Help! Former Domain Name Owner Threatening Legal Action. Need Advice.

[steely]

Hi domain friends. I picked up a law domain name (Last Name + Law .com) in a GoDaddy Closeout in April 2016. It's been parked with Voodoo since then with a For Sale sign. I just got a disturbing e-mail from apparently the former owner. Here are some excepts in italics:


You have unlawfully retained and are now holding for ransom my domain name, ********law.com, which has injured my business and is in violation of the Anti-Cybersquatting Consumer Protection Act of 1999 (ACPA), which carries substantial penalties, including but not limited to monetary damages and attorney fees.

If you do not agree to return my domain name to me within 48 hours of today, I will have no option other than to commence legal action against you, and potentially others associated with you, without further notice.


I have to admit, I'm worried. Is this person bluffing, or could they really take legal action against me? If the worst they can do is file a UDRP, I'm less worried. Can they do anything more? Could I be arrested? I know that may sound like a ridiculous question, but......what's the answer?

Also, if this individual was to file a UDRP, what happens if I lose? How is the domain transferred away? Is it simply removed from my account, or do I need to then perform a transfer?

Thanks in advance for any advice.

 

[DomainZombie]

Most of the times HD answer such requests with the same thing. It sounds like: There are at least XX people/companies with the same name and they all have the same rights to this name. Why would we give it to you and not the others... OFC they have lawyers to craft the message.
So why would one person be more privileged than the other xx-1 people? Each of them has the same right to the name and giving it to one is giving them advantage in the race of time(money).

 

[Kate]

Most of the times HD answer such requests with the same thing. It sounds like: There are at least XX people/companies with the same name and they all have the same rights to this name. Why would we give it to you and not the others... OFC they have lawyers to craft the message.

It's not a relevant defense. In UDRP the onus is on the respondent to demonstrate he has legitimate rights over the domain. Claiming that the complainant doesn't have an exclusive right on the name, doesn't cut it.
So you will lose.

HD shouldn't be hailed as an example, because their strategy obviously doesn't work well for them. Only 20% of the time. For good examples of vigorous fighting at UDRP I would rather look at Telepathy or F Shilling for example.

So why would one person be more privileged than the other xx-1 people? Each of them has the same right to the name and giving it to one is giving them advantage in the race of time(money).

That's it, the first party that is willing to move and put money, time and effort on the case could win the domain.

It's not a privilege really, because most of the time UDRPs are filed over crap domains that the TM holders don't want. But they have to defend their brands.

 

[carob]

Here is a case where the domain owner said no to a threat and was successful - trump.org
http://www.thedomains.com/2015/08/1...but-doesnt-own-trump-org-isnt-happy-about-it/

The letter made claims such as I illegally registered the domain and my use of the domain was unauthorized and also stated that my liability to Mr. Trump is up to $100,000 per ACPA as a result of registering this domain. None of these bully scare tactics were true

I think in another case Trump demanded a domain but the owner cancelled it and it went to a dropcatch auction, costing Trump $1k+ but I can't seem to find that one now - can anyone else?

 

[DomainZombie]

In UDRP he has to show that he is the rightful owner of said domain, but there are many rightful owners of it. This ofc is when and if it goes to UDRP. The responded has legitimate rights over the domain name. He paid for it and does not mess in any way with "complainant"'s business or life. As the complainant can not be tied uniquely to the name, the domain can be considered generic and common (although with limited use). For example, if I am to register KatesDomains.com, do you think you will win in UDRP only because you are Kate and you deal with domains? There might be 100 more people named Kate who are involved in domaining and they all have the right to own the domain.

I'm not against OP's decision. His reg/money - his decision. There is no right or wrong as in one way you avoid the hassle to deal with a lawyer and in the other one, you might get some cash going in the bank.

Recent case: I registered a name consisting of 2 last names and 99% similar to a well known brand. Their lawyer shoots me an email wanting to take the name and ofc mentioning TMs, legal threats etc. I just replied that those last names are quite common and being in one place does not infringe their TM in any way. Never heard from them again. I did not register the name to mess with their TM so no harm done to them either.

 

[Kate]

For example, if I am to register KatesDomains.com, do you think you will win in UDRP only because you are Kate and you deal with domains? There might be 100 more people named Kate who are involved in domaining and they all have the right to own the domain.

Each case is different.
The OP says there are maybe 4 possible end users... not that many for a country as big as the United States.
And if you sell domains, you could defend ownership saying this was a branding exercise. On the other hand if you don't practice law...

Recent case: I registered a name consisting of 2 last names and 99% similar to a well known brand. Their lawyer shoots me an email wanting to take the name and ofc mentioning TMs, legal threats etc. I just replied that those last names are quite common and being in one place does not infringe their TM in any way. Never heard from them again. I did not register the name to mess with their TM so no harm done to them either.

This was a warning shot. Almost certainly your domain name is on their monitoring list. As long as you do nothing stupid, probably nothing will happen. But that doesn't mean they forgot you exist.
Since you say your domain is "99% similar to a well known brand", who do you think will buy it ? Makes me wonder why you registered in the first place.

 

[DomainZombie]

4 is still multiple... and lawyers start practice each year so more possible users might be on the way


i do not intend to sell the name either. i use it myself for something unrelated to them and i'm not even worried. they have no case

 

[SBS66]

First rule of Domaining don't take legal advice from someone who is not a lawyer. ...

Best advice on this thread.

To the OP, thank you for your post. It sort of gave me an idea of what I can sell a similar name for.