NameSilo

How to rid myself of a trademarked domain?

Labeled as question in Legal Discussion started by IMadeABigMistake, Feb 24, 2019.

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  1. IMadeABigMistake

    IMadeABigMistake New Member

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    I was intent on making a fan site towards a global very well known tech company and managed to buy their .dev domain during the EAP. The site would teach users how to develop applications for use on their mobile platform. Hence (company).dev being a great name.

    I was intending on having ads to cover the rather large cost of the domain (4.5k). I very stupidly bought it without thinking about the legal implications of using a trademarked domain and have now found out that not only can I not have ads on this website I likely wont even be allowed to use the domain full stop.

    I have been informed that this 4.5k is down the drain, which is sad but in a way I deserve it for purchasing something without doing my research and hopefully this mistake saves me a lot of money in the future. An expensive lesson.

    What is my best bet for ridding myself of the domain? I've contacted namecheap and they gave me three options

    -Let it Expire
    -Send it to a friend
    -Sell on their marketplace

    I do not want to hold onto it due to the possibilities of receiving a nasty letter. I do not want my name tarnished and would very much hate to have it published on the web in relation to a domain dispute.

    How can I get rid of this domain? Bonus points if the method involves me recouping some of the initial cost...
     
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  2. Kpett

    Kpett Established Member

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    There is a fourth option with Namecheap - delete the name today. If you wait for it to expire, you are still open to UDRP. If you give it to a friend, they are open to a UDRP. If you try and sell it, you could find yourself in legal trouble. If you don't want your name tarnished, you should just delete the name with the Registrar and move on.
     
  3. IMadeABigMistake

    IMadeABigMistake New Member

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    Thing is I don't think there is a delete option. Answers on google for that question are not valid and point to cancelling hosting and market place listings but not deleting the domain itself.
     
  4. Lord Antares

    Lord Antares Top Member VIP

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    Oh god. You got scammed big time.

    Message the registrar and tell them you want the name terminated.
     
  5. IMadeABigMistake

    IMadeABigMistake New Member

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    Well my stupidity scammed my wallet.
     
  6. MrAcidic

    MrAcidic Account Auto-Closed Gold Account

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    Contact their support team and they can manually remove/delete the name
     
  7. Bob Hawkes

    Bob Hawkes formerly MetBob NameTalent Gold Account VIP Trusted Blogger

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    I would be surprised if Namecheap don't have a delete option like GoDaddy have, although like you say not listed. I would ask their customer service.

    Are you certain there is no return possibility? See if your state has a time period to cancel contracts and try to use that argument. This is a lot of money.

    Don't list the name here but is it a non generic word. I am not a legal expert but if a generic word does it have commercial use unrelated to obvious TM owner? Although even if so I guess would not make economic sense.

    Feel for your pain.

    Bob
     
  8. IMadeABigMistake

    IMadeABigMistake New Member

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    I contacted support in relation to a reversing the sale and they gave me those three options I listed above. I also found a section in their Terms and Conditions stating that no refunds are given for premium domains or for Early Access Program domains of which this domain is both.

    The domain is not a generic name but can be broken down into an english name + a verb but upon reading the domain 99% of people will read it as the brand which is so common there is a 30% chance it is in your hand right now.
     
  9. Lord Antares

    Lord Antares Top Member VIP

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    Yeah, but the seller also scammed you. He knew full well what he was doing. Or was this a registry premium bought from a registrar?
     
  10. IMadeABigMistake

    IMadeABigMistake New Member

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    It was part of googles Early Access Program for the .dev TLD. That money went to google I assume.
     
  11. MrAcidic

    MrAcidic Account Auto-Closed Gold Account

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    You need to tell them to delete the name as you no longer want to own it due to trademark issues. They will then delete it.

    This is not the same as asking for a refund.
     
  12. IMadeABigMistake

    IMadeABigMistake New Member

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  13. Bob Hawkes

    Bob Hawkes formerly MetBob NameTalent Gold Account VIP Trusted Blogger

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    Does Google bear any responsibility for allowing sale of an apparently obviously TM term to someone not the TM owner?

    Has this legal argument ever been used I wonder?

    Is not them selling (through NameCheap) the same thing as an individual reselling name?

    It is so much money that despite the Namecheap TOS I would push someone for refund or perhaps refund minus a reasonable handling fee.

    Bob
     
  14. IMadeABigMistake

    IMadeABigMistake New Member

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    Interesting thought.
     
