Help - I accidentally acquired the exact match .com of a multibillion dollar brand

[DomainBFF]

I dropcatch/bid on names at auction almost everyday that have several registered TLD's and a valuable keyword or is short and looks like it would make a great brand name.

Recently I acquired a .com of a very short "brandable" that you can immediately imagine what the brand would be for, which is an already massive and still one of the fastest growing big $ industries. The only issue is the primary word that attracted me (and a ton of other bidders) is a latin term, so not extremely common, and not a "real" word. And the other part of the domain is very short and could be interpreted hundreds of ways.

So, I got in a heated bidding war, even going over my allotted budget because I was getting angry at how many people kept upping it at the last second and restarting the clock and was liking the name more and more as we duked it out. Well I ended up winning for mid x,xxx and was super pumped - until I realized that it truly was an incredible brand name in said industry, because a multi-billion dollar/global corporation had recently rebranded to this exact name with a TM filed but not approved.

I don't want to give away too much info, but I'm not sure what the hell to do.

I didn't register this name in bad faith, and truly had never heard of the company that's now using this name. I didn't even know of the company's existence before they rebranded, so all of this was a shock to me when I realized the situation I was in. Because now even though no bad faith was intended, I did invest in this name because of its age and fantastic brand power to make a future sale, which now I can't even list without immediately being in textbook bad faith.

Does anyone have a recommendation on what I should do here? @jberryhill if you could weigh in it would be greatly appreciated.

I always had plans for UDRP situations for my names with real words in them, but this one was a complete curveball that I've been obsessing over and reading UDRP cases constantly to figure out what to even do.

Any help is appreciated.

 

[marm]

The only advice here is to share nothing publicly, and get your own legal representation - not advice from a forum.

IMO there's already too much info here if someone were to work backwards and knew the name. Plus, you already invested a significant amount into the name, the additional $ for a consult with an attorney will be money well spent.

 

[Gabriel360]

First of all, relax.

Someone won a UDRP against Google for the domain name GeminiProChat.com or something like that.

Secondly, you said the domain name has a base in Latin. Latin words are considered dictionary words. Just Latin dictionary words. For example Lumen is a latin dictionary word. So if you bought a domain name like LumiFlix.com, you could aptly defend it by saying you bought it because it relates to Lumen which is a Latin dictionary word that has a positive connotation that businesses love using for their brand.

Thirdly, have similar names in your portfolio. If you do, that's great. If you don't, acquire similar ones. Preferably in similar auctions like the original one. For instance, in my example with LumiFlix.com, you could also acquire names like LumiFlex.com, LumiVolt.com, Luminet.com, LumiLyte.com, etc. The more the better. The goal is to show a UDRP Panel that you are in the habit of acquiring such names as a viable investment strategy with ZERO bad faith intention to target anybody.

Which brings me to my next point, LIST IT FOR SALE. This sounds controversial but it's the logical next step. You are a domain investor (that's legitimate practice under UDRP). And you bought the domain name as an investment property, not to target anybody. So act accordingly. Don't treat the domain name differently than you do your other domain names. Doing anything different from the others may be considered bad faith because you paid special attention to the domain name.

So if you've been listing your domain names for sale as BIN + MO. List it as BIN + MO too.

A quick callback to my previous point about similar names. Price the other similar names SIMILARLY. Even if you acquired the other ones for $Xto $XX, price them similarly to the one you acquired for $X, XXX.

And when you set your price, set what you think the domain name is worth. If they ever point it out in a UDRP (for being to excessive), remind the Complainant and the Panel that neither of them have the authority to determine the price of another person's property. There are case laws that support that.

Also, look for similar or identical trademarks or domain names used by other businesses. Take note of those as they prove that the terms in the domain name sre not as unique or exclusive to the potential Complainant as they'd have a Panel believe. Puts a dent in their argument.

Finally, their REBRANDING efforts mean that they cannot claim sufficient common law rights in term of the domain name. And a Trademark application/filing does NOT typically confer rights in a term.

All these work in your favour.

Meantime, save some money for a potential UDRP attorney and extra money to request for a 3-member Panel.

You may never need it and that'll be a nice surprise. And if you do need it, you'll be ready.

Good luck!

 

[g9xmouse]

I have to say that the UDRP panel should all be hanged.

So, my suggestion is to use this domain name to build a website that has nothing to do with the brand content and leave your contact information, and truly interested buyers will find you.

