Domain Name TM Infringement - Advice Needed

[EdGuy]

Hi,

I am new here, as attested by my first post! I figured this is a good place to ask some questions regarding the situation that I am currently in.

I hope someone, or some people here can give me some solid advice as to what to do and answer some questions that I have. I have very little time to decide what to do, so getting a lawyer right now is out of the question.

I have owned and operated an affiliated adult oriented website for the past six years. I was an affiliate with an online adult affiliate program and did quite well in the first few years of its operation, mostly from PPC ad campaigns in the Google AdWords heyday. The last few years the income has dropped dramatically and the site probably averages about $1,000.00 a year in income resulting from organic searches.

When I was doing very well with this affiliate program back in 2002 I noticed a lot of webmasters buying domain names with different domain extensions with their brand name in them. So I figured at the time I would do the same, and bought the .TV domain name, thinking it would be good for marketing their affiliate program. So I did that and have only promoted their brand with the .TV site ever since.

A couple of days ago I received a FedEx letter from this company that I was affiliated with and they stated that they want the domain name now. I assume they want to use it to further their branding and create a new portal with it. They have offered me a reimbursement of my past domain and hosting fees in exchange for the domain. They said they would rather go this route than to take legal actions.

Now keep in mind, I never bought the domain thinking that I would ever sell it. I simply used the domain to further support my affiliate business with them. I also think that this company has the right to try and obtain this domain. For starters, it reflects their brand, and the .TV domain extension would be a perfect fit for this company for a new online portal.

Now, here is where I am confused... in the letter they wrote, "Since 2002 we have permitted you to use the #### trademarks in conjunction with the domainindispute .tv domain to further your participation in the #### Affiliate Marketing Program. The purpose of this communication is to advice you that we are now revoking permission for your continued use of the above-stated domain name."

I just don't want to give up my domain IF I have some rights to it. It's a well aged domain, makes money on autopilot, and the name could be well suited for other unrelated projects. So, if they say that they "permitted me" to use the domain for the last six years do they have the legal right to take the domain now?

Is there no statute of limitations on something like this if they claim they were fully aware of me owning that domain name for the past six years?

From what I understand is that they have to prove these three criteria to win the challenge...

6. Discussion and Findings
Pursuant to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy the Complainant must convince the Panel of three elements. In order to have a domain name transferred to this end, it is incumbent upon the Complainant to cumulatively show that:

(i) the Domain Name is identical or confusingly similar to a trademark in which it holds rights;and
(ii) the Respondent has no legitimate rights or interests in the Domain Name; and
(iii) the Domain Name was registered and used in bad faith.

1 - (i) the Domain Name is identical or confusingly similar to a trademark in which it holds rights - They definitely have this one, as the name in the .TV domain is identical to their TM.
2 - (ii) the Respondent has no legitimate rights or interests in the Domain Name - I don't know if I fully understand this one... but I have had an active site that was, and is making money. So does that constitute as me having an interest in the domain name?
3 - (iii) the Domain Name was registered and used in bad faith. - Like I said, I never intended to sell this domain at all. It was never solicited for sale. If I am seen as have done this in bad faith, then why did they "allow" me to use the domain name to promote their affiliate program for so long? If it were seen as bad faith then would they not have taken legal action a long time ago if they were fully aware of the situation? What exactly does 'bad faith' refer to any ways?

In any case, in the letter they stated that I had to call their legal department by a certain time yesterday or they would close my affiliate account. So I called them. The person who I was to call was very relieved that I had called and said the higher ups were anticipating my reply. They basically told me that they can take the domain by legal means, but would rather reimburse me the last six years of domain and hosting fees in exchange for the domain. I told them that I needed to talk to my partner first and will get back to them early next week.

