Can I win UDRP? Myself or with lawyer? Try to negotiate directly?

[DomainMiner.com]

[I do plan to ask some domain lawyers for an opinion / consultation on their fee, but was hoping to get some advice here, lots of knowledgable people here. Thanks in advance.]

There's a domain I feel I should have rights to. I've bought the rights to a product which was developed years ago. It's a real item that many people own, and the product is embossed and printed with this domain name. The domain matches the actual name of the product, which is an invented trademark but not a registered trademark. The TM symbol was printed after the product name. The domain was owned and used, but accidentally lost in the past to this big domain place (they must have caught it in a drop) who has PPC links up.

Do you think I can win the UDRP? (Do UDRP's always go to one of the big arbitration associations or only if both agree to it?) I would show photographs of the actual product.

Would it be stupid for me to file the UDRP on my own without a lawyer's help? (I would filing incorporation, trademarks, patents, etc on my own.) Just worried about the legal fees. (If I won the domain, I think I'm still the one covering my lawyer's fees & arbitration fees? And maybe more. If I lost, do I pay even more, I am guessing no?)

Should I try to negotiate directly with the current owner, or does that hurt my case in any way? If I offer to pay them a quick $500 or $1000 to avoid us both the hassle of UDRP/arbitration/whatever. I doubt they make very much off the domain traffic. And it's an ok name but not something that cool, if it were for sale on this forum i'd guess it wouldn't even fetch $30. But maybe worth a few hundred at least at 'retail price'.

 

[labrocca]

Seems you are on the right track and you are looking at it well. I can't offer any advice beyond what you are already thinking.

Offering 200-300 might get you the domain the most painless.

 

[vslevin]

Those companies will not sell it to you for $200-300. If you really want it buy it directly, it would probably take a couple of grand, at least.

I don't know anything about UDRPs, but I wish you the best of luck on it.

 

[RJ]

"Should I try to negotiate directly with the current owner, or does that hurt my case in any way? If I offer to pay them a quick $500 or $1000 to avoid us both the hassle of UDRP/arbitration/whatever."

Yes, this is a good first step. It's going to cost you upwards of $1300 to file the case, plus involve some work and its not even guaranteed you will get the name. If it's worth that cost to you, you're best off just offering the $1300 upfront to buy the name outright, if you're ok with that on principal. Offering to buy the domain does not hurt you should you decide to UDRP afterwards.

"Do you think I can win the UDRP?"

From what you said, it absolutely sounds like you have a strong case. Nothing's ever for certain though. You have to prove three things, 1) the domain is similar to a trademark you have rights to, 2) the registrant has no legitimate interests in the domain, and 3) the domain is being used in bad faith.

If I recall correctly, there have been some strange defenses put up in UDRP responses by respondants that just had it parked with a parking service, claiming that is a legitimate use of a domain. You might want to search through some of the past cases . There is a wealth of information available to you. Every UDRP case since the beginning is viewable in its entirety.

"Would it be stupid for me to file the UDRP on my own without a lawyer's help?"

I've been through the process myself without the assistance of a lawyer. I read everything from any case I could find that was somewhat relevent and compiled a pretty strong case. If your funds are tight, you could always write the complaint yourself and then use a lawyer just to review it and make suggestions. That shouldn't cost you more than 1-2 hours of a lawyer's time.

Best of luck.

RJ

 

[Dave_Z]

If you think about it, using UDRP is your next move if the current registrant is
selling it for more than $1300. :D

Anyway, just calculate the potential costs between buying the name and via
UDRP with and without an attorney looking over your shoulder. That should
give you some ideas.

 

[labrocca]

I wouldn't offer more than $500. You should always offer less than what you are prepared to pay. I think if it goes to $1000 you should send them a UDRP instead and sue them for cybersquatting and mention the $100k fine. Tell them you are prepared to open up the floodgates if they wish.

Let's review..

1. Ask them to transfer domain to you in an email. Don't make an offer. They might request money and if they do great..you have a cybersquatting case.

2. If they refuse to cooperate or offer to sell...offer to buy for $500.

3. If they want more mention that you would rather UDRP and gain the name. This is partial bluff. Ask them about the domain revenue...see if you can reason with them. As you say this domain doesn't have much value for parking.

4. Prepare to get a lawyer.

Anyways...good luck on this.

Would you mind PMing me the domain? I am really curious and if I can help you I will.

 

[fonzie_007]

I agree with most of what labrocca said. However, instead of asking for the domain, I would demand it. Make sure you let the owner now that you mean business. Be firm, but don't be an ass. Chances are that the current owner has a bit of money and if you get into a pissing match with him/her, he/she may just drag out the proceedings on the domain to piss you off. I personally think you have a winning case based on what you said, but there are always two sides to every story and nothing is for sure.

I'd advise you to try to work things out by yourself and then move to a lawyer if needbe. However, I've known other people to take a different route (i.e. skipping the self-initated communication) and jump right to a lawyer--paying $500 up front for a lawyer to draft a threatening letter on law firm letterhead. The goal of this would be to scare the current owner into giving you up the domain straight away. Personally, I'd try working things out yourself first, but it is up to you.

 

[scrsteven]

I'd try to buy it for $300, then if he refuses, tell him some of your reasons and say if you don't come to an amicable solution you will take it to UDRP and may sue for damages to the brand, punishable with fines over 100,000... something along those lines.

 

[labrocca]

Yeah what fonzie said about sounding demanding and firm. I didn't mean to make it sound that you should be too nice. If you need help drafting an email let us know.

 

[DomainMiner.com]

Thanks everyone.

The owner is very big... I doubt they would reply at all, and think that being nice would be the best option for that particular company. An polite inquiry to see if the domain was for sale was sent in the past (years ago) by someone else, got no reply.

I asked someone with a lot of domain experience and told them the domain name & they said I wouldn't win the UDRP. I don't know. It's the part 3 of this which may be the problem, since they are just parking the domain: "1) the domain is similar to a trademark you have rights to, 2) the registrant has no legitimate interests in the domain, and 3) the domain is being used in bad faith."

On the other hand, if the domain were being used legitimately by another business (especially if they were in a different field/market sector) then that's one thing. But it's another to keep it from me which harms my business & park it for the income for years (along with parking tons of other caught traffic domains). So maybe that is 'bad faith'. (Especially if they deny a serious offer? I thought of asking how much they make and offering 3-5 years income.)

 

[RJ]

I don't really agree with parking being a legitimate use to satisfy the third requirement of UDRP. How could it be? What if I registered a very blatant typo of a famous company and parked it. Would the company never be able to use the UDRP process to recover the name?

The ads being served by the parking company could also have relevance. Are the ads for items within the same industry as your trademark?

 

[DNQuest.com]

I have to agree... parking is not a legitimate way of establishing rights to the domain. Meanwhile, the money made is because of someones else's TM.

 

[AdoptableDomains]

I agree with most of the previous recommendations, but here is what I would do.

Hire a lawyer to send them a letter first, which may cost you $200 or less. The letter should demand the domain and state that the one time fair and reasonable offer made in the letter is before filing a UDRP. Send some proof that you have a TM and intend to enforce it, so they know you have a case. A demand from a law office will show you are serious about obtaining the domain.

If they don't comply, file the UDRP. You could probably do it yourself if you are pretty good at researching past similar cases, can present good evidence of your TM, and have a lot of time. If not, and the domain really is of value, then hire a professional. I'd also advise hiring a lawyer knowledgable with IP and internet domain law. Your local personal attorney may be less per hour, but take more hours to prepare a lesser case. This could cost you more in the long run and be more risky as well.