 

[Gabriel360]

I have to say that the UDRP panel should all be hanged.

I STRONGLY DISAGREE with this.

There are bad actors who use domain names to target businesses and companies. The UDRP Panels provide a quick and reliable way to resolve the issue.

For instance, check out the UDRP case for PepperCorn.com. A disgruntled web designer hijacked the domain name of a business he worked with for 15 years just because they no longer wanted to work with him.

They offered him $5k and he refused even though he had ZERO rights to the domain name. Instead he demanded $25,000.

Without the UDRP, and by extension the UDRP Panels, that could have resulted in an expensive and drawn out legal battle. And while the legal battle is ongoing, a business would be forced to do without a key asset—their domain name.

So there is a place for the UDRP. Even if some Panels make mistakes, most are competent and act in good faith.

No hanging!

 

[g9xmouse]

I STRONGLY DISAGREE with this.

There are bad actors who use domain names to target businesses and companies. The UDRP Panels provide a quick and reliable way to resolve the issue.

For instance, check out the UDRP case for PepperCorn.com. A disgruntled web designer hijacked the domain name of a business he worked with for 15 years just because they no longer wanted to work with him.

They offered him $5k and he refused even though he had ZERO rights to the domain name. Instead he demanded $25,000.

Without the UDRP, and by extension the UDRP Panels, that could have resulted in an expensive and drawn out legal battle. And while the legal battle is ongoing, a business would be forced to do without a key asset—their domain name.

So there is a place for the UDRP. Even if some Panels make mistakes, most are competent and act in good faith.

No hanging!

Although we have different views, do you think that too many members of IP protection and trademark protection companies are mixed into the expert panel? Is it seriously unfair that a person who files complaints for clients can also serve as an expert in other cases?

 

[jberryhill]

@jberryhill if you could weigh in it would be greatly appreciated.

I have a car that's been consuming oil at the rate of around a quart every two months. It runs fine, so I'm not really sure what's going on with it. I took it around to a couple of shops and told them, "Hey, I'll trade you a bunch of likes on Namepros if you can tell me whether I need to get my engine looked at" and didn't get any takers.

I ended up winning for mid x,xxx and was super pumped

If that's what gets you super pumped, imagine how good it feels to spend a small fraction of that on experienced legal advice.

a multi-billion dollar/global corporation had recently rebranded to this exact name with a TM filed but not approved

At this point, I'm pretty sure my last dying words will be something about how I will go out of this world never understanding the bizarre fixation domainers have about the detailed mechanics of a trademark registration system while missing what it might or might not actually mean in the overall picture of things.

While I look at a post like this one and kinda shrug my shoulders over the fact that there is nowhere near enough relevant detail to come to any conclusion about what might or might not be your best course of action, I do marvel at the apparent confidence of others here in their expertise.

There's a range of factors that are important here, primarily what is, or is not, the relative inherent distinctiveness of the term as a mark. If it is even moderately inherently distinctive, then having acquired it shortly after a rebrand, and offering it for sale, is pretty much a conclusion that writes itself.

But, not knowing the actual facts, it's pretty much a mystery to me. Anyone looking for legal advice, in contrast to discussing general topics on a public forum, is entitled to confidentiality which a lawyer has a duty to preserve which, of course, is not going to happen on a public message board.

In any event, if anyone does happen to know how much engine oil I should expect a 2014 Audi A4 to consume on a regular basis between changes, your advice will be greatly appreciated.

Although we have different views, do you think that too many members of IP protection and trademark protection companies are mixed into the expert panel?

Great question.

Can you tell me, other than in IP law firms, where one finds a supply of experts in IP law?

Is there someone running an auto repair shop who, coincidentally, is also an expert in trademark law and who is available to accept peanuts in exchange for writing opinions?

UDRP panelists get paid, depending on the provider, from around $700 to $1000 per case. Their ordinary hourly rates are in the $500 range and up, so its more of a public service engagement to get their name out there, more than anything else.

But I see this kind of objection come up a lot - "Why are all the UDRP panelists trademark lawyers?" and I'm genuinely puzzled by whom you want them to be.

If you have a medical malpractice claim, guess who all the experts on the state medical review board are going to be?

So, tell me, what should UDRP panelists actually be in the profession of DOING for a living?

