opinion Lawsuit is coming! What are the possibilities?

[Heisenberg.d]

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.

 

[D Haynes]

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

 

[johnn]

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.

 

[johnn]

Why don't you just drop the name and get it over so you can sleep at night.
If you have no chance to win then why waiting for the fight?

Berryhill is my neighbor so if anyone who wants free service from him let me know. I can invite him to my house and get him drunk.

 

[gilescoley]

"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?

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.

 

[Future Sensors]

Expecting to get an answer to a nuanced legal question with scant details on a public forum is silly.

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.

 

[gilescoley]

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.

 

[EJS]

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

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.

 

[johnn]

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

 

[johnn]

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!

 

[branding]

@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

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.

 

[johnn]

Change the Who Is to your wife name and let she deal with it.
She will win.

 

[Shimmy]

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.

 

[johnn]

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

 

[noneisnone]

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

 

[EJS]

Well, the purpose of this post is to get inputs from fellow domainers of this page, based on their own experiences. I'm not yet in a legal battle but preparing the ground for my next step, and suggestions can be helpful.

The alarming title of your post, "Lawsuit is coming!", makes it sound like litigation is pending.

 

[comRaid]

Yeah! and I do the finest quality domains

My suggestion is Better Call Saul

 

[EJS]

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.

Right, and that's generous of him.

If a legal threat is pressing, I personally wouldn't wait for an answer on a forum that might never come.

 

[alcy]

Nobody here is advertising law services but common sense prevails I have deleted many names before expiry the thing is this... You actually did message them meaning even you see the similarity and motive which is far different to someone saying your companyav means aviation rather than audio video. You're outbounding and many domainers say only way but it isn't clever if setting yourself up for trouble. Out bound gets even more complicated with law requiring sign up forms if questioned about duplicate email etc.

yea many swear by outbound ..many say yer not even domaining proper unless u outbound... and I'm sure many have success...but unless u cover all yer bases...assuming that's even doable..then every email u send can literally be ticking bomb..potential of lawsuit..

 

[alcy]

I'm pretty skeptical that they are playing the "threatening game". Their position to prove the domain legally belongs to them isn't strong either. Otherwise they would have mailed me asking to release the domain or at least have offered me a few bucks to let it go.

I, who owns the domain can also be wealthy enough to fight and protect that name. How do they know? a

well maybe they just assume a.dude emailing companies to sell names is not really all that wealthy.

but..yer right..it could be a bluff.. or not... so the question becomes do u wanna find out or not

 

[gilescoley]

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

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

 

[Revisiting]

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

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.

 

[Samer]

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

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

 

[MapleDots]

Yes gonna make a 1-page site say: Company Aviation, with a coming soon tag before they file any lawsuit.

Personally I would just forward the domain to another website of yours because anything you do after the fact can be used against you.

So if you have a domain like PerfectPicture.com forward like this perfectpicture.com/?enter=companyaviation.com

Don't worry about the path it will forward anything after the ? is ignored but show up in the address bar. You can sub anything for the word enter but I like to use that word because it implies you are simply using the domain as a gateway. Make sure the site is totally unrelated and chances are they will not look at that as a threat.

If you try to disguise your domain and you have something like chicagovw.com and you say Chicago Versatile Wheels it is only an invitation to investigate further, ie does that company actually exist and use the domain in commerce.

I forward a lot of my domains to my online store so if you want to see an example of how you can use the string you can type in: follow.ca to see it in action.

You can also use it like this MyOtherDomain.com/?domain=CompanyAviation.com to prefill a for sale lander by naming the field "domain" it will be prefilled.

Many different things you can do but the main thing is not to incriminate yourself any further, set it and forget it and then at renewal decide if you want to keep or drop it.

 

[BradWilson]

So @Heisenberg.d I guess you really are Breaking Bad

 

[Heisenberg.d]

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.

"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?