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question Can a domain be taken away if not used?

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MattxF

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I have a very old domain name, it's a dot-org. I have kept it offline for over a decade. I've always had plans to develop it, and still do, but never got around to it. It's not a trademark and can't be trademarked, it's a common name.

I was contacted by someone this week asking if I would be interested in selling it, that they are a non profit, etc. They included their organization's name and they exist, and it seems to be some new organization currently using a longer domain name. I can't share it here for privacy, but think of it like Heart.org (mine) and HeartAssociation.org (theirs).

I didn't reply promptly, and then I got another email saying they can acquire it since it's not being used but wanted to see if I would be interested in selling it.

Questions:

1. Can an organization acquire a domain name if it simply not being used? General question regardless of TLD.

2. Does it matter if it's a non-profit organization seeking to acquire a dot-org like mine?

I am not interested in selling it, I genuinely have plans to develop it in the future, and would be very sad to lose it after all these years. I wish they would leave me alone. I would be grateful for any advice. Thanks.
 
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The views expressed on this page by users and staff are their own, not those of NamePros.
I'm not sure about legalities these days but there are many more learned people here to answer that one.

My suggestion to you for the immediate future is to stick up a basic information page. eg: just go to Wikipedia and copy some of that heart info over (correctly attributed of course) and stop fretting about the domain not being used threat.
 
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I'm not sure how to edit my post, but one important point I forgot to include is that I verified they are indeed 501(c)(3) registered since 2016. I was also able to view all their tax returns, and most years have receipts in the low six figures. I don't know how small or big this is in the nonprofit world.

The gist of their message to me is that since I am not using it, they can take action to acquire it, but asking if I would sell it, presumably being cheaper than whatever it is they can do. Question is, can they do anything?

It's also a little strange... I mean, if I put up a site they will leave it alone? What I am assuming is they will use Wayback Machine as proof it was not used since their 2016 start and was dormant for many, many years. That's the only logical conclusion I can come up with. This is assuming it's even against some regulation to keep a domain inactive.
 
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It's not a trademark and can't be trademarked, it's a common name.

I'd be interested to see an example of a "common name" that can't be a trademark.

Anything can be a trademark, as long as it distinguishes the goods/services of the mark owner from other goods/services of that type in the relevant market.

The letter "O" is a trademark. On sunglasses, it signifies that the sunglasses are made by Oakley. On the magazine rack, it signifies a magazine published by Oprah Winfrey. On an internet retail site, it signifies you are at Overstock.com.

Common words - apple, monster, tide - are all well-known trademarks for computers, energy drinks, and detergent.

Can someone take your .org domain away simply because you are not using it, and for no other reason? No.

Does not using a domain name make it easier for someone to take it if there are other reasons? Yes.

And what I mean by that is in, for example, a UDRP dispute, the complainant must prove three things:

1. The domain name is identical or confusingly similar to a trademark in which the Complainant has rights,

2. The domain name registrant has no legitimate rights or interests in the domain name, and

3. The domain name was registered and used in bad faith in relation to the trademark.

Now, that second criterion "legitimate rights" is generally established by showing that the domain name is being used for some sort of bona fide purpose, which can be a commercial purpose or a non-commercial purpose, so long as it is not an infringing purpose of some kind.

So, here's the thing. Since the Complainant has to prove three things, then there are three ways to win a UDRP if you are the respondent - i.e. by showing that the Complainant has failed to prove one of those things. In cases where the domain name is not being used, then the "legitimate rights" inquiry is a pass, since it is rare to accrue what a UDRP panel would consider to be legitimate rights through use of a domain name that isn't being used. An exception to that would be a situation where you have some other obvious connection with the name, such as if your name is Bob Johnson, and the domain name is BobJohnson.org.

In a situation where the trademark rights - and I'm not talking about the date of filing or registration of a government document, like domainers seem to obsess over - pre-date YOUR registration of the domain name, and the domain name is not being used, then the panel has very little to go on in your favor. If the domain name is close enough to the trademark, is not being used, and was registered after the Complainant established a reputation in the mark, then things aren't looking good for you. In that situation, if there is no use of the domain to point to, then you are going to have to make plausibility arguments based on the relative distinctiveness of the mark and the reputation, or lack thereof, of the Complainant. Obviously, the more distinctive the mark, the less likely that anyone is going to believe the domain name was registered as a result of some kind of coincidence.