 

[g9xmouse]

I have a car that's been consuming oil at the rate of around a quart every two months. It runs fine, so I'm not really sure what's going on with it. I took it around to a couple of shops and told them, "Hey, I'll trade you a bunch of likes on Namepros if you can tell me whether I need to get my engine looked at" and didn't get any takers.



If that's what gets you super pumped, imagine how good it feels to spend a small fraction of that on experienced legal advice.



At this point, I'm pretty sure my last dying words will be something about how I will go out of this world never understanding the bizarre fixation domainers have about the detailed mechanics of a trademark registration system while missing what it might or might not actually mean in the overall picture of things.

While I look at a post like this one and kinda shrug my shoulders over the fact that there is nowhere near enough relevant detail to come to any conclusion about what might or might not be your best course of action, I do marvel at the apparent confidence of others here in their expertise.

There's a range of factors that are important here, primarily what is, or is not, the relative inherent distinctiveness of the term as a mark. If it is even moderately inherently distinctive, then having acquired it shortly after a rebrand, and offering it for sale, is pretty much a conclusion that writes itself.

But, not knowing the actual facts, it's pretty much a mystery to me. Anyone looking for legal advice, in contrast to discussing general topics on a public forum, is entitled to confidentiality which a lawyer has a duty to preserve which, of course, is not going to happen on a public message board.

In any event, if anyone does happen to know how much engine oil I should expect a 2014 Audi A4 to consume on a regular basis between changes, your advice will be greatly appreciated.



Great question.

Can you tell me, other than in IP law firms, where one finds a supply of experts in IP law?

Is there someone running an auto repair shop who, coincidentally, is also an expert in trademark law and who is available to accept peanuts in exchange for writing opinions?

UDRP panelists get paid, depending on the provider, from around $700 to $1000 per case. Their ordinary hourly rates are in the $500 range and up, so its more of a public service engagement to get their name out there, more than anything else.

But I see this kind of objection come up a lot - "Why are all the UDRP panelists trademark lawyers?" and I'm genuinely puzzled by whom you want them to be.

If you have a medical malpractice claim, guess who all the experts on the state medical review board are going to be?

So, tell me, what should UDRP panelists actually be in the profession of DOING for a living?

You convinced me, but as a domain investor, I still want to hang them. LOL.

 

[Future Sensors]

At this point, I'm pretty sure my last dying words will be something about how I will go out of this world never understanding the bizarre fixation domainers have about the detailed mechanics of a trademark registration system while missing what it might or might not actually mean in the overall picture of things.

We continue to appreciate that you keep explaining this over and over again, John.

 

[jberryhill]

You convinced me, but as a domain investor, I still want to hang them. LOL.

I'll DM you a list of which ones. If you send me your address, I'll ship you some rope.

 

[alop]

I'll DM you a list of which ones. If you send me your address, I'll ship you some rope.

Wait a minute Mike add me

 

[jberryhill]

Wait a minute Mike add me

Good idea. Yes, @g9xmouse , I've added @alop to the list, so you can hang them too.

 

[alop]

That rope probably 2 ft short

 

[Future Sensors]

What are the likely legal implications of this action?

 

[Altetra]

Just starting this topic is already showing us why you were interested to win the Auction.
I know you are excited, but you better have consulted with a lawyer privately.

 

[DomainBFF]

I have a car that's been consuming oil at the rate of around a quart every two months. It runs fine, so I'm not really sure what's going on with it. I took it around to a couple of shops and told them, "Hey, I'll trade you a bunch of likes on Namepros if you can tell me whether I need to get my engine looked at" and didn't get any takers.



If that's what gets you super pumped, imagine how good it feels to spend a small fraction of that on experienced legal advice.



At this point, I'm pretty sure my last dying words will be something about how I will go out of this world never understanding the bizarre fixation domainers have about the detailed mechanics of a trademark registration system while missing what it might or might not actually mean in the overall picture of things.

While I look at a post like this one and kinda shrug my shoulders over the fact that there is nowhere near enough relevant detail to come to any conclusion about what might or might not be your best course of action, I do marvel at the apparent confidence of others here in their expertise.

There's a range of factors that are important here, primarily what is, or is not, the relative inherent distinctiveness of the term as a mark. If it is even moderately inherently distinctive, then having acquired it shortly after a rebrand, and offering it for sale, is pretty much a conclusion that writes itself.