I just needed some more time to think about this matter and seek some good advice. In any case, I tried to login to my affiliate account today and to my surprise they had closed my affiliate account. We were friendly over the phone and they had no problem with me getting back to them again next week. So that is why I am surprised with their actions. It actually made me very upset. I am an honest and fair guy and only want what is fair and deserved for both parties. What ticks me off is that they called me a loyal affiliate and I brought them a huge amount of business over the years and all of a sudden they give me little time/notice to give them the domain name.... and closed my account.

I know they want this domain badly, and they will fight for it. This is something I don't want anything to do with. With that being said, the $1,000 in past hosting and domain fees that they will reimburse me is a slap in the face as far as I am concerned. What about my lost future earnings? What about potential development of this domain for other avenues? Would it be ok to ask for more money from them as a counteroffer? I am not looking for huge dollars... just an amount that would be fair for me and them.

If I reject their offer, or they reject any counteroffer and take legal actions against me, then what does that entail? Would that mean for sure that I would have to go to court (with legal fees) or is there a governing body that takes care of this and comes up with a verdict where it wouldn't cost me anything and wouldn't need my presence?

A side note: the company owns the U.S. trademark and I live in Canada. The domain name in dispute is also hosted in Canada and their brand name is not trademarked in Canada... If that matters at all.

Please, any suggestions or input on this matter would be greatly appreciated!

EdGuy

 

[Kate]

If the name is identical to their TM they could very well claim it back from you.
It's not totally certain they would win the UDRP because they have to win on 3 counts. Besides they could even sue you instead.

What I would probably do is agree with their demands. In the meantime my suggestion would be to find another domain (TM-neutral if possible), from now on redirect all the traffic you get from the .tv name to the new domain with a HTTP 301 redirect and quickly rebuild your SEO.
Since they closed your affiliate account and unless they review their decision you may have to take your business elsewhere but at least try to keep as much traffic as you can. Then try to find another suitable affiliate program and move on.
The real value does not lie in the name but in the traffic and SEO that have been built over the years.
Good luck :talk:

 

[bobbie]

I've worked with a lot of affiliate programs and all of them protected their trademarks from the start ... affiliates were not allowed to use their trademark in their domains or to compete in Adwords using their trademark.

If it is identical to their trademark, they got you on #1.

#2 - if they hold the trademark and you don't, they probably got you there too. Using someone else's trademark, even if it is as an affiliate to help them make money and to make money yourself is not a legitamate rights to the domain name.

I don't know about #3 since they acknowledged that they knew you were marketing using their trademark but usually registering in bad faith is when you register it with the intention to profit from their trademark and you are doing that.

I don't know, since I am not an attorney how it would go, but I would give them the domain name.

 

[Dave_Z]

Would that mean for sure that I would have to go to court (with legal fees) or is there a governing body that takes care of this and comes up with a verdict where it wouldn't cost me anything and wouldn't need my presence?

Bare minimum they could file a UDRP and get the domain name, but you won't
be fined. If they sued in court and get a favorable decision, they could try to
enforce it in your jurisdiction.

From what you described so far, I agree with the others you have little to no
chance of winning this. I'm also not exactly optimistic you can get more from
it, given you said it's lately averaging $1000 a year.

Unfortunately there are different and all kinds of people in this world, and you
just never know what can happen. You just try to make the best of it, and do
try not to give them an enforceable cause to possibly hold you liable.

Oh, and read your affiliate agreement, too. Good luck trying to resolve this.

 

[BitcoinDK]

Does'nt following have any influence?:

"A side note: the company owns the U.S. trademark and I live in Canada. The domain name in dispute is also hosted in Canada and their brand name is not trademarked in Canada"

"Since 2002 we have permitted you to use the #### trademarks in conjunction with the domainindispute .tv domain to further your participation in the #### Affiliate Marketing Program."


- For the first they only have TM in USA, it would be different if they had global TM.

- Second, as I understand it when one has a TM, one is obliged to protect the TM (or the Trades Mark registry could revoke it)

So both things should mean that there is a risk for them that they can loose their TM, if they go to court, cause they had given/allowed you to use the domain for so many years. Maybe thats why they offer you this.