  15. JudgeMind

    JudgeMind Bullish on .com PRO VIP Trusted Contest Holder

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    Question:

    Did the company owning the trademark contact you or send you a UDRP? If not then I would suggest the option of deleting the domain name unless the renewal fees are very high. I've had two cases similar to this in the past, I did not delete the domain, I did not develop the name either. I pointed the names to a simple contact form landing page and sat on the and waited. I eventually let one of the domains expire as the renewal cost was over $300, the other I renewed for 2 years. I received a message from the company holding the trademark asking what I was doing with the name. I was up front with them and told them I had originally acquired the domain for a development project we were working on but we didn't end up using the name. They then asked if it was for sale. I said, we typically do not sell our domains but feel free to make an offer. Their offer was for mid $x,xxx, I didn't reply to it for 3 days and then they sent me another message asking if I got their first offer. I replied and simply said, yes we have received your offer, thank you. After a week of not responding to their initial offer, they contacted me again and said, we are prepared to pay $8,000 max to acquire this domain name, please reply. I replied with a link to escrow.com transaction and deal was done.

    If you hold a trademark term, don't list for sale, don't auction it, don't put ads on it. A simple contact form lander will allow them to reach out to you. Doing it this way leaves things open to what your intentions are for the domain and whether they will threaten legal action against you for holding the domain. In the event they did threaten legal action, I would have just given them the name and it would have been over. Since I did not make any previous revenue on the domain, nor did I develop it or clearly post it for sale, its tough to prove I registered it in bad faith.

    JM
     
  16. IMadeABigMistake

    IMadeABigMistake New Member

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    No they didn't, however I expect that they will soon given the size of their company, along with the fact that almost every other TLD with their name on it is taken.

    Thanks for the rest of the info.
     
  17. carob

    carob Top Member VIP ★★★★★★★★★★

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    You need to look at what the specific arbitration procedure attached to that domain extension is.

    And work out what Namecheap's cancellation procedure is. Because, with .com, once you hit delete it still takes 30+ days to delete, even thought there is no way you can restore it. During that time you remain the registered owner of the domain so if you got queries you would have to explain it is pending deletion.

    You have applied free WHOIS privacy?

    Anecdotally, the first thing that should happen is they approach you saying hand it over, and you can just say yes if you choose. One often reads of the actual acquisition cost being reimbursed - so they might just pay you what you paid, which they would have had to pay if they had registered it in the first place.
     
  18. JudgeMind

    JudgeMind Bullish on .com PRO VIP Trusted Contest Holder

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    are all the other TLd's owned by them?

    Check whoisology.com
     
  19. IMadeABigMistake

    IMadeABigMistake New Member

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    It seems that most of them are yes.

    Some quick googling shows that there are people with the exact same name as this brand. It would be nice if one of them contacted me in relation to making a personal website... ha.
     
  20. JudgeMind

    JudgeMind Bullish on .com PRO VIP Trusted Contest Holder

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    are all of the websites from others in the same niche as the trademark holders?
     
  21. IMadeABigMistake

    IMadeABigMistake New Member

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    I'm not sure I understand. Many of the other TLDs from this company just redirect to their main website.

    If you are asking about the name all I mean is that there are people whos First and Last name are this brand so maybe that helps my case a bit in that it isn't just a term to refer to them it could also be someones personal website.
     
  22. Domain_savvy

    Domain_savvy Established Member

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    So you hoped that the company will eventually reach you and you will sell them if offered anything.I mean as a domainer,we have to market the domain via marketplaces or in other form inorder to sell it.But you were confident that the company will reach you and justify your patience of sitting on the name for 3 yrs via a offer?
     
    Last edited: Feb 24, 2019
  23. Internet.Domains

    Internet.Domains Top Member VIP

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    Contact the trademarked company's legal department. Plan on giving them the domain. Depending on your willingness to help them, they may reimburse you some or all of the fees.
     
  24. Corey

    Corey Top Member VIP ★★★★★★★★★★

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    umm one word, one action, delete

    Cheers
    Corey
     
  25. NameDeck

    NameDeck Design. Develop. Deploy. VIP

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    This would be the best advise I think. If you delete the domain it's money lost for sure.

    As far as my experience goes, there's nothing wrong with just owning a domain with a trademark in it, it all depends what you do with it. I find it hard to believe they would win an UDRP if, like suggested, there's only a contact form on it. You could also make sure the domain doesn't resolve and make sure your whois data contains your contact info.

    If it's a tech company and you're certain they'll come for it they'll figure out how to reach you.
     

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