But, not knowing the actual facts, it's pretty much a mystery to me. Anyone looking for legal advice, in contrast to discussing general topics on a public forum, is entitled to confidentiality which a lawyer has a duty to preserve which, of course, is not going to happen on a public message board.

In any event, if anyone does happen to know how much engine oil I should expect a 2014 Audi A4 to consume on a regular basis between changes, your advice will be greatly appreciated.



Great question.

Can you tell me, other than in IP law firms, where one finds a supply of experts in IP law?

Is there someone running an auto repair shop who, coincidentally, is also an expert in trademark law and who is available to accept peanuts in exchange for writing opinions?

UDRP panelists get paid, depending on the provider, from around $700 to $1000 per case. Their ordinary hourly rates are in the $500 range and up, so its more of a public service engagement to get their name out there, more than anything else.

But I see this kind of objection come up a lot - "Why are all the UDRP panelists trademark lawyers?" and I'm genuinely puzzled by whom you want them to be.

If you have a medical malpractice claim, guess who all the experts on the state medical review board are going to be?

So, tell me, what should UDRP panelists actually be in the profession of DOING for a living?

I was intentionally vague with what I said so that I could get opinions from those with a reputation in the industry's advice on what my next step should be.

I pay no mind to those with no experience as it is a public forum - and believe it or not, I have seen many threads with qualified members weighing in, including you.

So I tagged you, and you did weigh in, and even though I don't respect you speaking to me like a 5 year old because others on this forum seem to be 5, If your advice is that I should pay for counsel already at this stage, then I suppose that will be my next step.

Having not been in this situation before, I posted a question on what I should do from here, on a domain name forum.

fo·rum
/ˈfôrəm/
noun
1.
a place, meeting, or medium where ideas and views on a particular issue can be exchanged.

You participate in this forum, along with other domain name professionals in-between the fodder, so I thought you would maybe assist the community like I've seen you do before, without belittling me whist simultaneously saying "money please" in-between.

Had I been served a cease and desist or received a UDRP, you were the first person I would have hired, with money ready in hand as I respected your status and contributions here for others.

Thanks for your help, I guess.

Edit: Also, this is an awful comparison. There are several car forums where mechanics discuss these issues daily.

 

[DomainBFF]

Just starting this topic is already showing us why you were interested to win the Auction.
I know you are excited, but you better have consulted with a lawyer privately.

...how? This makes absolutely 0 sense in the context of my post. I'm actually absolutely deflated upon finding out what that situation now is.

 

[fka1080405]

Losing a UDRP case is hard if you actually respond. The result of a case depends almost entirely on the panelist: the same case adjudicated by a different panelist could have a different result. There are cases where picking up an an expired domain with an exact trademark match has been ruled in the respondents favour, and cases where it has been ruled in the complainants favour.

A view sometimes expressed is that as long as you do not engage in outreach to a trademark holder then you are not at risk of losing the domain. My personal view is that it is much less clear cut than that, and that outreach is not the death-knell for your ownership. Yes, there is an increased risk of a panelist ruling in the complainants favour but that is far from certain. I am in this exact situation at the moment but I am a little further along, I have engaged in outreach to a trademark holder, who has made trademark-based threats, but I am not concerned.

My take is that if your domain is at risk of being lost in a UDRP claim to a trademark holder then the domain is a risk to any buyer, which significantly reduces your buyer pool for the domain. If I were in your situation (which I am) I would be engaging in outreach to the company that has recently rebranded to the name. I would be engaging in that negotiation with confidence...

...In fact, if you have cold feet, I will buy the domain at whatever price you paid at auction and I will take on the risk of selling it to the company that are now using the name (edit: subject to a review of the name, assuming your description of it is accurate).

 

[biggie]

I was intentionally vague with what I said so that I could get opinions from those with a reputation in the industry's

Thanks for your help, I guess.

Hi

considering your intentional vagueness, how could anyone put premises together to come to a logical conclusion?

as is, @jberryhill stated some helpful advice, if you read it emotion free.

don’t think it was demeaning, but was expressed so all could get it.

imo….

 

[UncleBrand]

i won a UDRP against a billion dollar brand,
they have registered this one french word in dozens of TLDs

they still lost, it was a dictionnary word,
and i defended the case myself

dont sweat until there is an UDRP,
you may get a good offer before a UDRP

99% of your fears will never materialize,
so just brush them off and keep going