In the situation where the domain name pre-dates the trademark rights, then it is usually not possible, absent pre-launch publicity or insider information, to show that the domain name was registered in bad faith.

Domainers frequently manage to shoot themselves in the foot in the most amazing ways.

Some time ago, I had a situation where a domainer came to me with a UDRP. The trademark claimant had started business about four years before the UDRP, but the domainer told me they had the domain name for about fifteen years.

Easy case, right?

Well, here was where things got really weird. I looked at the WHOIS history for the name, and there had been a string of people who had owned the domain name - none of whom were the person I was talking to. In fact, the current registrant of the domain name identified by the registrar was not the person I was talking to.

So, I told him the first thing I was interested in knowing was why he thought this domain name was his in the first place.

He told me that early on, someone had told him never to associate his real name and identity with his domain names so that if there was a legal problem it couldn't be traced to him. So what this guy did was to move all of his domain names through a bunch of fake names and addresses on a regular basis, in order to make it hard to show that any of the domain names were his.

I mean, look, it's bad enough that people use WHOIS privacy, and thus can never prove the domain name was actually theirs by objective data sources, but this guy had spent years actively attempting to make sure nobody could prove his domain names were his, and somehow expected to defend a UDRP on the basis that the domain names were really his all along.

Okay, well, that was the advice he got, and that was the advice he followed. It wouldn't surprise me that it was advice he got from some anonymous person on an internet forum. But it made it impossible to defend his case.

He was really surprised I said that, but I don't know what the expectation was.... "Okay, panel, here's the deal. My client has been lying about who owns this domain name for years, but now he's going to tell you the truth and say that all of those fake identities he was lying about were really him. And, just to be clear, he lied about who he was all of these years because he is a completely well-intentioned guy doing nothing wrong."

Ummm... no. The domain registration agreement with your registrar requires that you provide true and accurate information to them. So, you aren't going to defend a domain name by claiming that you had never been the valid registrant of the domain name in the first place.

But, I digress.... the bottom line here is that "non-use" by itself will not lose a .org domain name (there may be some chartered TLDs which require use). What lack of use will do is to eliminate one of the possible defenses you would have in the event the registration is challenged, and it can make the name difficult to defend. That is especially true if there are other relevant facts - and there are ALWAYS other relevant facts.
 
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@jberryhill
Thankyou. That is the best explanation I have read yet!
 
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Thanks so much for the detailed and VERY helpful response, Mr. Berryhill. Definitely saved for future reference/reminder.

I do need to learn more about trademarks. Based on the information, I am more confident now I am safe, but I should also learn more about the UDRP process and how to respond to it when/if they proceed. I have no idea about the process, this is my first and never had a domain problem before. Who knows, maybe I'll need your services. :)

I think I am also going to prioritize the project so that the domain is in use -- who knows if there will be a new rule in the future, and as you said it automatically fails one of the tests that can be used against me if they don't know the legitimate use. The project that has been on the back-burner for so long is for family, sort of like a private facebook with genealogical information, and this nonprofit happens to have the same name with a suffix. Their domain name is fine, they just want mine because it's much shorter.

Thanks again!
 
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I'd be interested to see an example of a "common name" that can't be a trademark.

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2. The domain name registrant has no legitimate rights or interests in the domain name, and


Thanks for the detailed explanation.

As for the second point, is registering a domain name with the intention to sell it for a profit, a legitimate right or interest in the name? As long as it is done in good faith of course.

Thanks Again
Joe
 
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As for the second point, is registering a domain name with the intention to sell it for a profit, a legitimate right or interest in the name? As long as it is done in good faith of course.

On that question, absent any other facts, you will get a difference of opinion among UDRP panelists. That's why, in a UDRP dispute, it is important for a good faith registrant in the secondary market to opt for a three-member panel, and to use the panelist selection process wisely.

What's going to factor into that situation are the relative distinctiveness and fame of the mark. Domainers tend to focus on "is it a trademark?" as a binary condition. Trademarks don't come in "one size fits all", some marks are strong, some marks are week; some marks have a broad scope, some are narrower.

If all I tell you there is a person in the alley who wants to beat you up, you don't have enough information to figure out who is going to win.
 
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