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I've recently received a notice from a company

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tim ericsson

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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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The views expressed on this page by users and staff are their own, not those of NamePros.
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.
 
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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.
 
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No, I don't think you are getting such good advice :( And I don't think you should wait for another mail from them. The next step might be a UDRP, that you could lose by default if you don't present an adequate defense. You should address their claims, and decide if they have merit or not.

Just because you did not find an exact match for the TM, doesn't mean they don't have TM rights. Their TM does not even have to be registered.
It depends on the circumstances and many things, like how you have been using the domain. For example, if it's been parked and showing ads for their competitors, you could be violating their TM without knowing it. But your are still ultimately responsible as the domain holder.

So what are their assertions ?

You're right, there is some really terrible advice in this thread.
----For Op-----
There are, however, some decent questions that have been asked that you need to consider. As usual, advice in general is difficult to give without knowing the actual details

How long have you owned the domain?
How strong is the mark? (The fact that you've not heard of them actually refutes bad faith.) How much reach does it have?
What is their first use in commerce?
How generic/applicable is the domain name to be put to other uses not infringing?
What have you done with the domain? (Does it infringe directly? i.e. through ads)
Most importantly, do you actually have a legitimate interest in the name?

If you respond you should respond with minimal details and no bullshit.

Don't talk about your research into their TM, don't make an offer for sale, and don't do the "It's cheaper at $1200 than filing a UDRP" thing. I suggest that domainers are unethical and get slapped down by everyone taking offence and then people suggest basically manipulating the system a little. Don't talk about Reverse Hijacking (they may legitimately feel that they have a real interest) and just is aggravating people that are already not thrilled with things.

Finally, factor in the reality that a strong Trademark can drastically reduce and diminish the value of your name as that's baggage that any future buyer has to overcome or be wary of. You should disclose this warning on future sales.

After answering all the questions above you may feel there are no UDRP issues.

"I registered the domain in 2005 for my own use. Thankyou for your communication".

It lets them know you are alive. It lets them know you will respond and gives them no leverage.

If you have no legitimate interest in the name don't bother making one up. Panels have seen through that before. If you claim legitimate interest you would have supporting evidence and your one page lander and a couple of forum posts mean nothing.
 
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Even though the name was registered before the tm, nobody can say if this is reverse hijacking or if they have a valid case without access to all the details.

When did they start using the name in commerce?
Did he at any time after the tm was registered have ads on the domain for that company or competitors? That could be used to argue bad faith.

At any rate, if defending the registration is going to involve legal fees and the registrant doesn't have those resources, it becomes an issue of taking the best option from a practical standpoint.
 
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Just so you get a better idea of THEIR position, they'd need at least $1,500 and likely $3,000+ to start a UDRP and without any kind of warranties that they will win the domain.
 
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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.

So you are basically suggesting he gives in to extortion? And in the meanwhile, begs them to pay him something, admits wrongdoing?
 
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I own a domain registered in 2005

Let me share my opinion with you.

The domain might have been registered in 2005, but have YOU had ownership and possession of it since 2005?

Yes, this matters. If you just acquired the domain name, then you can not stand on the registration date as a defense against their claims.

This is actually very easy to resolve.

If you are in another country and there are no trademarks in your jurisdiction pertaining to this domain, then make use of it immediately. If it is parked, remove it from parking immediately! Set up some eMail services and go participate in some forum discussions, create yourself a business card in photoshop etc...

There has to be a reasonable expectation that you have never heard of their business, and that their mark does not rise to the level of 'being famous'.

Also, avoid as much confusion as you can, and show as much good faith as you can.

Reply to their letter and tell them you have interests in the name, and that you weren't aware of their business, and that you would be happy to consider putting an above-the-fold link to their service to avoid any potentially unintended confusion.

You don't have to, but not responding and not trying to avoid confusion has been seen as 'bad faith' during a UDRP if there is an existing trademark.

The most important thing is to just let them make offers until their offer is well above registration costs and expenses. With a TM in play, I wouldn't even suggest a price, and would let them just keep making offers.

Good luck.

*I am not a lawyer, just knowledgable in the UDRP process. This is my personal opinion, and not intended to be legal counsel.
 
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I am not an expert, but have been already in UDRP decision because of Italian Phrase I thought it was generic and registered domains exclusively according to search volume. I didnt have a lawyer, but wrote a strong reply and prove them in my reply that their TM is not that famous as they think in my country and did a case study in addition with the help of Google keyword Tool.. So actually you can reply even without a lawyer and free of charge. This Italian insurance company in mediation process actually drop off the UDRP case (500 USD fee only) and paid for a domain :)
 
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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.
 
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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?


