Lanham Act

[MadAboutDomains]

Hello,

I have a domain, I offered it to a company for them to buy without knowing that they had a trademark on the term.

They have proof of my email to them and that I had the domain name parked.

Their trademark for the term which was filed just a few days prior to the original registration of my domain.

My domain registration predates the companies "new registration" trademark in Europe which has been filed a year after my domain registration.

Their lawyers have come back saying that they can use the following "remedies" to get the domain off me:-

• UDRP - Transfer of the domain
• Lanham Act - Up to $100,000 fine and damages

If they win the UDRP, will it cost ME money?
--- and ---
Can they actually 'do' me for up to $100,000 using the "Lanham Act"?

- Luke :td:

 

[IAmAllanShore]

Moved to legal issues so there can be a limited amount of increased candor.

But in short, yeah.

And I'm being blunt: Did you really just happen to register a domain a few days after a TM filing and really just happen to offer it to this same company without knowing they had a TM? Must say: far-fetched.

Yet again, just being blunt.

-Allan

 

[MadAboutDomains]

I didn't originally register the domain you see, I bought it in a TDNAM auction for about $100 so the domain was already a year old when I got hold of it. At the time that I got hold of the domain there was no European Trademark, and the patent office says that their trademark isn't even officially registered yet because it's a "new registration".

 

[Ronald Regging]

It doesn't have to be officially registered, they just have to show that they were using it in commerce before you obtained the domain.

 

[MadAboutDomains]

Well I've emailed them saying that I dont think its unreasonable for them to reimburse the money that I spent to get the domain in the first place.

But they haven't replied so I don't know whare to turn next!

 

[AdoptableDomains]

If they win the UDRP, will it cost ME money?
--- and ---
Can they actually 'do' me for up to $100,000 using the "Lanham Act"?

- Luke :td:

If they file a UDRP, you can either file a counterclaim/answer to try to keep it or just let them win by default. Their filing will cost over $1000. You can file an answer for no charge if you have the ability, or hire a lawyer to do it at some cost.

The answer to the second question is Yes. Either if they want to or want to make an example of you. Any lawsuit however will costs them money to file.

I think they have a pretty good case. Ignorance is not a valid excuse in either case. However, if you explain your "error" and nicely ask for them to reimburse your actual cost. If they want a quick resolution, it will be cheaper for them than filing any case. If they just want to do so on principal, you don't have much choice. If you ask more than your costs, they may turn it into a principal issue.

Best of luck.

 

[DNQuest.com]

Well I've emailed them saying that I dont think its unreasonable for them to reimburse the money that I spent to get the domain in the first place.

I am sure they think it is unfair that cybersquatters run rampant and they have to spend all this money protecting their mark....

Next time, do your research, and if you knew of the TM before you bought the domian, then that's too bad for you.

 

[MadAboutDomains]

Ive just asked for $100 to cover the costs that I have incurred, Registration, Auction and my time.

I would rather just settle it out of court than have to deal with any UDRP thing or actual Court, it's not worth that much to me it was just a random registration.

Surely they would go for the UDRP option if anything... would this cost me any money in having to pay their fees when they win or is that just what they have to pay to use the system, win or lose?

They haven't replied to any of my emails regarding reimbursing my costs. They said in their letter that If I don't reply to them with the slip/letter that they sent me post then they may take legal action to protect their mark... I just want to get this sorted but how can I if they don't reply to my emails?

Sadly, I don't have any money to lose if I register a domain and I dont want to give the name up because I want to develop it but I am willing if push comes to shove. I only contacted them as an experiment for one of my hard to develop names. I obviously contacted the wrong people!

My family say that I should just leave it now, If they're not going to reply... I don't know what to do!! I just don't want to dig myself in to a deep hole!

Help

 

[AdoptableDomains]

Ive just asked for $100 to cover the costs that I have incurred, Registration, Auction and my time.

I would rather just settle it out of court than have to deal with any UDRP thing or actual Court, it's not worth that much to me it was just a random registration.

Surely they would go for the UDRP option if anything... would this cost me any money in having to pay their fees when they win or is that just what they have to pay to use the system, win or lose?

Most likely, they would try to settle without paying about $1200 to file a UDRP. It would cost you nothing if they did and decided to let them win by default an not entering a response. However, the UDRP win with your name would exist in the database for others to use against you later. Better to settle for costs before they file, or even without costs if they agree not to file.

I had one UDRP filed against me by a University on a three letter domain. I filed a response claiming referse domain name hijacking which would have made them look bad. Their attorney called me and I agreed to sell for $250 if they would revoke the filing before it was heard. I saved getting a UDRP public record and actually probably made $50 or so on my domain (not counting the 30 or so hours it took to write and reserch a response). They saved probably another $1000 in attorneys fees to file answers to my response and not take the chance of a reverse hijacking record. Basically we both came out better than proceeding and I made sure their attorney knew this.

Unless you've made a bunch of money, pissed them off, or they know you have deep pockets, they probably wouldn't sue for damages if their ploy is just to get the domain.

 

[DNQuest.com]

Ive just asked for $100 to cover the costs that I have incurred, Registration, Auction and my time.

I would rather just settle it out of court than have to deal with any UDRP thing or actual Court, it's not worth that much to me it was just a random registration.

Surely they would go for the UDRP option if anything... would this cost me any money in having to pay their fees when they win or is that just what they have to pay to use the system, win or lose?

They haven't replied to any of my emails regarding reimbursing my costs. They said in their letter that If I don't reply to them with the slip/letter that they sent me post then they may take legal action to protect their mark... I just want to get this sorted but how can I if they don't reply to my emails?

Sadly, I don't have any money to lose if I register a domain and I dont want to give the name up because I want to develop it but I am willing if push comes to shove. I only contacted them as an experiment for one of my hard to develop names. I obviously contacted the wrong people!

My family say that I should just leave it now, If they're not going to reply... I don't know what to do!! I just don't want to dig myself in to a deep hole!

Help

To easily solve your problems is to not register TMed names. I am sorry to sound cold on this issue,but cybersquatting laws are pretty well laid out and domainers seeing $$$$ thinking the TMed domain they registered will put them on easy street. It has been said any times before, it is risk vs. reward. If you don't want teh hassle, then stay away from TMed domains.

As far as losing out, if they goto UDRP, then they are just looking for the domain and would just leave you alone after they win, but... this does not legally mean you are done, you are still liable for registering the domain name
and teh TM holder can come after you to recover costs, lost revenue possibly invoke the Lanhan Act.

 

[MadAboutDomains]

I appreciate your comments, I certainly agree with you that it is about being Cold, as this is what the law is like... and especially as it seems that I am in the wrong.

The original domain registration was not done in bad faith, however I accept that my actions since then are that of a bad faith registration. The fact that it is getting revoked by a company with a right to the domain is no particular surprise as I realised the risks when I offered it to them, but luckely it's a domain that is practically impossible for me to develop without some real money to pour in to a project so I offered it to a company instead... as you say its a risk vs. reward situation and at least its a domain that isn't worth all that much to me.

I shall just hand the domain over as it is not worth anything to me really, I may as well just get it over and done with and get on with my life and steer clear of TM'd domains in the future.

Another valuable lesson, learnt!

Cheers,

- Luke