question Grey Areas - Outbound Sales

[Anjani]

Let's say i own eoxid.com and i see a company by the name Oxid eSales operating with the domain name https://en.oxid-esales.com/en/home.html..

Can i approach them? will it be construed as bad faith?

i see the trademark is cancelled https://trademarks.justia.com/790/65/oxid-79065300.html

Cleary eoxid.com is an apt and easy to remember name compared to https://en.oxid-esales.com/en/home.html

Your input is welcome..

 

[Anjani]

Iam really looking forward to the views of top members @stub @Kate @Recons.Com @Silentptnr as it would help me to go all out in the next step.

 

[Anjani]

Short answer, and not qualified legal advice: I think this kind of approach can backfire. I'm also saying this based on my experience of reading UDRP rulings. It is often a combination of factors but only one factor can tip the balance against you. Buying domain names for the sole purpose of resale can be acceptable at UDRP as long as you do not infringe on the TM rights of others. However targeting a specific end user and taking advantage of their TM is a different proposition.

The lack of a current registered trademark doesn't diminish their rights, since they are using the name they automatically accrue TM rights through usage.

Personally I would normally not buy a name that has only one 'obvious' end user. Unless I am going to use the domain and I know exactly what I am doing. For example, using it in a different country for a different purpose so as to avoid any risk of friction or confusion.

Here is one example:
WIPO-UDRP Decision D2004-0449 - nautomatic.com


Your domain name was registered 5 days ago. If you were to contact that end user, it's pretty obvious you registered the name for the sole purpose of selling it to them. It's not like you have owned the name for 15 years, because you have used it for some business that is no longer active and you want to dispose of your asset.

They would probably prevail at Wipo because you likely couldn't justify another plausible purpose.

Electronic chemicals are in vogue and Oxid is a dictionary name for a chemical - An oxid is a combination of oxygen with a metal or base destitute of an acid

As usual thank you for a detailed analysis..Clarifies many things!

 

[Anjani]

If you had Oxid.com you might get a decent number. Smart companies won't pay anything for a domain like this, never mind mid $XX,XXX. It is not really much of an upgrade.

Brad

i have rarely heard anything positive on NP ebike.com sold for $75000...wonder how much it would have gone on this platform. $xxx i suppose Let's see how things play out..

 

[Anjani]

And trying to justify the purchase by saying its a dictionary word? What dictionary is it you're using, "Websters-Branded-Company-Names"?

It is oxide, not oxid.

oxid - Wiktionary
https://en.wiktionary.org/wiki/oxid
oxid (plural oxids) (chemistry) Archaic form of oxide.

 

[Name Trader]

oxid - Wiktionary
https://en.wiktionary.org/wiki/oxid
oxid (plural oxids) (chemistry) Archaic form of oxide.

Archaic means it's not used anymore. It's been replaced by oxide.

 

[Name Trader]

Thank You, Stub!

Point taken , will consult a legal team if the need arises.

I think it might never come to that as i don't own oxid.com

That was just a standard overider I use when giving any kind of legal advise.

But I thought you said you owned eOxid.com? It could apply to that also.

 

[jideofor]

Interesting...with so many oxid's floating around...i have a good feeling about this one...will either go for Mid $xxxxx or i will win a UDRP lottery

i am in this boat right now... I picked up a domain name at Closeout few days ago after doing some researches to discover that it has different websites using the keyword with varying degree... The major word isn't English and so I had no idea what would happen next.

In my mind, i felt I could contact these website owners but later discovered that one of the keyword of my purchase has been trade marked by the major company I had in mind. Further digging revealed that the other websites using the trademarked word in their URL are AFFILIATED to be the big brand such that their (a few of them) whois records has same details as the major brand but with a different design on website, which made it hard to know they were working for same company on the surface...

However, my own domain name describes what they do in the most perfects sense in their industry...

e,g trademarked word+plus the service they offer in their industry.= my domain name.

Right now, I don't know what to do.

 

[Name Trader]

Mods have been moving my thread often...it's a bit disconcerting...i need to reread the rules again

If you go to your thread via the Alerts button in your browser. You don't need to worry how many times they change it. you probably wouldn't even notice.

 

[Name Trader]

Yeah, while digging, I discovered that a company out of UK used their trademark term for their payment banking start up and they were served C&D. In the report from Tech Crunch, the start up stated that two companies were filing lol... but only one was aggressively against them. When looked at the trademark files, I discovered that two companies actually owned a trademark on the word, the one I referred to in my previous post and another...