Just forget their warnings. Do not even respond unless they come up with an offer.

Even if they sent a mail with a request for price quote - please do not quote any price.

Just say - "I am not interested in selling the domain and want to build a website. But, I will think about selling only ......" like that.

Some companies try all sorts of tricks to capture it. Don't worry...you have a strong case.
 
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Now that you are aware of a TM on the name, you should disclose this to any potential future buyer as
UDRP decisions view a sale as a "new reg" which puts buyer at risk for "bad faith reg" unless it is used asap for any other purpose not covered in the TM.
If you have owned it since 2005 and not used it for similar or confusingly similar purposes of the TM, and had no reasonable knowledge of the company and it's products in question, there cannot be a finding of bad faith and that effectively kills the UDRP. If you do get a UDRP, RESPOND especially if you are confident that you have never had anything on the site that infringes which equates to the company not having any evidence to prove their claim. Also, request a finding of reverse hijacking. Then file a federal case for reverse hijacking to recover your costs+. Don't ignore it unless the value of the name to you is less than the cost to defend in money and time.

This is my personal opinion and research, and not intended to be legal counsel.
Cheers
 
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Whether you can profit from this depends a lot on factors no-one here is privy to - such as the name, strength of mark, persons involved. etc etc etc, as outlined before

That's true of many questions asked here, since people like to believe that simple questions always have simple answers.

168's comments above are generally correct.

The question can be much broader than "when was the domain name registered" compared to "when was the trademark registered". While sometimes the situation is that simple, there can be additional facts which change the picture, and most of the discussions here at NP reflect an extremely simplistic view of trademark registration as the be-all and end-all of whether and when someone may have had a trademark claim. In the US and many other common law jurisdictions, a company can go for YEARS using a trademark, and having perfectly enforceable trademark rights before ever getting around to registering the trademark. If there is one thing I would like to pound into people's heads, it would be that.

Completely unanswered here is how long has the OP had the domain name, as opposed to how long the domain name has been registered. It's not clear to me that the OP's registration and use of the domain name pre-dates the mark.

Another thing absent from the facts here is what has the domain name been doing? Has it been doing the same thing the entire time?

There are situations where a UDRP panel will have no problem transferring a domain name on these facts:

1. Bob registers the domain name dogfood.tld in 2010. The domain is put on PPC, and the ads are for dog food.

2. Charlie starts a shoe company in 2012 and calls his shoes "Dog Food" brand shoes. He develops trademark rights and the shoes are wildly successful.

3. By 2014, the PPC results on the dogfood.tld start coming up with shoe advertisements.

4. In 2015, the renewal payment rolls around, and Bob renews the domain name. The PPC page continues to show shoe advertisements.

5. In 2016, Charlie files a UDRP against Bob.

On those facts, there are a good number of UDRP panelists who will transfer the domain name. While it is not a favored approach, they will argue that the 2015 renewal was a "new registration" of the domain name done in bad faith, because the domain name was at that time monetizing in relation to shoes, and not dog food.

That said, it is often the situation that the simple answer is the correct one, but belief in simple answers as if they are correct answers in all instances, can be hazardous.
 
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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.
 
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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.
 
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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.
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.
 
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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?

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.
 
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One problem I see is that UDRP's don't always follow common sense. I'm no expert at all, but that is what I gather from hearing some others on the subject.

Sometimes trademark filing is not the only issue. Like someone above asked, were they using this name to do business (without a TM) prior to 2005? You don't need to have a trademark to file a successful UDRP.

Have they even threatened legal action and/or UDRP? Or are they just trying to get you to give it to them through their own arguments alone now?

Also: think about what this domain may be worth to you or an expected buyer. Unless you want to take a stand on principle, maybe this fight is not worth it..

In the end, here is what you should do:
  1. Find out what hotel they are staying in.
  2. Dress up as a maid.
  3. Go get their laundry.
  4. Bring it down to the laundry room.
  5. Do their laundry in dirty Flint water.
  6. Give it back to them with a mint that is past its expiration date.
 
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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.
No, I don't think you are getting such good advice :( And I don't think you should wait for another mail from them. The next step might be a UDRP, that you could lose by default if you don't present an adequate defense. You should address their claims, and decide if they have merit or not.

Just because you did not find an exact match for the TM, doesn't mean they don't have TM rights. Their TM does not even have to be registered.
It depends on the circumstances and many things, like how you have been using the domain. For example, if it's been parked and showing ads for their competitors, you could be violating their TM without knowing it. But your are still ultimately responsible as the domain holder.

So what are their assertions ?
 
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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).
 
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Just in case do all the mails screenshots and keep them.
 
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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?

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.
 
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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?

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.
 
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