Big Company harrassing me for domain name

[deelip]

Last year I started a software company in India and was busy minding my own business when I got a letter from the lawyers of one of India's top IT companies stating that my company name was violating their client's trademark. So I changed my company name and thought that the problem was sorted out. That was 4 months ago. This week I received another letter form the same lawyers saying that I should transfer the domain name to their clients, free of cost.

My lawyer says that legally they cannot ask me to transfer the domain name since they cannot prove that I registered the domain name in bad faith or to squat on it. I actually had a valid company under that name and did business. However they can make my life miserable by dragging me to court. I dont have the time nor the patience to take this matter further. Neither do I want to let them bully me into handing over the domain name to them. I have had enough trouble and lost enough money changing my company name.

I want to get rid of the domain name. If anybody is interested in buying the name, please contact me at [email protected]. I will send you information on the domain name and the IT company.

 

[deelip]

Last year I started a software company in India and was busy minding my own business when I got a letter from the lawyers of one of India's top IT companies stating that my company name was violating their client's trademark. So I changed my company name and thought that the problem was sorted out. That was 4 months ago. This week I received another letter form the same lawyers saying that I should transfer the domain name to their clients, free of cost.

My lawyer says that legally they cannot ask me to transfer the domain name since they cannot prove that I registered the domain name in bad faith or to squat on it. I actually had a valid company under that name and did business. However they can make my life miserable by dragging me to court. I dont have the time nor the patience to take this matter further. Neither do I want to let them bully me into handing over the domain name to them. I have had enough trouble and lost enough money changing my company name.

Any help in terms of legal advice or past experience to help me build my defense will be appreciated.

I want to get rid of the domain name. If anybody is interested in buying the name, please contact me at [email protected]. I will send you information on the domain name and the IT company.

 

[calian]

Why would someone else pay you for your headache? Is it a name that could be generic?

 

[zaros64]

Maybe just go to court ...
you could probably win since you had a regged company

 

[armstrong]

threads merged.

>Last year I started a software company in India

By that do you mean that your business was registered in India and allowed to use this alleged infringing name? If so, then maybe you had a case to fight. But when you changed your companyname, then at that point you had no more legitemate use for the domain.

Selling the domain to someone else at this point won't exempt you from being named in a civil suit. If anything, it might just complicate things if you're ordered to hand over the domain, but you can't since someone else already controls it.

disclaimer: I am not a lawyer.

 

[Dave_Z]

Disclaimer: I'm not a lawyer, too.

Although your attorney can probably help you win at UDRP, there's always the
chance the IT company can drag you to Court, just like you said. If you truly
can't defend your right to use the name yet don't want to transfer it to them,
how about having your registrar delete it?

Of course, that still won't necessarily stop the IT company from suing you
anyway. But if you can't have it, then no one will...except for the one who'll
eventually register it once it's available, though. :D

 

[deelip]

Thanks for the feedback.

I dont want to use the domain name, neither do I want to infringe on their trademark. That was not my intention in the first place. I am just trying to recover my losses incurred due to the change of my company name. I advertised a great deal. Besides, their audacity to demand that I simply transfer the domain name to them has made me very angry. If I ask them for money they will claim that I am a cybersquatter. I dont want to sell it to them, but I want to recover my lost money. I find myself in quite a situation on this one.

Has anyone been in my shoes before?

 

[luxinterior]

You seemed to have forgot to mention that your trying to sell this domain name for $5K. Quite a good pay day for somebody who's claiming to not be a 'cybersquatter'.

Lux

 

[deelip]

Well thats around how much I spent on marketing it. And if I were a cybersquatter I would have been busy making a deal with the IT company instead of asking for advice and comments here, wouldn't I?

And by the way, to the company the domain will be worth much much more than 5K.

 

[PoorDoggie]

can't you sell it to them? get your lawer to write down a list of reasons that you cannot be taken to court for it, eg: 1. You didn't buy it in attempt to squat etc... and then when they see that they can't win, sell it to them.

Is the company regd in India? If not then they don't posess the legal rights to your indian domain name (if it is indian) or your company name.

Otherwise, you could just appologise and give it to them graciously!

Disclamer - I was a lawer, but then I woke up!

 

[suthra]

do u mean the microsoftindia.com case?

 

[deelip]

Yes, that is one option which my lawyer and I are contemplating. However, any formal correspondence with them in this regard can be misinterpreted as the actions of a squatter and used against me in case we go to litigation. However, if they come up with an offer, I will be most happy. But they haven't and by their tone, it doesnt appear that they will.

No, it is a .com. They are registered in India.

No, the domain name is not microsoftindia.com. I think it is unwise for me to reveal the domain name in public here. I dont want create more problems for myself. Sorry, this is all new to me.

 

[Dave_Z]

can't you sell it to them? get your lawer to write down a list of reasons that you cannot be taken to court for it, eg: 1. You didn't buy it in attempt to squat etc... and then when they see that they can't win, sell it to them.

If you recall his first post, unfortunately deelip changed the company name
some time after receiving notice from the complaining party.

Is the company regd in India? If not then they don't posess the legal rights to your indian domain name (if it is indian) or your company name.

True. But the rotten bad luck is both deelip and the other party are in the
same place, so the bigger company can drag his behind to Court and wear
deelip down if need be.

Otherwise, you could just appologise and give it to them graciously!

That's nice. But what does deelip have to be sorry for?

Disclamer - I was a lawer, but then I woke up!

You sure you were in dreamland that time? :D

Too bad you didn't post this problem when you got the first notice, deelip. I'm
sure the people around here would've been able to help you better.

But right now, you'll have to either chalk this up to experience or get ready
for a showdown. Sorry for your current losses.

