I've recently received a notice from a company

[tim ericsson]

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.

 

[john888]

If they have proof that he has infringed on their trademark, couldn't he sell and transfer the name to a friend. Friend then immediately puts up a coming soon business web page. Soon after site is now full of Amazon widgets selling products that are not related to company's trademark. Any time you get am email making a claim on your domain name, don't expect an easy sales transaction. Expect a domain name theft.

 

[mattG]

That company sh*t smells worst than all sh*ts put together in the whole world!! My zero cent opinion.

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.

Agreed. Treat their notice as spam and ignore it. IF they're motivated, you'll hear from them again (unlikely). This would be a very costly, uphill battle for them.

 

[mattG]

If they have proof that he has infringed on their trademark, couldn't he sell and transfer the name to a friend. Friend then immediately puts up a coming soon business web page. Soon after site is now full of Amazon widgets selling products that are not related to company's trademark. Any time you get am email making a claim on your domain name, don't expect an easy sales transaction. Expect a domain name theft.

Doing this would be a trademark violation. Best bet is to sit tight.

 

[Optimal Names]

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.

And refer them to this site:
http://www.hallofshame.com/

 

[DU]

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.

 

[tim ericsson]

Thanks to all, I will update here if receive any other mail/message from them.

 

[premkumar]

Tim don't reply to them and don't offer any sale or intent to sell. Most probably a german company don't spend time to file case in US. If they do, their expenses will be 5X to 10x times higher for them. Also Germnn domain is not .COM and its .DE, just avoid them until you get anything from court.

 

[ZapNano]

Tim don't reply to them and don't offer any sale or intent to sell. Most probably a german company don't spend time to file case in US. If they do, their expenses will be 5X to 10x times higher for them. Also Germnn domain is not .COM and its .DE, just avoid them until you get anything from court.

For 7-10years they have been avoiding trademarks; now they want trademark? if I was a trademark co. I would have charged them 7X current fee + accrude interest + penalty.

 

[Shams]

Well at this point there's nothing more to say. many good domainers like @Nat Hunt @ZapNano @Kate and @enlytend already told you the circumstances of both good and bad results.
I can only suggest make a stand. Don't let them feel your fear. reply them in a decent but hard wording and see what they reply. if they already offered you. reply them that you are not interested in selling this domain and you have registered this domain long before their trademark.

if I were in your place and unless I'm not afraid of losing the domain name.I would reply them in such manner as they approached me. Filing a UDRP cost I think is around $2400 - $2500. No company will file it unless you demand more than that. You should reply them. I'm sure they will offer you. Let us know and you will get more good opinions by experts here on NP.

 

[ZapNano]

If they have proof that he has infringed on their trademark, couldn't he sell and transfer the name to a friend. Friend then immediately puts up a coming soon business web page. Soon after site is now full of Amazon widgets selling products that are not related to company's trademark. Any time you get am email making a claim on your domain name, don't expect an easy sales transaction. Expect a domain name theft.

That is the whole point; they have not proved jack that he did something such thing to this big ass co. This company wants free ride all the way to hell! Analyzed of his bahavoir pattern; first he didn't registered this most important piece for his company; for freaking years.Now he is trying to send harassing email to someone. Hoping to get more free ass shit ride. Now "Cocaseco" wants him to get more free ass ride!! We have all kinds of opinions and thoughts here. So Cocaseco choose to dislike my opinion and thoughts. You can do all you want; the key word here you don't take free for everything; you need to earn. Also, this is not a workplace; that when some controlling management ass tells you if you are not happy here, why are you still here? And then they fired you. Allowing him to voice his opinion it's the right thing to do; regardless of what the outcome of the situation. It does not have to be mean and monetary approach.. At least he has voice his opinions. Don't just scared and discouraged him; using the trademarks and UDRP words. Don't just find him guilty and discourage, using negative thoughts and opinions that can lead to being unreasonable approach from you. My no sense does not smell; the synoname I can smell you a mile away. Sure you're right.

 

[168]

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

 

[elevator]

"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.
.

Who is infringed on who. Someone registered a name since 2005, they are coming in 2012 - 2015. I f that is how to file udrp, no one will have a legit domain on net. Because every jake and hary and harriress would just go and file udrp if they are intrested in one or other domains to catch any domain of their choice.

I forsee money coming to you rather than costing you your domain or problem. This same thing usually happens to many domain gurus and at the end it resulted in huge money into their bank account.

Cheers and good luck.

 

[DU]

Who is infringed on who.

You can't infringe on a domain name but you can infringe on a trademark.

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.

 

[imc]

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

First, determine - How valuable is the domain to you? If your domain is worth tens of thousands, then, based on the valuation you KNOW it has, file a TM for your domain yourself by setting up a business plan. A TM does not have exclusivity unless your domain knowingly infringes on the opposing party's business interests.

If you can afford it, hire a lawyer. There are a few as members in NP.

Do what it takes.

 

[denalimt]

For my opinion, if you are not german resident and your domains makes no business in germany, the story ends there. and also it must be considered that trade marks live in business classes. A mark can be protected only in certain classes. So if you own a mark in a certain class, you cannot claim rights in another class (of business types). Therefore i would not care

 

[Domain Galleria]

I can't stop laughing. If that is how trademark works, I will simply look for domain names that could fetch me around $10,000,000.00 and get them trademarked as soon as possible and thereafter threaten current owners with litigations and once they cowardly relinquish their precious domains to me, I put them up for sale.

Never allow yourself to be intimidated by anyone. I suspect they are interested in buying your domain but don't want to pay good money

 

[forge]

Filing a UDRP cost I think is around $2400 - $2500. No company will file it unless you demand more than that. You should reply them. I'm sure they will offer you.

That is simply not true. I was given notice and never mentioned a price. UDRP was filed because they were ready to play hardball from the get-go. You need to know who you're dealing with and go from there.

Gobs of horrible advice on this thread. DU shed some light on that.

 

[apapu]

@tim ericsson,
As I Know.
Its not a problem if nationality trademarked.
Its a Problem if International Trademarked.

If you have Mcdonalds.com of course its a trouble.
But if you have berkahbestari.com (a company in my country), its not a problem

 

[cocaseco]

Its a Problem if International Trademarked.

To the best of my knowledge there is no such thing as an International TM. A company like McDonalds simply registers their name in every country they want protection in. You can use the "Madrid" system which allows you to file one application for multiple countries, but in the end it is still a series of individual registrations.

 

[jberryhill]

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.