Approached by Radio Station end user

[rpanella]

I have an LLLL.com, registered since 2000, double premium (contains k and w), and it is the call letters for a radio station.

I received an email from them stating that they believed that I was squatting on the name and that they were entitled to it, and wanted to know what my intentions with it were.

I responded saying that if they wanted the domain feel free to make an offer.

They wrote back stating they did not want to pay an "astronomical" amount, but in order to avoid a legal process, they want to know how much I am looking to make on it.

There is no trademark on the name and being that it is >8 years old and could stand for anything, I believe I am on pretty solid ground legally.

How would you guys respond to this? What should I ask for?

 

[Ross]

I have an LLLL.com, registered since 2000, double premium (contains k and w), and it is the call letters for a radio station.

I received an email from them stating that they believed that I was squatting on the name and that they were entitled to it, and wanted to know what my intentions with it were.

I responded saying that if they wanted the domain feel free to make an offer.

They wrote back stating they did not want to pay an "astronomical" amount, but in order to avoid a legal process, they want to know how much I am looking to make on it.

There is no trademark on the name and being that it is >8 years old and could stand for anything, I believe I am on pretty solid ground legally.

How would you guys respond to this? What should I ask for?

Do you know for a FACT that it is the radio station?

 

[rpanella]

Well, in the email they identified them self as an employee of the radio station and it came from the domain of the company that owns the radio station according to Wikipedia.

 

[buckshotdots]

A wipo case costs $1500 to start. Ask close to that (if you want). http://www.wipo.int/amc/en/domains/fees/index.html


I would also post in the legal section here.

good luck, gary.

 

[rpanella]

Thanks Gary,

That was my first thought actually, to explain to them that a UDRP would cost 1500+attorney fees and likely be unsuccessful, and offer to sell it somewhere in that same range.

 

[bricio]

i am not a lawyer but i strongly recommend to you to not send an offer
let them make an offer and then both of you begin negotiation

what is "astronomical" for them? $1,000, $10,000 or $100,000?
do they know how much the costs for fighting are?

i will not make any comments about the fact the name is not TMed
maybe, and i hope, you are legally on solid ground but, again, i am not a lawyer

BTW, what about asking the mods to transfer this thread to "Legal Section"?

 

[interestedenough]

I don't like the fact that they initiated conversations in an aggressive manner; kind of unprofessional. The four letter domain name could mean anything and you've had it since 2000. Let them make an offer first, don't talk more than you need to, doesn't matter how much they ask. The fact that they initiated the conversations in an aggressive manner makes me think they might not have very good intentions.

Has the radio station existed since or before 2000? If they thought you are squatting them, ask them why? Have you developed the domain? Make them tell you why they make accusations, but don't give them more information than they need. Limit yourself to a counteroffer only if they make an offer.

Oh, I am no lawyer and this is not legal advice, but this is what I might do in this situation.

 

[bobdigital]

$1000 is a nice round number.
They would be lucky to acquire "their" name so late in the domain game, especially without a headache.
Most owners wouldn't even have responded to the Radio station's inquiry.

 

[peaches017]

I wouldn't have even responded that it's for sale. I'm not a lawyer or anything, and you shouldn't act on what I say as if I know the laws, but whatever their offer is, I'd say "no thanks," and walk away. That gives you the power back. If they really want it, and you determine that you're in strong legal ground, they'll make you a better offer than you can hope to get than simply giving them a price.

Peter

 

[NameCharger]

Disclaimer: I am not a lawyer so this is not to be taken as legal advice.

At this point, I would not say anything regarding your intentions with the domain.

Since they didn't go straight to UDRP, it appears they are willing to negotiate so I would ask them what dollar amount they consider to be "astronomical" and take it from there.

I would not quote any price to them, let them do the talking. Quoting a price might backfire later if this goes to UDRP. They might try to use your price quote as evidence that you intended to profit from their mark.

Best of luck to you.

 

[weblord]

what's astronomical with us might not be astronomical with them?
you are free to quote them whatever price tag you placed on your own domains.

I have an LLLL.com, registered since 2000, double premium (contains k and w), and it is the call letters for a radio station.

I received an email from them stating that they believed that I was squatting on the name and that they were entitled to it, and wanted to know what my intentions with it were.

I responded saying that if they wanted the domain feel free to make an offer.

They wrote back stating they did not want to pay an "astronomical" amount, but in order to avoid a legal process, they want to know how much I am looking to make on it.

There is no trademark on the name and being that it is >8 years old and could stand for anything, I believe I am on pretty solid ground legally.

How would you guys respond to this? What should I ask for?

 

[rgremill]

I read recently somewhere that you should get the other party to admit that you are the rightful owner of the domain before you start negotiating. Forgot where I read that...

 

[MaguirePhD]

1/2 a day

Take 1/2 a day to find out how long the radio station has been around using those call letters.

Some 8 year ago, I had a TV station in the Midwest contact me in the same manner. Informed me that a business name I was using was their name as it was one of their program names. They would give me a chance to surrender it and save me a bunch of legal fees.

A little research showed I had this name 3 years before their show existed.

So, I was just going to breathe a sigh of relief that I was not in a legal jam, right?

Wrong! I went after them with a cease and desist, refused an offer to buy when they discovered their predicament and the show was taken off the air.

Find out if you predate them and if you do go after them. Remember this is just a filing when you do it, they have to defend.

I promise you one thing. You fire that shot across their bow and watch them get in line.

Eveyone is a tough guy until the fight starts and they are nailed a few times.

Sometimes you have to reduce it to a hatchet fight in the middle of the street to see who has the b _ _ _ s to continue.

Doc

 

[rpanella]

Thanks everybody for the input and advice.

