NameSilo

Lawsuit is coming! What are the possibilities?

Labeled as opinion in Legal Discussion, started by Heisenberg.d, May 19, 2021

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  1. Heisenberg.d

    Heisenberg.d Established Member

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    So here is a domain I own ( Bought few months back from GoDaddy AUCTION),

    let's say it CompanyAv.com. (Both "company" and "AV" are keywords for reference purpose) First registered in 2000 and I'm only the second owner (from JAN'21).

    Just last week I reached to a company that operates in domain 'Company.co', started in 2017, a well-funded billion-dollar AV- lets say Antivirus company, for selling the domain along with few other leads.

    Today itself a company lawyer approached me saying that I have no right to own this domain since his client operates that business and my intent is bad. and they are proceeding with further steps.

    "Company" is a very generic keyword also the term "AV" ( Anti Virus, Audio Visual, Automated vehical etc.. ) means a lot many things. A company that used to own that name was in -- let's say: audiovisual business,

    Now my intent: obviously to earn profit from the name, but are they going to prove it ??
    Since I am a legitimate owner of the name I have the right to sell the name at whatever price I want and to whomever, It's not even a trademark name, but the only thing going opposite to me is that I reached to them to sell the name first.

    * The name has other leads as well which also operates in "AV" related business.
     
    Last edited: May 19, 2021
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  2. gilescoley

    gilescoley Top Member PRO VIP ★★★★★★★★★★

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    I assume you have checked if their company name is trademarked

    https://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4809:7kwy94.1.1

    The fact that its a generic keyword means nothing, its all about bad faith and usage when it comes to domain trademarks.

    Apple, Orange and Caterpillar are all generic terms but are trademarked in their relevant industries.
     
  3. Heisenberg.d

    Heisenberg.d Established Member

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    "Company" is trademarked not "compnayav" ,

    Now if I own AppleAV.com which can mean "Apple Automated Cars" from apple's perspective, but from me, it can be "Apple Air vent" or "apple antique vodka", and I invested in this name to sell it to relevant businesses in future. How are they going to prove bad intent?
     
    Last edited: May 19, 2021
  4. gilescoley

    gilescoley Top Member PRO VIP ★★★★★★★★★★

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    If its in a different industry, you will be fine. For example, you cant register AppleComputers.com, AppleDevices.com, AppleSoftware.com, AppleiCloud.com, AppleiPads.com becasue they are all related to computing. ApplePlumbing.com would be fine. Just be careful who you approach and make sure its not TM holders for those terms.
     
  5. noneisnone

    noneisnone 444 VIP Gold Account

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  6. Heisenberg.d

    Heisenberg.d Established Member

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    But an acronym can't be fitted into a specific category? what you think?
     
  7. D Haynes

    D Haynes Top Contributor VIP

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    They'll prove it's bad intent from the fact you tried to sell it to them.
     
  8. gilescoley

    gilescoley Top Member PRO VIP ★★★★★★★★★★

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    Yes it can, the same as BMW, CNN, IBM, KFC, MSN etc

    Have a read through the legal section on Namepros, plenty of threads explaining this. Always check this stuff before approaching companies
     
  9. Shimmy

    Shimmy Established Member

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    You sending outbound emails is proof you against you. They most likely would win any lawsuits. However they may just be trying to scare you into giving it to them, and may not do anything if they don't really want it.
     
  10. johnn

    johnn WeSellName.com PRO VIP ★★★★★★★★★★

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    What would you do if you are the company and someone approached you and sell the name to you?
    If this is a billion dollar company then you have bigger problem.
    Buy and sell something else.
    I don't understand why people keep doing this to get themselves into problem.
     
  11. Revisiting

    Revisiting Established Member

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    Indeed, Adding two letters to a REGISTERED TM company name (That can be assumed to pertain to the nature of their business) is going to cause you headaches. Trying to play the innocent with the 'two letters can apply to any use' is Not going to wash. You probably could have held-on to the reg if you hadn't contacted them.
     
  12. Heisenberg.d

    Heisenberg.d Established Member

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    I pitched the same domain to 5 other companies in different industries, so if all 5 companies turned up a lawsuit who will get the domain? Are you saying outbound is a bad intent?

    Yes, I know but this alone isn't prove anything.


    it is like 550 different trademarks are registered in the USA alone on that name. A generic dictionary keyword. are you saying I have a right to claim HeisenbergD(dot)com because I sell domains and D probably means domains?
     
  13. johnn

    johnn WeSellName.com PRO VIP ★★★★★★★★★★

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    I pitched the same domain to 5 other companies in different industries, so if all 5 companies turned up a lawsuit who will get the domain? They don't really want to get the domain but they will get you

    Are you saying outbound is a bad intent? Yes

    Look like you know what you are doing so you don't need to ask us anything!
     
  14. Heisenberg.d

    Heisenberg.d Established Member

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    I have no problem letting my domain go if this happens, but my question stands still "Do I have the right to claim HeisenbergD(dot)com because I sell domains and D probably means domains?"
     
  15. johnn

    johnn WeSellName.com PRO VIP ★★★★★★★★★★

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    You may have the rights but they have the money to make your life miserable.
     
  16. johnn

    johnn WeSellName.com PRO VIP ★★★★★★★★★★

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    Also no one here will have the answers for you except the Lawyer.
     
  17. Shimmy

    Shimmy Established Member

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    It's okay to have a similar domain if you want to run a business on it. However you are currently the defintion of a cyber squatter. Cyber squatter defintion: the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit.

    You example does not take into account what your clear intent is.
     
  18. Samer

    Samer Top Contributor VIP

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    I disagree.
    They use .co
    They cant be that rich?
     
  19. johnn

    johnn WeSellName.com PRO VIP ★★★★★★★★★★

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    He said it's a Billion Dollar company
     
  20. noneisnone

    noneisnone 444 VIP Gold Account

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    Choose your battles broski ^^ if i was in your position i would wait for @jberryhill input and then make a decision on whether i want to dump money into a legal battle also i think this thread will hurt you if you choose to fight it
     
  21. EJS

    EJS DomainInvesting.com DomainInvesting.com PRO VIP ICA Member ★★★★★★★★★★

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    If I was in his position, I would reach out privately to an attorney and pay to get an expert legal opinion.

    John Berryhill earns a living by giving legal advice and guidance. It doesn't make sense for an investor to expect an attorney to spend time answering legal questions on a forum, to help their business, when it would mean putting paying clients on hold, harming his business.

    The advice to ask an experienced attorney (like John Berryhill) is wise. Expecting to get an answer to a nuanced legal question with scant details on a public forum is silly.
     
  22. noneisnone

    noneisnone 444 VIP Gold Account

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    @EJS i seen few threads were he was very helpful this is why i mentioned him it should at least give op an idea of what it would cost to fight it or if he even should try to fight it
     
  23. DirkS

    DirkS Dutchman.info VIP

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    We all know what he's gonna say, in short:

    "Without knowing the actual domain, speculating about what may or may not happen is a waste of time."

    And he's right at that.
     
    Last edited: May 19, 2021
  24. jhm

    jhm Glazed

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    @gilescoley is right. If the industry is different, very little grounds to sue

    A domain like "Company AV", don't really see the issue. However, I'm not a qualified lawyer - Talk to one, if its serious enough
     
    Last edited: May 19, 2021
  25. Future Sensors

    Future Sensors 78% of human domainers will be replaced by robots Gold Account

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    I didn't interpret @noneisnone 's posting like you did.

    @jberryhill often participates completely voluntarily in these types of threads. And when he does, he always gives a very comprehensive -general- insight into how things work. Always much appreciated.
     

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