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I've recently received a notice from a company

Located in Legal Discussion, started by tim ericsson, Feb 11, 2016

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  1. tim ericsson

    tim ericsson Established Member

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    I own a domain registered in 2005 and I've recently received a notice from a german company saying that they own the trademark that is the domain name. So I've confirmed with USPTO database search, there's not any such trademark applied/registered, so i checked in their countries (germany) tm database site and find that they filed trademark application in 2012 and got registered trademark in 2015 .
    Does the UDRP apply if I'm not the germany resident? For example, the trademark is registered in the germany, but I (the owner of the domain), live in a different country, where the trademark is not filed. Is the domain legally theirs?
    Does the UDRP apply in this case ? am I infringing on their trademark by owning the domain? What should I write in the reply mail ? Please help.
     
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  2. nvdomains

    nvdomains Established Member

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    My suggestions or precautions:

    Please remove ads (unless you are getting significant parking money)

    Normally, your domain is safe. But, I observed some strange UDRP verdicts against the domainers just for putting ads/for sale banners.

    Develop a one page site - just not to lose it (extreme case).
     
  3. tim ericsson

    tim ericsson Established Member

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    thanks nvdomains, yes i have one page site already on that domain, sorry i don't know any procedure about all these legal issues.
     
  4. tim ericsson

    tim ericsson Established Member

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    I heard many udrp decisions was in favour of big companies, also that udrp can take domain without notify the domain owner or did not wait for domain owner response on udrp filed cases. Is that true?
     
  5. Recons.Com

    Recons.Com Top Contributor VIP

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    So they even did not try to make an offer and just threatened UDRP?
     
  6. tim ericsson

    tim ericsson Established Member

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    thanks recons for joining... its pretty nice domain and these guys wanted to get the domain cheaply without paying more than xxx, one more thing i did'nt want to sell it, i have my own startup plan on that domain, I'm still confused what to do now?
     
  7. ZapNano

    ZapNano :( VIP

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    Reasonable & Fair is the keyword here. If it is true, that you have that domain registered since "2005" then you less worry or you don't worry about it. My simple opinion is this; that company who contacted you had filed trademarked 7 years later? And got approved in 2015?

    Analyzed:
    DN date of purchased = 2005
    Claimant filed trademark = 2012
    DN was approved for trademark = 2015

    If I was a lawyer, and this claimant come to me to handle this issue; I would tell her or him, go home you have issue and don't waste my time. I would flush this case in a toilet with Flint water in a heart beat! Just my no sense thoughts.
     
    Last edited: Feb 11, 2016
  8. campout

    campout Top Contributor VIP

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    I would invite them over to my house and serve them tea made with Flint water and then call the cops on them for trespassing.
     
  9. tim ericsson

    tim ericsson Established Member

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    also they said that, they are legal owner of the domain name as they have registered trademark in their country.
     
  10. JayT

    JayT Restricted (85-100%)

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    no, they are not legal owners. You reg'd it way before they filed the trademark. That is the most important part here. They can't do anything.
     
  11. Recons.Com

    Recons.Com Top Contributor VIP

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    Next time they contact you say what they are trying to do is reverse hijacking the name and that will give a very bad publicity to both the legal firm and the startup.
     
  12. ZapNano

    ZapNano :( VIP

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    That company shit smells worst than all shits put together in the whole world!! My zero cent opinion.
     
  13. rokaska7

    rokaska7 Established Member

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    Just in case do all the mails screenshots and keep them.
     
  14. ZapNano

    ZapNano :( VIP

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    Company like this has zero future.
     
  15. tim ericsson

    tim ericsson Established Member

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    I can see that you all are experienced member here, thank you guys for valuable advice, I will upate here if receive any other mail from them.

    But one question in my mind now, what if big company forcely get a domain via udrp decisions (many cases in favour of big companies) and if domain owner don't have money to file reverse case on that company?
     
  16. cocaseco

    cocaseco Top Contributor VIP

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    There are many UDRP cases where a domain was owned much earlier than a TM was filed. While this does help the domain owner, it is far from a sure thing. Timing alone is not a guarantee of success. And you are right, do you have the resources to contest this?

    My advise, take the position you are not violating any TM's, as it is unlikely they know much about UDRP's. Tell them you would like to find an easy and quick solution, do they have any ideas? Reiterate the time and money you have spent maintaining the domain, but don't specifically offer to sell.

    if all else fails, offer to give them the domain for free for a "push" fee. Explain that the push fee is to cover the administrative costs of transferring the name to them. This is better suited for a domain worth $1000 or less, as it would be difficult for example to justify a $12,000 push fee.
     
  17. ZapNano

    ZapNano :( VIP

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    Tim, you don't have to be experienced of something and something; or obtained all kinds of education of this and that. Reasonable and fair to everybody, that's all you need; and the rest will just follow. In regards to your concern about company might want to file a complaint against you; which I doubt they would. If they do, there are many honest lawyers out there that will only take fee if you win. Do not delete your meaasges coming from this company, a lawyer might want that. Just my no sense opinion.
     
    Last edited: Feb 11, 2016
  18. Recons.Com

    Recons.Com Top Contributor VIP

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    So you are basically suggesting he gives in to extortion? And in the meanwhile, begs them to pay him something, admits wrongdoing?
     
  19. LucidDomains

    LucidDomains LucidDomains.com VIP

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    Look, they don't have a leg to stand on. So what they have a trademark. You owned the domain since 2005 and you have your own site up and running. No UDRP will find in their favour in my opinion.

    What they are trying to do is scare you to drop the domain or back down so you'll hand it over to them.

    You have a legit use for the domain. Ignore their emails and carry on life.

    If you are still worried, seek advice for a domain lawyer. Sometimes the initial consultation is completely free.
     
  20. ZapNano

    ZapNano :( VIP

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    No, not a good idea. If I was in his shoe I would not take your advise. Sorry my no sense opinion has made a sense here.
     
  21. Recons.Com

    Recons.Com Top Contributor VIP

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    Tim, UDRPs don't happen with one side present, unless you choose to not to be represented.

    Make it clear to the company and the law firm that you are aware they are trying to do reverse hijack of the domain since the name has been registered and been used before they even filed for tm and that they contacted you and not vice versa. Explain that you will consider all legal options for self defense as well as make sure that the case gets publicity and that the law firm and the company get the publicity they deserve to never again engage in such a behavior.
     
  22. LucidDomains

    LucidDomains LucidDomains.com VIP

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  23. cocaseco

    cocaseco Top Contributor VIP

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    Not sure how you got that out of it, maybe re-read? The OP doesn't have the resources to defend even if he is 100% right. So in an attempt to make the best of a bad situation, I suggest he try to find a compromise. A compromise is always better in business and NOBODY wins if you have to go to a UDRP or involve any litigation.
     
  24. Recons.Com

    Recons.Com Top Contributor VIP

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    Searching for compromise can be used against him as a proof of bad intent. Any numbers that he throws around will be then used to prove that it above and beyond his costs (I have no idea why this is considered bad and why the costs are per domain basis, but some UDRP arbitrators view it that way). So, please, be careful with your recommendations.
     
  25. frank-germany

    frank-germany domainer since 2001 / musician VIP

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    Last edited: Feb 11, 2016

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