A mod can move this to the legal forum if that is more appropriate. I wasn't sure if I should post it here or there.

The radio station appears to have been on the air for almost 30 years, though their current domain has only been registered for a year now, and again there is no trademark on the term.

From their emails, it seems they don't know much about domain names or the UDRP process as they said they would contact the FCC about getting the domain from me (the person contacting me is actually also a DJ for the station according to their website).

From what I have gathered from your advice, it would be best not to quote a price, so I will wait for them to make an offer. I will let you guys know how it ends up.

 

[interestedenough]

You know what it sounds like? It sounds like a frustrated DJ/talk show host that is looking to start a fire, will maybe try to ridicule you on the way. If you know somebody in the town, try to find out what program he talks in. Again, I am no lawyer, but your name should be fine because there are many things that might have meaning in those four letters and the radio station could most likely only have legal trademark protection in the reproduction of media via radio waves or something like that. Be careful.

 

[ZapDude]

Probably the most famous case of name disputes come from the the Nissan domain name. Nissan is the name of a man who has owned the domain since the mid nineties. You may wish to review the details of the entire case here:

http://www.nissan.com/Lawsuit/The_Story.php

 

[domainer50]

If you think they have no legal case, tell them you want something like $10k, and go from there. Or make it real easy and say you want $1k. Its up to you, but make absolutely sure that they have no case.

 

[Kate]

How is the domain used right now ?

 

[jberryhill]

again there is no trademark on the term.

What makes you say that?

I'm pretty tired of rolling the same rock up the hill, but they do NOT need federal registration to demonstrate a trademark.

If they've been around for 30 years, then I'd be shocked - shocked - that they have not engaged in considerable advertising and promotion using those call letters as a mark.

It is just waaaaay too late in this game for domainers to believe the USPTO database is "the list of trademarks".

What's astoundingly pathetic about the "advice" in this thread is that call letter cases are one of the most mundane and common fact patterns in the UDRP.

The advice in this thread is utterly brain-damaged.

http://domains.adrforum.com/domains/decisions/96363.htm

Complainant, The WBEZ Alliance, Inc., is an Illinois not-for-profit corporation. Complainant has owned and operated one of the nations largest radio stations under its common law marks since 1990. From 1943 to 1990 the mark was owned and operated by the Chicago Board of Education. Currently, Complainant is the only broadcaster using the call letters "WBEZ" in the world. Complainant maintains an audience of almost a half million listeners each week.

http://domains.adrforum.com/domains/decisions/135008.htm

Complainant, Clear Channel Communications, Inc. was assigned the radio station call letters WKGR by the Federal Communications Commission (“FCC”) on March 10, 1984, and has broadcast under that station identifier in West Palm Beach, FL, since that date. Complainant has expended significant time, money, and effort establishing public recognition of its mark as identifying it as the source of its radio broadcast services. These expenditures include the use of its call letters during radio broadcasts, on signs and advertisements, as well as on brochures and other promotional materials.


http://domains.adrforum.com/domains/decisions/155460.htm

The fact that Complainant has operated the television station under the call sign WAWS since 1981 supplies the rights necessary to satisfy the requirement of Policy ¶ 4(a)(i).

WAWS is identical to the domain name <waws.com>. The only difference between the two is the addition to the domain name of the generic top-level domain (gTLD) “com” after the letters waws. The top level of the domain name such as “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Pomellato S. p. A v. Tonetti, D2000-0493 (WIPO July 7, 2000); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).

http://domains.adrforum.com/domains/decisions/637920.htm

The Panel finds that Complainant has established common law trademark rights in KUHF by virtue of continuous commercial use for more than 55 years. Complainant submitted many pages of exhibits evidencing the widespread, long-standing public recognition of its radio station KUHF and its specialized programming, a long list of prominent national and local financial supporters, and the FCC designation of the call letters KUHF to Complainant’s radio station.


http://domains.adrforum.com/domains/decisions/724378.htm

Complainant, Capstar Radio Operating Company, has used the WAMX mark in connection with the operation of its FM radio station, WAMX 106.3, since May 29, 1997. Complainant was assigned the WAMX station identifiers by the Federal Communications Commission (File No. BLH 19970529KA assigned May 29, 1997), and uses the identifiers as its mark in connection with radio broadcasting and with events and promotions sponsored by the radio station, including the popular “Babe of the Day” promotion, as well as the “WAMX X-Fest” concert series. Additionally, Complainant utilizes the WAMX mark in conjunction with various advertising and promotional materials, including signs, print advertisements and brochures. Complainant has registered the <x1063.com> domain name, and uses its website to inform Internet users about its radio broadcasts and accompanying events and promotions. The WAMX mark is used prominently throughout Complainant’s website.

http://domains.adrforum.com/domains/decisions/882170.htm
Complainant has established rights in the common law trademark WLIW through more than thirty years of continuous and extensive use. It is undisputed on this record that Complainant has created substantial consumer recognition in the WLIW mark sufficient to establish its rights in the mark pursuant to Policy ¶4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001): “[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”

How is the domain used right now ?

That's one of only two relevant questions in this fact pattern. The other relevant question is whether they use the call letters as a mark (some stations don't).

And in answering "How is the domain used?", the answer is not "well, it could stand for this, or it could stand for that, or it might be useful for something else" - the answer is how is it being used in this universe, not some hypothetical alternate reality.

 

[taktikz]

I think this trademark bullshit is ridiculous... If someone is allowed to register a domain name then they have the right to own the domain. Either trademarked names should be in registrars database and blocked from being used, or people/companies have to deal with the fact that their name has been registered as a domain and pay up.

I think domain registrars are responsible for trademark issues, not the owners. Just my opinion...