Can I offer to sell domain to the trademark owner?

[BuzzBen]

I own a domain and have since 2001. I am an entrepreneur, and have legitimate interest in using the domain in a venture I am working on.

In 2003, a publicly traded company trademarked the name, and in addition there is publicly traded company in the UK offers a service with the name.

Can I offer the domain to these companies without compromising my positon of "legitimate use"? I have read the UDRP very carefully and it seems I am ok since I did not register the domain for the sole purpose of selling it or interfering with their business.

Would appreciate any thoughts relating to this.

Thanks.

 

[Dave_Z]

It's risky. Although it appears you got the name before they got their TMs,
their respective attorneys can consider your openly and initially selling it to
their clients as bad faith and use it against you.

 

[BuzzBen]

I agree, it does seem risky.

Do you think the same thing would apply to me offering the domain for sale in general - i.e. NamePros, Afternic, etc?

I have been contacted several times through Afternic's "make an anonymous offer", so I know there is interest in the name.

Thanks.

 

[wisconsin]

Do Not!

They may claim "common law" rights before 2001.

 

[Badger]

depends greatly upon the extension... nominet in the uk rules are way different to icann

 

[Veolus]

go for it you will probably make some big $

 

[RJ]

I own a domain and have since 2001. I am an entrepreneur, and have legitimate interest in using the domain in a venture I am working on.

In 2003, a publicly traded company trademarked the name, and in addition there is publicly traded company in the UK offers a service with the name.

Can I offer the domain to these companies without compromising my positon of "legitimate use"? I have read the UDRP very carefully and it seems I am ok since I did not register the domain for the sole purpose of selling it or interfering with their business.

Interesting question. You said the company registered the trademark in 2003, but didn't mention if whether they had been using the trademark prior to that time or dating back to 2001. If their trademark didn't exsit when you registered it you could not have registered it with the intent to violate their trademark.

I own a domain and have since 2001. I am an entrepreneur, and have legitimate interest in using the domain in a venture I am working on.

Is the venture you've been planning in the same industry and/or country as the publically traded company? If you answered "no" to either of those questions, you could proceed with your development (demonstrating a good faith use of it) and later approach the company. Companies change their names all the time. I don't believe it would be bad faith for an existing company (yours) to try to sell their current identity.

 

[BuzzBen]

The trademark was actually applied for in Aug 2003, and granted in 2004. The trademark has:

FIRST USE: 20031013. FIRST USE IN COMMERCE: 20031013

So there appears to be no claim of use before that. And the trademark is for a product that was just recently released into the market (last 6 months).

So it seems I am clear to use the domain for my the original intent for which I registered it, which is not a competing product, in a different industry.

However, I may end up using a different name, and therefore have no use for the trademarked domain. I don't think, however, I should just have to give it to them. My registration and use to date are legitimate and in good faith. The domain is essentially an "asset" of my current venture, and funds from the sale would help with my capital needs.

If one of the more knowlegdable people here is interested, I would be glad to discuss the details - the domain, who the publicly traded companys are etc. - I would be glad to take this offline to PM or email.

One more piece of information:

There is a buyer who has made three anonymous offers through Afternic (I did not list it), in the range of a few hundred dollars, which I prompty rejected. After the third rejection, I got an email from an Afternic "Domain Specialist", on behalf of the buyer, asking if I am interested in selling, and if so for how much.

Now I have no idea if this buyer is the TM holder. Is this normal for Afternic to intervene?

Thanks.

 

[RJ]

The trademark was actually applied for in Aug 2003, and granted in 2004. The trademark has:

FIRST USE: 20031013. FIRST USE IN COMMERCE: 20031013

So there appears to be no claim of use before that. And the trademark is for a product that was just recently released into the market (last 6 months).

Perfect. If I were in your situation I would put some content on the domain name, at least to demonstrate its intended purpose. At that point I would have no qualm with approaching the trademark holder.

It's more often that a buyer contacts the owner directly that to use a broker to make the offer. Using a broker hides the identity of the offerer, so I would not be surprised in the least if it is the company you have in mind. The price range they have in mind however is not very promising.

 

[BuzzBen]

Update...

I put up a site at the domain which indicates my legitimate intentions for it. I then notified both of the companies who offer products with the name, one of whom is a TM holder, that I am considering a change in strategy and may not need the domains.

If I do not hear from them, CAN I sell this domain on Afternic, etc, given that it is identical to a trademark?

I certainly am not in violation of 4a or 4b of the UDRP. And if the potential buyer has legitimate uses for the name, and understands there is a TM in a specific industry, he would not be in violation of UDRP either.

Is there a general rule about simply not selling or buying a TM? The UDRP is aimed siply at people who buy with poor intentions. Of course the UDRP is not the final authority - the TM holder could say now that the domain was sold after it's TM it has rights to it, but that doesn't seem valid if the new owner has legitimate interests.

Thoughts?

 

[Badger]

If one of the more knowlegdable people here is interested, I would be glad to discuss the details - the domain, who the publicly traded companys are etc. - I would be glad to take this offline to PM or email.

, thought i did that bit...... ?