Normally in TM issues I would say just give it to them, but in your case, its different. Cause they havent protected their TM in the first place, and they dont have any TM in your country.

Good luck with it and best regards,

 

[evertonian7uk]

Couldnt you decide to no longer use the domain to make money via the affiliate program, maybe you could decide to chage fields with the domain since they have taken away your rights to use it that way,

without knowing the name, its a .tv extension, surely you can think of some other direction to take the name.

the fact they have gave you permission to use the name means you were not infringing, now they've revoked that permission, you should decide to use the domain in a non infringing area.

 

[pit]

Don't forget that in most affiliate agreements that either party can sever the relationship at any point in time for any reason. My thoughts are take something before you get nothing. If it is a TM domain, chances are nobody will buy it from you for much anyway. Also, the company now has you under a microscope and they will consider any sale of the domain as a hostile action. If they kick you out of their affiliate program and the domain has been built and optimized for their trademark, there is little you could with that domain. (Besides redirect your traffic to their competitors, but they would see that and probably definitely take you to court then.)

You got away with a company letting you make money off their trademark for a long time. Consider yourself lucky, take their offer, and call it a lesson learned. There are many companies out there that would never let you make a dime off of a TM that is theirs.

So, if it were me...I would just take their offer. But, you have to weigh everything yourself to figure out if it is worth the hassle to fight, especially if the traffic has been steadily decreasing.

 

[EdGuy]

Thanks for the replies guys, I really do appreciate it. You guys gave me some things to think about.

Overall (here and elsewhere) the consensus is for me to take their offer. I really feel as though that I should try to get a little more from them though, especially since they let me use the domain for so long, which may backfire on them.

You think asking for 3K is unreasonable?

Any tips on how I could try and get more than the 1K they are offering me?

I just want to close this issue... but get a reimbursement where I won't feel like shat after giving them the domain.

EdGuy

 

[verbster]

I'm guessing it would take less than a day to get a true legal opinion from Dr. Berryhill. As it sounds like there is a potential of more than $1k - $3k involved, I don't see what you have to lose by trying, especially since you already seem headed toward giving up the domain. It might turn out you can legally sell to them for big bucks...or you might be cutting your own throat by making the offer....wouldn't you like to know for sure either way?

 

[EdGuy]

I would love to hear from someone regarding this matter from a legal background.

Hopefully Dr. Berryhill can throw in his opinion here.

Regards,

EdGuy

I'm guessing it would take less than a day to get a true legal opinion from Dr. Berryhill. As it sounds like there is a potential of more than $1k - $3k involved, I don't see what you have to lose by trying, especially since you already seem headed toward giving up the domain. It might turn out you can legally sell to them for big bucks...or you might be cutting your own throat by making the offer....wouldn't you like to know for sure either way?

 

[Ms Domainer]

*

From my understanding, if you counter offer on a TM domain, that strengthens the company's infringement claim because you have shown "bad faith."

However, if the domain a generic word or phrase, you may be able to use the domain name for some unrelated business enterprise.

However, I'm not a lawyer, so I may be wrong about this.

*

 

[flamewalker]

He likely wont just comment here on a whim... I suggest looking him up and getting a consult. This is a complicated matter... IMO if they revoke the rights, it doesn't then give them the right to your name. Is the name descriptive of ... something? An act, a place, a thing....

If it is descriptive of something then you can likely just say ok, I won't use it for that use anymore and use it for something else. Not a lawyer but thats my take from the outside looking in

 

[EdGuy]

Hi guys,

I just wanted to update you guys on what had happened.

We negotiated a deal and although I didn't receive what I was looking for, I am still happy about what I did get.

Thanks to all who gave me their input.

Regards,

EdGuy

 

[Dave_Z]

Good to see a happy ending, and good luck on your ventures.