question How to rid myself of a trademarked domain?

[IMadeABigMistake]

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...

 

[Lord Antares]

Well my stupidity scammed my wallet.

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?

 

[IMadeABigMistake]

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?

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

 

[IMadeABigMistake]

Okay thanks

 

[IMadeABigMistake]

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

Interesting thought.

 

[carob]

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.

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.

 

[JudgeMind]

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.

are all the other TLd's owned by them?

Check whoisology.com

 

[IMadeABigMistake]

are all the other TLd's owned by them?

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.

 

[JudgeMind]

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.

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

 

[IMadeABigMistake]

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

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.

 

[Domain_savvy]

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

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?

 

[Corey]

umm one word, one action, delete

Cheers
Corey

 

[branding]

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.

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.

 

[dande]

Name tarnished in what sense? UDRP is not like a criminal liability or something? Why the so much fear???

 

[dande]

If I were you, believe me, I'll offer it to the company for sale. Let the hell break loose!

 

[NonHipster]

Seriosly $5K for a .dev nobody knows about, do you know the caliber of established .com you could have got for that price, with a little bit of leg work. Did they provide you a tm clearly acceptance form?

This is so true!

 

[lock]

What industries does the trademark cover? Can your name do something else? Chances are you thought you could squat so really can't feel too sorry for you as otherwise you would have already a business of same name and needed the domain so paid 4.5k to get it. I assume you have done some mail out and that is your real worry.

 

[MapleDots]

Why is it that whenever someone infringes on someone else's intellectual property (in the domaining world) they say they are putting up a fan site?

You might as well wear a big bullseye and say come sue me.

 

[branding]

...except on his business card, he's in Vancouver, Canada!

Hehe, thanks for that. My bad

It's a fun story though. I remembered reading about it because of @jberryhill 's story. It got quite some media attention at the time. If you Google it I'm sure you'll find the full story.

 

[namemarket]

......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..... JM

Really? Was it positively a trademark violation or just possibly? Can you share the domain?

If an obvious TM violation the trademark owner paying a high 8k is extremely rare and unlikely. Usually they want it for reg costs or may pay as much as 1.5k since a WIPO case is I believe only 1.5k or so. Sometimes they go direct to federal court without notice or trying to buy it seeking 100k in damages.

 

[namezest]

Bait & Switch Scam? Sounds like it to me.

 

[frank-germany]

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.

that may not be true for famous TM s

when you check the trademark registers you may find the same term registered by multiple companies for multiple purposes

so you may have a different idea
that may still be completely legal

unless the TM is famous

--
no legal advice
I am not a lawer

 

[IMadeABigMistake]

No it is not sam sung although interestingly that does fit the name + verb and holding it clues.

I was being hyperbolic saying 30% have it in their hand, maybe 5-10%.

 

[capybara]

UDRP rules 4 b (i) state:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
​

It is completely legitimate to ask for your documented expenses to be reimbursed and does not lead to violation of the rules. As such, keep the domain, no ads, no for-sale pages, and if you're contacted by the brand owner, provide them information about the price you've paid and ask for that much – it is your right and nothing is wrong with that. You have not committed a crime or violated anything just by registering the name.