Appraising a domain and selling to trademark owner?

[rywen]

A few years ago I registered a business name to do some consulting work in the film/videography industry, and I registered two domain names that were variants of the company name. One of the two words in my company name is a TLD so I purchased domains in the form of "companyname. tv" and "company. name" My company name is free of trademark conflicts in the industry we operate in.

A year or so after registering the domains (I never developed them) I was contacted by a million dollar software company (roughly $50m yearly revenue). Apparently, the first word in my company name is a trademark for a minor product of theirs. They sent me a letter and offered to buy the domains, so I passed it off to my business attorney and let him handle it.
My attorney advised me that I have the legal high ground because I'm in a different industry than their trademark applies to, (although after reading threads in this forum, I'm less confident) but rather than risk any further legal expenses defending myself against this company or any companies with similar names in different industries, at the time I decided I should dissolve the entity and form another company with a less common name for this type of consulting work.

The other company's attorney was very slow in responding after their initial contact. I think my attorney and theirs exchanged four emails and a phone call over the course of six months and even though they contacted me initially, they seemed very indifferent to actually resolving the issue. I think we explained we'd like a few thousand dollars per domain to cover legal fees and the expenses of dissolving the company and forming a new entity, but the highest they'd go was $1000. To me that didn't sound like they were serious about acquiring the domains so I let the issue drop and kept using the business name. Now two years after not responding to our last contact, they've contacted us again and are requesting to buy the domains.

Does anyone have advice on how to proceed with a situation like this? Is there a firm I should be using to appraise my domain value so I can try to sell them to the other company... or should I just consider myself lucky I'm getting anything out of them and not a bigger legal headache?

 

[BaileyUK]

Hello rywen.
Impossible to answer without knowing the domains in question.

how unique is the word in question ?
date of the trademark registrations and classes ?

If you want to PM the domain names in question I'll take a look for you, I'm pretty clued-up on domains and trademark law...it could be the Company concerned is trying to play the Bully or indeed may just want an amicable and fair closure on the issue.

There's some good hands on namepros but, nobody can work from the vague picture that you've posted.

It is generally quite a promising sign if they have approached you and made an offer. I won't go into all the whys and wherefores here. But, equally it shouldn't be taken as a 'free hand' to do as one wishes.

ps, Always wise to introduce yourself in the new members posts before submitting requests

 

[rywen]

Thank you for the feedback. To clarify, I'm not in the business of being a domain reseller; although I am a bit of a compulsive domain buyer, and have parked more domains than I realistically need relating to business and product ideas I own or would like to develop. I own several businesses in different industries (ecommerce, manufacturing, film and video) and this just happened to be a conflict with one of the businesses I started. I got the sense that even though the law firm I use is very experienced in IP law, they haven't done much work like this, so I found this forum in an attempt to find better advice.

I'll send you a PM with specific domain information... I feel like it's better not to advertise publicly that I'm looking for help with specific domains.

 

[jberryhill]

Rywen,

There is a "sticky" thread in the legal forum with a number of attorneys mentioned there. Sending confidential information to people you don't know on a discussion forum, particularly when there is a something of a history here, is not the most advisable thing to do.

 

[BaileyUK]

OK only trying to be helpful Mr Berryhill. I wish I hadn't wasted a couple of hours of my time, the domain owner seemed thankful but of course Lawyers do like to protect us from any free advice. Quite understandably

Not sure what the "Something of a History refers" to .
However please be assured I will reframe from offering any further opinions. If your just going to get shot down

 

[jberryhill]

Lawyers do like to protect us from any free advice

I provide free consultations to people who contact me all of the time, as do most lawyers. What a lawyer cannot do is solicit clients in inappropriate ways. I consider it to be unethical for a lawyer to do so on a forum such as this.

Not sure what the "Something of a History refers" to .

It refers to the fact that the OP mentions in passing that there was considerable correspondence on the matter in the past. That will be the first stop shop for anyone who would want to advise the OP, since we don't know what may or may not have been said that might come back to bite a "fresh start" clean in the ass.

However please be assured I will reframe from offering any further opinions. If your just going to get shot down

The process of discussing aspects of various sorts of questions is educational for everyone. The process of "PM me and I'll tell you what I think" is not. The added wrinkle, particularly if someone is going to engage in extraneous correspondence, is that if litigation erupts and someone is required to provide all non-privileged correspondence relating to the matter, then those PM's with a non-lawyer qualify as non-privileged, discoverable information. Correspondence with a lawyer does not.

Seeking specific legal advice on a message board is, in general, a bad idea. For an attorney to give specific legal advice - which is different from discussing the general sorts of issues an inquiry might raise and from which persons on a message board might generally benefit- is instant malpractice.

