Got an inquiry from a law firm specializing in TMs and UDRP claims - No live TMs for my domain

[Arca]

A few weeks ago I won a two word domain name in a NameJet auction for low $XXX. The domain is an upgrade for a number of companies that use longer versions of the domain/other extensions, but there are currently no live trademarks matching it on the uspto website.

I just got a price inquiry for this domain via Domain Name Sales from a law firm specializing in trademarks an internet law. They filled in the form on the DNS landing page, without providing any comment. A quick search shows me that they have represented a number of clients in various UDRP cases.

Since there are not any trademarks matching my domain, is there any chance they are going to hit me with a UDRP? What kind of precautions (if any) should I take when replying them? Or should I just not respond to their inquiry?

Any advice on what I should in this case would be appreciated!

 

[johname]

If you price the domain equal to or less than the cost of a UDRP chances are slim you will have any headaches.

But you dont have to have a TM to do a UDRP and you also dont have to have one to win.

Just need to tip the scale to your side. And odds are large they have a better case to own the domain than you.

But really no one can say without knowing the domain.

Good Luck

 

[SheikhOvais]

To play it safely, don't quote any price to them, rather ask them to make their best offer.

As you said they are a TM law firm, mention in your reply email that you are considering to use the domain yourself, but are open to attractive offers.

Makes you safe that way. My 2 cents though.

 

[nvdomains]

Take care of not showing ads related to those firms.

Do not even reply to them. If they are seriously interested, they will quote the price.

If I were in your place, I will not place either ads or for sale banner.

When so many targeted firms are there, they will contact you through email by checking whois if someone really wants it.

 

[john888]

Tell them that you are in the process of developing the domain but maybe open to offers. You should have a few sites developed to show that you are in the business of internet media and not just a domain flipper.

 

[jberryhill]

A few weeks ago I won a two word domain name [...] but there are currently no live trademarks matching it on the uspto website.

So what?

Lets say the two words are "TideLaundry.com". You aren't going to find a registered trademark (and registration of a trademark is not required in order to have a trademark right) for anything "matching" tidelaundry.

But so what. "TIDE" is indisputably a famous mark for laundry detergent, and the word "laundry" added to the word "tide" pretty much nails down that the domain name is a reference to the relevant trademarked product.

Your statements above mean approximately nothing in relation to the question of whether you have a potential problem.

What happens when you Google those two words? Do you get a significant set of results which all refer to the same product or service from the same source, and which is not described by those two words?

Did you check any international databases, such as the WIPO TMview database, which allows a simultaneous search of a large number of national databases?

The mythology that people continue to have about the USPTO being the be-all and end-all of trademarks is a dangerous one. A trademark lawyer is not contacting you about a domain name out of idle curiosity.

 

[Arca]

@johname - Thanks for your advice. I gave them a low $X,XXX price quote, a few hundred dollars below the cost of a UDRP.

So what?

Lets say the two words are "TideLaundry.com". You aren't going to find a registered trademark (and registration of a trademark is not required in order to have a trademark right) for anything "matching" tidelaundry.

But so what. "TIDE" is indisputably a famous mark for laundry detergent, and the word "laundry" added to the word "tide" pretty much nails down that the domain name is a reference to the relevant trademarked product.

Your statements above mean approximately nothing in relation to the question of whether you have a potential problem.

What happens when you Google those two words? Do you get a significant set of results which all refer to the same product or service from the same source, and which is not described by those two words?

Did you check any international databases, such as the WIPO TMview database, which allows a simultaneous search of a large number of national databases?

The mythology that people continue to have about the USPTO being the be-all and end-all of trademarks is a dangerous one. A trademark lawyer is not contacting you about a domain name out of idle curiosity.

Thanks for your input.

The domain is something like “qualityteaching” (not the actual domain) - with other companies using longer versions like “bestqualityteaching”, “topqualityteaching”, “qualityfirstteaching”, or have names like “qualityeducation” (none of these similar names are trademarked).

There are no live matching or similar TMs in the WIPO TMview or uspto databases. I also searched several other TM databases that I found via a google search, and none of them have any live trademarks that use the same words as my domain.

The words are adjective+service (i.e. quality+teaching), and the domain does not refer to any specific product, as with your Tide laundry example. It's more like fast laundry or great laundry. If I google the name, several different small companies who provide “teaching” services show up. All the search listings represent different companies, and it is not dominated by any particular provider.

 

[jberryhill]

If you've been contacted by a US law firm, then one thing you might also consider is searching the USPTO database by attorney and/or firm, to get an idea of whether they regularly do work for a major client in the teaching field. This can also provide an important clue as to whether the domain name you registered somehow relates to an existing mark of one of their clients, or whether it might represent a new project for one of their clients.