How would you respond inquiries from TM holder?

[owntype]

I have a domain name that has never been listed for sale.

It's a 5L .com, regged since 1998. A TM holder (a company using .net as official site) sent me an email asking if the domain is for sale and they mentioned that their company hold the Trademark.

My question is: I would like to negotiate a sale (The name worths mid - high $x,xxx and there are other companies trademarked it in different niche), so how should I respond the inquiry safely?

Thanks in advance.

 

[IAmAllanShore]

"carefully" :hehe:

Even if they are the ones to approach you, your response with an offer to sell could be used in a UDRP complaint as evidence of bad faith (Correctly or not, panelists do include this in their decisions.).

-Allan :gl:

 

[copper]

First, I am sure you already know that there are some people
pretend to be TM owner hoping to get domain for free or real cheap.

You should never say "Yes, this domain name is available for sale".
This will give impression of "registered in bad faith" if TM owner file UDRP.

Domain has web site and/or using it some way?
If no, you should be much more careful with your reply.
Panel could consider you are holding domain as hostage if you
never used domain for 10 years.
Every reply CAN be used as evidence if TM owner file UDRP.
If yes, I would say "This domain is valuable to me since I am using it as...
However, I may consider your thought".

Notice I did NOT say "I may consider your offer".

I am not a lawyer, so, you should decide on your own.
However, I had two experience with TM domains which
both of them, I had no idea they were TM domains.

1st one - they contacted me almost identical approach.
Their lawyer contacted me. I decided I would just keep them.
So, I told them it was not for sale. Domain was never been parked.
Never been listed for sale. I did NOT lose the domain.

2nd one - TM owner contacted me with same approach.
I ended up selling it to TM owner at bargain price since I thought
they really deserve the domain more than myself.

Good luck to you

 

[Auraka]

Well my first question is, was the trademark filed before or after you registered the domain?

 

[Corey]

unfortunately, you don't not have the power to negiotate a high price given the TM issue.

Cheers
Corey

 

[owntype]

Thanks for the suggestions, guys.

I have sold several domains to TM owners in low $x,xxx range in the past when I didn't realize the TM issue. After those sales, I started to know how serious the TM issue is after reading some WIPO decisions.

So in this case, I will think about the issue carefully and possibly I will reply "not for sale" at the moment and see how they response.

More opinions are welcome, since this could happen to other domainers. Thanks again.

 

[yandig]

Of course, if you reply "not for sale", then you run the risk of killing the sale. I would word the response very carefully, and somehow let them know that the domain could possibly be purchased without stating that it's for sale.

You seem pretty well acquainted with the do's and don'ts of trying to market a domain to a TM holder, so I think you'll have to play your cards soon if you know what I mean.

Good luck!

 

[Pred]

say the name is under development. you have no plans to sell.
you were offered (example) $3k before and turned down as you have plans.
say, the owner of myspace didnt plan to sell, however, i guess everything has its price :sold:

or maybe thats living too dangerously? :hi:

 

[Michael]

I agree with Pred. I would say that you are developing a site for the domain in a vertical unrelated to theirs, and that you had not considered selling it. That way you don't blow the sale, but they don't get ammunition for a WIPO complaint. You may want to add something like "Out of curiosity, what price did you have in mind?" Good luck with whatever you decide.

 

[weblord]

if you're sure they're really the tm holder after you've done your research then it's lucky for you for them to offer to buy it from you.

a little caution, don't price it too high for them to change their mind, or don't price it too low a disadvantage for you.

 

[Pound]

Definitely go down the "Under development but willing to listen to offers" route.

 

[gemstar]

Sometimes I feel that domaining is like running a black market underground business...You have to be walking on eggshells constantly when approached with offers...What's the point if your going to get sued even if your domain is not related to the other companies product?..Also if you have a domain that was registered before the TM you should be Ok as long your product differs from theirs.
I Think this whole WIPO thing is garbage. :p

 

[Seabass]

I would not make a move yet on telling them what you are doing/going to do with the domain.

Go get more information from them first. Dig, dig, dig, dig...... and then dig more so that you know who you are dealing with. Don't tell them a damn thing though.

Personally, if it is not an obvious, flagrant, really-rub-a-business-owner-the-wrong-way kinda' TM domain, and is true generic domain, which can still be trademarked, and you feel like you are acting in good faith, then ask them if they are soliciting you to buy the domain or are they threatening you because they are mentioning their trademark. It seems to me from what you say they are talking out of both sides of their mouth.

You need to pull them out into the open to clarify their intentions. Do they want to buy or fight? Maybe you should even be belligerent in your tone a little just to get them to "make a move" to clarify their intentions. Right now you have no idea really who you are dealing with.

Get them on the phone if you have to. The phone will work best b/c you can often pry their feelings about you out of them. Find out....big company/small company, importance of the domain to them, budget, prestige of ownership because of competitors, etc.... Get them to show you their cards......and then you may assume some power, given the particular circumstances.

If they don't want to engage in this then they either don't really want the domain or would prefer arbitration or court.

Once you know everything, or most everything, then make a decision based on you moral compass, bank account balance, business direction, etc......

Standard disclaimer: I'm not a lawyer, consult a lawyer.

unfortunately, you don't not have the power to negiotate a high price given the TM issue.

Cheers
Corey

That is not necessarily true.....it depends on the circumstances.

In this case the OP said the TM is held by many companies. Does the first one that raises his voice get to take it away from the owner for peanuts?

When was it registered, is it generic, how was/is it used, etc..... can all determine if you can negotiate a high price or not.

 

[affordableweb]

unfortunately, you don't not have the power to negiotate a high price given the TM issue.

Cheers
Corey

i would have to disagree with this. You can in fact negotiate for whatever price you want especially if you regged the domain before they got the TM.

A TM does not automatically mean they outright own the word or phrase. I as the domain owner have the right to use it in a non competitive manner. If your site was up first then it does not matter, you have first rights to use and can use the name as you wish.

the fact the domain is trademarked increases the value of the domain to the end user.

in regards to use in bad faith. If you can prove they contacted you first then you can reply however you wish. You are responding to their request. You did not seek them out. That would be bad faith.

 

[owntype]

You can in fact negotiate for whatever price you want especially if you regged the domain before they got the TM.

Thanks, anyone has TM knowledge can confirm this statement?

 

[Corey]

have you researched the TM at United States Patent and Trademark Office Home Page

http://www.uspto.gov/

Cheers
Corey