But when you have a situation where there has been some water under the bridge, then you look at this:

I think we explained we'd like a few thousand dollars per domain to cover legal fees and the expenses of dissolving the company and forming a new entity, but the highest they'd go was $1000. To me that didn't sound like they were serious about acquiring the domains so I let the issue drop and kept using the business name. Now two years after not responding to our last contact, they've contacted us again and are requesting to buy the domains.

Does anyone have advice on how to proceed with a situation like this?

It's not really clear where things went between:

"I let the issue drop" and them "not responding to our last contact". That sounds more like they let the issue drop. Was the OP's last communication to them an offer which, if accepted, could be binding? It's not really clear who sent the last communication in the previous discussion to whom.

If they are back, and thus have picked up the conversation, then the most useful reply may simply be something along the lines of, "We have been awaiting your reply to our last communication dated xxx." Full stop.

For all we know from the OP, this "new" communication may have come from someone in the organization who is completely clueless on the prior correspondence, and is simply fishing for UDRP 'offer to sell' evidence. And what some people characterize as them "requesting to buy the domains" differs wildly. I've been contacted by people who have a full-on "we demand you transfer them or we'll sue you" letter as "they have contacted me to buy the domains". One big mistake to make in life generally is assuming that everyone else perceives things the way you would.

But if it is a large organization in which frequently the left hand doesn't know what the right hand is doing, then if someone were to propose a new line of discussion with this new inquiry, then you want to make absolutely certain that ANYTHING you say in reply is consistent with what was in the previous correspondence in the event the two lines of discussion eventually get matched up by someone who is looking for apparent inconsistencies.

There are some people whom I call "regulars" with my portfolio clients, who crack me up. They'll send a legal threat, we'll shoot it down, and it's almost like they have a long-scale internal clock like cicadas. Every couple of years, they'll show up with the same nonsense with amazing consistency - anything from two to four years or so. Those people are best dealt with by the "please refer to our previous communication dated xxx" approach.

Or, you have a situation where a dodgy TM claim was made, a response was sent, the TM owner undergoes a change of management or ownership, and the new marketing manager wants to make themselves look productive by tilling that same field. Again, the most useful answer to them is to simply refer their attention back to the previous correspondence, and ask them to pick up where they left off and/or point to anything which has changed the observations made in that previous correspondence.

But walking into the movie at the halfway point and proposing a different script can be a really bad idea.

 

[BaileyUK]

First of all, Mr Berryhill, I thank you for taking the time for giving such a comprehensive explanation to your earlier comments. I do agree with all your synopsis. I probably felt a little defensive seeing that indeed It was quite a complex history and I had spent some-time trying to comprehend that history. I have brought that to the attention of the Original poster in both of my PM's. and assured him that I could only give my opinion on the 'current' wording as stand alone registrations Indeed I'm Not a lawyer, just somebody qualified in business and law of contract, with a very keen interest in TM law since my first domain registrations in 2000.

What I have learnt, is Not to jump into making offers just because I had a bit of spare time on my hands. I won't make the same mistake again.
Many thanks

 

[rywen]

Hey everyone, thanks again for all your comments. I'm aware of the risks of making information public and non-privileged but I appreciate the reminder. In this case, based upon where my attorney left things with the other company, I felt comfortable risking posting a few vague details in an internet forum (and more specific details via a PM) because I think any downsides to doing so are very minimal in this particular situation. My current law firm is good with IP and I feel relatively comfortable with where things stand on the trademark side of things (ie, my business activities aren't infringing on the other company's trademark) but UDRP never came up in our discussion and their inexperience dealing with domain issues concerns me.... So I came here looking for more advice from people who had more experience dealing with domain-specific issues because I feel my current law firm is less experienced there. I wasn't looking for 'legal advice'... but just a better idea of how things work in these situations (so I could decide if I need to hire an attorney that deals specifically in this area). In that respect, BaileyUK was extremely helpful. Frankly, where things stand now, I think it's unlikely there would be any real consequences if I posted all the specifics of my case in public, but obviously there's no point in risking it.

I may have been unclear in my posts on the order of who contacted who last.... because I don't remember the exact order of events between us and the other firm; I'd certainly get the full file and all communications from my firm if I was going to have another party negotiate on my behalf. I just know that after every message to them, we had to follow up at least once (if not several times) and remind them to respond.

It's an annoying situation; that I have a third party vaguely accusing me of wrongdoing, but then they're apathetic enough about it that I have to write checks to my law firm for sending multiple emails that basically say "could you please reply to our last email".