain? If teh company was in business, then they may as well have a TM. Yes, companies can contact you asking for a price, you give it to them, then they yell "cybersquatting". You also do not mention how the domain was being used. Was there an actual site? parking? just for sale?.... that is crucial in helping you out.

 

[Ronald Regging]

The fact that it's named after a geographic location, even if it's just a suburb, kind of kills their claim to exclusivity of the name. And it doesn't stand to reason that registering a domain as generic as suburbHOTELS.com would be construed as infringing on their mark. That is, unless they operate hotels. I guess I just assumed that their business had nothing to do with hotels, mostly because I didn't read to the part where they offered to buy it... I guess if their business had nothing to do with hotels, they wouldn't have been interested in purchasing it in the first place.

So I guess you need to include what type of business they are in and like DNQuest said, what you used the domain for.

 

[labrocca]

One key note is the original emails they sent you. If they are negotiating with you that may not bode well for them as it can be seen as their recognition to your rights in the domain name. Make sure to keep all those correspondence. Keep in mind that if they want to sue you...they can...winning is another matter and also paying to defend the suit is as well. Your 20k may have set off a red flag to them. A business is about money. If they can sue you cheaper than buying it..what do you think they will do? I suggest you attempt to discuss this rationally over the phone with their lawyer. Whatever you do don't show fear over a suit but say of course that neither side wants to go to court over this. Are you able to bring your price down to a reasonable level? Possibly $3-5k? For that amount they may want to expedite the deal and get it off the table.

Good luck...

(caveat: I am not a lawyer)

 

[globefrog]

Hey Guys,

Forstly thanks for your replies.

Yes here is the thing they do operate hotels but are only one of about a dozen who do in the suburb, so other companies could use this domain as well. The domain was never parked, just left with no content. Not even a sale page and when I say their was no TM I mean no TM against the term suburb + hotels, the company has been in business for a few years. However so have the other dozen operators who are in the same suburb. As for the companies initial emails which I have kept, they are all nice and interested and then the next thing you know 6 weeks later I have a letter A search engine search entering the Suburb + hotels returns a very niche group of results that is limited to the dozen or so companies with hotels in this suburb, and in a press release the company stated they are focusing their business development using e commerce thus the reason for my 20k price and this company is HUGE.

I guess my other concern is if I am bordering un ethical practices? The main thing I can honestly say is when I registered the domain I certainly did not have any ill intent in mind and registered around 30 other generic terms to do with this suburb.

Does anyone know of past efforts similar to this where the company has pulled it off and got the domain back?

How does it stand if they take me to court when Im located in Australia?

 

[Dave_Z]

IANAL either. Just my thoughts.

How does it stand if they take me to court when Im located in Australia?

2 possible ways:

1. Take you to Court under any applicable Australian law (if any), especially
since you mentioned they have an Australian-based office.

2. Sue under US law, win, and try to enforce judgment under any agreement
between the US and Australia (if any).

To me it looks like a reverse domain hijack attempt as well. Documenting any
communication you've had with the other party can possibly rebut any claims
they make against you, but don't "educate" the other side about it.

Worse comes to worse, be ready to retain competent legal counsel.

 

[DNQuest.com]

"when I say their was no TM I mean no TM against the term suburb + hotels, the company has been in business for a few years."

Ok, this statement needs to be clarified. Is the company called "suburb + hotels" or run hotels called "suburb + hotels"? I am confused, you say there is no TM, but yet you say the company has been around for a "few years". If the company has been around for a few years, then they can well establish a TM under common law TM status wihtout needing to file with the TM office. Plus you need to elet us know when the company started it's business and when teh domain was registered.

Too many people here are defending the registration, but without the knowledge as I mentioned, you really can't say if he is safe or not.While it is true that no one could call "suburb" or "hotel" as thier own, teh combination of the both of them could be. when used in a distinct manner. Also, geography can play a role in this too, but I don't feel like speculating at the moment


In UDRPs, a passive holding of a domain (like it sounds here) does not create interest in the domain for the registrant. So if the TM holder can prove they have trights to teh name and you don't, that won't bode well for you.

 

[Ronald Regging]

Yeah, im going to stay out of this one completely from this point on, because I misread pretty much the entire thing... I'm usually so good at reading too...haha After finding out that they offered you money and that you're from Australia, I just gotta quit before I say any more stupid things.

 

[DNQuest.com]

We all have a "my bad" every once in a while it's all good.

 

[globefrog]

Sorry guys. Its all clear in my mind but getting it onto the screen is hard

Ok,The company is simply called "suburb" for argument sake they are called "new york" they have been around for many years (around 10). "new york" own a heaps of hotels world wide. But "New York" has many hotel operators in it and even some with domains like "newyorkXXXXXX.com" XXXXXX= hotels, resorts, getaways etc. etc.

It seems the grey area is this company has chosen a suburb as their sole business name.

IF we assume they can prove they have more right to the name than myself, wouldnt this mean that other hotel operators in the "suburb" would also have a right at claiming the domain? especially if they have been in operation longer?


My lawyer is having to do "research" im not sure if I take comfort in this :S


Also to clarify the Australian bit, The law firm the company is using in their country is a global firm who simply have an office in Australia where I am located. The letter stated If I have any queries I may contact the Australia office. The letter however came from abroad.


Hope this clears up the confusion and thanks for all your input so far.

also rep's added. thanks again

 

[DNQuest.com]

Ok, a straight forward question here.... IS suburban XXXXXX used in commerce??? That means, do they have hotels called Suburnban Hotels and operate under that name. I am not asking the parent name, but if they operate under the name Suburban XXXXXX that is similiar to the domain in question.

 

[globefrog]

No, they have individual brands for their hotels not named after the suburb. The parent company is simply named after the suburb.

 

[Lasher]

Sounds to me like you might have stumbled across a "suburb" called Marriot or Hilton or similar. Good luck with that. If that's the case I'd strongly recommend taking Labrocca's advice and negotiating a fair price for the domain that makes it less desirable for them to sue but you still get a good price. Also, do a search on your domain, make sure there is nothing you have posted or implied regarding that domain in the past they could use against you. Do the same on your name, make sure there's nothing they could point to regarding other domains that shows a history of registering names 'in bad faith'.

I saw "your lawyer" mentioned a couple of times too. If you fight this, get a lawyer who specializes in IP and domains like John Berryhill or similar -- don't just go with a regular family lawyer. Chances are they'll just consult with someone like Mr Berryhill behind the scenes and charge you a markup, either that or wing it and screw up your case.

Good luck!

 

[globefrog]

Mate you have hit the nail on the head with the situation. Has anyone had experience with lawyer fees for such things?

 

[Lasher]

Contact John Berryhill (John-at-johnberryhill.com) or Ari Goldberger who runs ESQWire.com. Both are well known and highly regarded in the domain industry.