 

[PoorDoggie]

If you recall his first post, unfortunately deelip changed the company name
some time after receiving notice from the complaining party.



True. But the rotten bad luck is both deelip and the other party are in the
same place, so the bigger company can drag his behind to Court and wear
deelip down if need be.



That's nice. But what does deelip have to be sorry for?



You sure you were in dreamland that time? :D

Too bad you didn't post this problem when you got the first notice, deelip. I'm
sure the people around here would've been able to help you better.

But right now, you'll have to either chalk this up to experience or get ready
for a showdown. Sorry for your current losses.

constructive criticism, I'm sure

If you recall his first post, unfortunately deelip changed the company name
some time after receiving notice from the complaining party.

I don't mean sell the name to the company, I mean sell the domain to the company. He bought the domain for HIS company... and now he has graciously re-named his company for the big company, but still has the domain name. He wants to make some money out of it, as he was FORCED to change his company's name, so why not make the BIG computer company pay for it?

Do you understand? I don't!
Tom

 

[deelip]

To be frank, I had already written off the amount I had spent on advertising, as a bad debt and had gotten on with my life. I researched my new company name and have applied for a trademark. Once bitten twice shy.

But then, this second letter came along and opened the pandora's box one again. A friend suggested that I try to get advice/suggestions from forums line namepros.com. Hence this thread.

Anyways, thanks to all those who replied.

 

[jberryhill]

However, any formal correspondence with them in this regard can be misinterpreted as the actions of a squatter and used against me in case we go to litigation.

Then I have to wonder about the competence of your attorney, since settlement negotiations are generally inadmissible in court proceedings.

 

[deelip]

"generally inadmissible"??? I am not a lawyer, but I dont think I like the word "generally".

Moreover, I think this case must be viewed in a diferent light, since what you call "negotiation" can be viewed as the actually "crime" (cybersquatting). The fact that I am asking them for money (whatever be the excuse, cost of advetising, cost of change of name, etc.) will prove that I am a cybersquatter. My guess is that thats exactly what they want me to do. They want to get me to "negotiate" with them and use the "negotiation" to prove my guilt.

I would like to hear your views on this. Do I have a point here?

 

[armstrong]

Then I have to wonder about the competence of your attorney, since settlement negotiations are generally inadmissible in court proceedings.

If it goes to court, this case will be handled in India. Are you sure that "settlement negotiations are generally inadmissible in court proceedings" is true in their legal system?

 

[PoorDoggie]

hmm... seems like a tough decision! I think you should get a good lawer - he would tell you what to do.

I'm not a lawer, and I don't know much about legal systems, but I am thinking about sueing for compensation?!? Why not eh? They FORCED you to change your name, and now they are disrespecting your rights (harrassing you almost) to the domain name YOU purchaced for YOUR company. You have already paid money into this business and you don't want to lose it. Can't you get any compensation?

NB: please remember - I am not familiar in any way with the indian legal system, or even the Brittish Legal System. If this sounds really wrong, please just ignore it! :lol:

Regards
Tom

 

[deelip]

True. My lawyer specializes in Intellectual Property related issues. He teaches patent, trademark, etc. stuff in at least three colleges that I know of. Thats why I picked him to advise me on this issue and fight my case if required. If this goes to court I am confident that he will do a good job fighting my case.

Anyways, in my opinion, my case is very strong. As on the present day, I am not doing business using their trademark. I am not passing off as them. I have changed my company name. I have withdrawn all my products from the market which were under that company name. The domain name is inactive, which means that I am not using the domain name in bad faith. They cannot prove that I registered the name in bad faith since I had a valid company to begin with. There have absolutely nothing to pin on me.

I dont want to go to court, but even if I am dragged into litigitation, I feel that even a half baked lawyer fresh out of law school will be able to get me a win. I am playing the waiting game now. Lets see where this leads to.

 

[Dave_Z]

The domain name is inactive, which means that I am not using the domain name in bad faith.

In the US, the ACPA law can consider the domain being inactive as bad faith,
although several other factors are needed as well. Better check with your
attorney to be sure how it works under Indian laws (if any), deelip.

Let me wish you good luck and Godspeed, deelip. Let us know how it goes.

 

[deelip]

The domain is inactive because I am waiting for it to expire. I didnt know what else to do with it.

I know that this can be interpreted differently by different people but I think that taking down a perfectly legal revenue generating web site and making it inactive to respect the trademark of another party is anything but bad faith. It describes good faith and a respect for the trademark.

Thanks for the comment. Thats the reason I came with this to NamePros. To get different perspectives.

 

[RJ]

Hi Deelip,

Sorry to say that IMHO you don't have much of a case to fight with. You were using the same company name as the trademark holder, in the same industry, within the same country. The fact that you are no longer using the trademark as your business name is unimportant, as long as you still hold the domain name.

I'm really not sure why they are even bothering with having their lawyers harrass you. Since it is a .COM name, it was regsistered under the UDRP agreement. All they really have to do is file a UDRP dispute with a dispute provider, pay the $1300 or so in fees and they will easily be able to have the domain transferred to them upon a panelist's ruling.

The best you could hope for is that they are willing to pay a nominal fee to you for the domain instead.

Again this is my (somewhat educated) opinion. I wish you the best with your case.

RJ

 

[deelip]

Hmm... interesting. Maybe they are real scroungers and want to save the $1300 fee.

Does it help me that they have not yet registered the trademark, but have simply applied for registration?

 

[.X.]

It matters from civil stand point i think,I had a somewhat simular situation as you a couple of years ago.The company wanted me to hand over my domain name,They finally offered me $200 for the name.I sold it to em.But had they filed a civil lawsuit on me,They would have lost.They had no TM or SM.And no affiliation with the net.Best of luck to ya.