Even more reason to delete it. IMHO.

 

[Anjani]

I would not contact anyone. This word has other tm

https://www.trademarkia.com/trademarks-search.aspx?tn=Oxid

Looks like they have a trademark on the 2nd page best to check TESS

Interesting...with so many oxid's floating around...i have a good feeling about this one...will either go for Mid $xxxxx or i will win a UDRP lottery

 

[Anjani]

the title:Grey Areas

already shows that you are aware of the risk

and Outbound Sales, is just another way to say "spam or solicitation".

if you're gonna do, what you were gonna do anyway, then why ask for advice?

just saying....


imo...

Iam weighing the risk to take a calculated risk i reckon things are not cut and dry in this space and I am prepared to take my chances

 

[Anjani]

If you had Oxid.com you might get a decent number.
Brad

Glad to note from your reply that there is no trademark issue with this name..How much it goes for is secondary

 

[Anjani]

@Anjani - You said you were looking for advice but your replies are not thanking any respondents. Instead you appear to be have already registered the domain and your replies seem to be justifying your acquisition. In which case, why have you posted this thread? You should go ahead and market this domain, and reply here once it is sold. To prove everybody wrong. For me personally, I think you should be able to sell this domain to anybody without a trademark, bearing in mind what @Kate has said above.

Thank you, Stub! I have thanked most but just airing my thoughts as i am still not too sure about things..appreciate every point of view.

 

[Anjani]

Maybe not a great choice of words but will work on my English...Thank you, Stub

 

[Name Trader]

Oh. I almost forgot. You can use the fact that they didn't renew their trademark against them. If they take you to court. "They were so concerned about protecting their TM that they let it lapse". But you'd probably need a lawyer to prevent them from taking you to the cleaners, if they take you to court, and you don't show up.

I don't know if the same argument has any weight if they take you to a tribunal though. I would think it might. They don't need to prove they have a registered trademark for a UDRP. However, they only have to provide evidence that they have a trademark by usage.

PS: I am not a lawyer. If you want legal advice. You should consult a lawyer.

 

[Anjani]

Oh. I almost forgot. You can use the fact that they didn't renew their trademark against them. If they take you to court. "They were so concerned about protecting their TM that they let it lapse". But you'd probably need a lawyer to prevent them from taking you to the cleaners, if they take you to court, and you don't show up.

I don't know if the same argument has any weight if they take you to a tribunal though. I would think it might. They don't need to prove they have a registered trademark for a UDRP. However, they only have to provide evidence that they have a trademark by usage.

PS: I am not a lawyer. If you want legal advice. You should consult a lawyer.

Thank You, Stub!

Point taken , will consult a legal team if the need arises.

I think it might never come to that as i don't own oxid.com

 

[Anjani]

.where's @Anjani gone? He starts the thread and then disappears.

Hey Stub! Hope you are doing Great?
Got caught up in real world issues...have been away from this part of the world

 

[Anjani]

i am in this boat right now... I picked up a domain name at Closeout few days ago after doing some researches to discover that it has different websites using the keyword with varying degree... The major word isn't English and so I had no idea what would happen next.

In my mind, i felt I could contact these website owners but later discovered that one of the keyword of my purchase has been trade marked by the major company I had in mind. Further digging revealed that the other websites using the trademarked word in their URL are AFFILIATED to be the big brand such that their (a few of them) whois records has same details as the major brand but with a different design on website, which made it hard to know they were working for same company on the surface...

However, my own domain name describes what they do in the most perfects sense in their industry...

e,g trademarked word+plus the service they offer in their industry.= my domain name.

Right now, I don't know what to do.

Good Luck!

Let's see how things play out

 

[Anjani]

He is busy doing outbound

Mods have been moving my thread often...it's a bit disconcerting...i need to reread the rules again

 

[jideofor]

It looks very much like its a UDRP trademark infringement case in the waiting. To me. I'd ask GoDaddy to delete it. And chalk it up to experience. We have enough anxiety as domainers, without setting ourselves up for an UDRP case hassles, and worst still, a loss. With all it's connotations.

Yeah, while digging, I discovered that a company out of UK used their trademark term for their payment banking start up and they were served C&D. In the report from Tech Crunch, the start up stated that two companies were filing lol... but only one was aggressively against them. When looked at the trademark files, I discovered that two companies actually owned a trademark on the word, the one I referred to in my previous post and another...