question Company asked for the domain

[Sirbigman]

Hi NP,

I have a .com domain composed of 2 words including "car" and a second one. Let's say similar to carwow.
I received an email from a company which has the same .co.uk domain in which they said to hand over the domain because they have a trademark and they will take this further.

They offered to pay something in the range of $200 so I don't feel like I didn't gain anything from this. I wanted a mid to high xxxx price for this domain, what should I do?

 

[dirk]

Check if they really have a trademark first, they could be bluffing.

Meanwhile it'd be wise to not list it for sale anywhere.

 

[loredan]

Whatever TM they have would probably apply to the UK while your domain is .com

Use the links below to check if they really have one:

https://www.gov.uk/search-for-trademark in UK
http://tmsearch.uspto.gov/ in US

1. If they have an UK TM you shouldn't be worried, just ask whatever you're happy with and wait for their move.
2. If they have a US TM, you pretty much cybersquated and I'd say you should ask under $1k so it will be cheaper for them to buy your name than start a UDRP.
3. If they don't have any active TM at all, just tell them to F. Off

 

[hjordis]

I'm in a similar situation, except the company is too cheap to offer me a single cent, and they don't have an active TM anymore, their abandoned TM wasn't a US TM. Well, good luck!

 

[ntjedge]

Is it becoming like a trend now?

I am following your other thread @hjordis since I own a few made up .coms which are company names, using other extensions - some are trademarked too. Though my .coms were registered about 4-6 years before their company even existed.

Eager to see how this proceeds.

 

[Name Trader]

Is it becoming like a trend now?

I am following your other thread @hjordis since I own a few made up .coms which are company names, using other extensions - some are trademarked too. Though my .coms were registered about 4-6 years before their company even existed.

Eager to see how this proceeds.

Yeah. But it's not when the domains were registered that counts. It's when you took possession of them. If you became the owner after the trademark was first used. You maybe/could be in for some explaining why. if they URDP you.

 

[hjordis]

Is it becoming like a trend now?

I am following your other thread @hjordis since I own a few made up .coms which are company names, using other extensions - some are trademarked too. Though my .coms were registered about 4-6 years before their company even existed.

Eager to see how this proceeds.

Seems so. You should probably be safe if your .com domains were registered long before they registered their TM, IMO. My case is a bit different, the company has existed long before I registered the domain and apparently it was their company domain too, but the TM is no longer active, the company wasn't registered in US, neither their TM.

 

[hjordis]

Yeah. But it's not when the domains were registered that counts. It's when you took possession of them. If you became the owner after the trademark was first used. You maybe/could be in for some explaining why. if they URDP you.

Even if their TM is no longer active? But their company is still an established one, an they UDRP me?

 

[Name Trader]

Seems so. You should probably be safe if your .com domains were registered long before they registered their TM, IMO. My case is a bit different, the company has existed long before I registered the domain and apparently it was their company domain too, but the TM is no longer active, the company wasn't registered in US, neither their TM.

It's a little bit more complex. but you should be ok, if you haven't had parking ads on the domain. Have you?

 

[hjordis]

It's a little bit more complex. but you should be ok, if you haven't had parking ads on the domain. Have you?

Not anymore, but then again, the ads before had nothing to do with their company, cause all the company has now is just the company name, I haven't found any related service or products connected to their company name online

 

[ntjedge]

Yeah. But it's not when the domains were registered that counts. It's when you took possession of them. If you became the owner after the trademark was first used. You maybe/could be in for some explaining why. if they URDP you.

I registered them so I took possession of the name before their company was even formed

So, what happens if the name is pointed to a coming soon page or upcoming launch lander (the launch may/may not happen)?

I understand parking pages may create issues but what about undeveloped/afternic "Offer" pages?

 

[hjordis]

I registered them so I took possession of the name before their company was even formed

So, what happens if the name is pointed to a coming soon page or upcoming launch lander (the launch may/may not happen)?

I understand parking pages may create issues but what about undeveloped/afternic "Offer" pages?

It probably means that you registered the domains in good faith? I'm planning to do the same for mine later, and let's see what happens

 

[Dominique]

It seems like a "plan B" case.

Read this:
https://giga.law/blog/2017/8/2/domain-name-dispute-plan-b
http://www.rdnh.com/rdnh-provision-udrp/

Relevant UDRP cases:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-1811
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-0653
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-0202

 

[Name Trader]

I think provided you've got all your ducks in a row, it wouldn't matter to much about a forsale page. But if not. your better with a Coming Soon page, with some link they can email you.

 

[BaileyUK]

As mentioned above UK registered trademarks are effective throughout Europe but they are not Global. These domain cases have been ongoing since the creation of the internet so nothings new in how they are handled.
The main thing I have learnt in my 20 years in the domain-game is just how ignorant of trademark law/obligations/rights most of the current holders of Trademarks are. But, these same TM holders assume domain holders are the ignorant ones. My advice is become 'Legal-Savvy' regarding your assets, Always reply with a short polite factual response that identifies your right of registration and the illegality of 'Over-reach' by a trademark holder. (providing you have established their over-reach)
now, obviously in order to do this you need to become legally aware of your own rights and responsibilities as a domain registrant.
For every single genuine Trademark infringement you can bet your arm that there are ten times as many chancers. if you wish Private message me the details and I'll give you my opinion and a draft reply (thread starter sirbigman only)

 

[anantj]

1. If they have an UK TM you shouldn't be worried, just ask whatever you're happy with and wait for their move.

Uh! why is that? You're so wrong on this point!

 

[Truespin Domains]

UK trademark. .com domain.

Tell them to piss off.