Finteza

My domain is copyrighted and I was contacted. What next?

Labeled as question in Legal Discussion started by Conor McGregor, Nov 14, 2018.

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  1. Conor McGregor

    Conor McGregor Established Member

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    Hi
    I own a great domain name (a dot com) and put it for sale on my efty page.
    Now I was contacted by a company because they own the copyright to the name (1 word).
    I checked out the eu trade mark number and everything checks out as they claim.

    Here comes the million dollar question:
    am I obliged to just hand it over to them for free? I can't sell it to them or anyone else?

    Thank you for any info on this:)
     
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  2. Conor McGregor

    Conor McGregor Established Member

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    I was meaning to say they own the TRADEMARK instead of "copyright."
     
    Last edited: Nov 14, 2018
  3. alcy

    alcy Active Member VIP

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    you mean like a dictionary word?
     
  4. Conor McGregor

    Conor McGregor Established Member

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    It's a term for a specific game similar to the game Sudoku.
     
  5. Recons.Com

    Recons.Com Active Member VIP

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    is it a generic game like sudoku, chess etc. or is it a game that they created and named?
     
  6. dotbay

    dotbay BrandChimp.com VIP

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    If they got the TM after you registered the domain you are good. If not you might be in trouble especially if it is a made up word with a TM
     
  7. ecomslice

    ecomslice Established Member

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    not sure, but if I was determined to make a sale, id write a kind letter explaining that although a transfer to an off shore based registrar is easily done ( not sure if this makes sense or even works )
    Then I would in very polite words explain the costs of being active in the domain aftermarket, and that legal costs would far outweigh a polite business deal transaction between you both. then link a few articles of all the crazy lawsuits being won by domainers in the past year. there are a bunch. I do suggest to delist on all platforms in the meantime. good luck !
     
  8. Domains - Wanted

    Domains - Wanted Active Member VIP

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    You are not obliged to do anything. You can sit tight and ignore this communication. Or you can choose to react, respond in some way. And, sure, you can sell the domain to anyone who'd buy... then it becomes their problem :xf.wink:

    Sorry for being vague, but this is the best I can do given your vague post (you've mentioned you were contacted, but not what they wanted from you exactly... cease and desist? stop using the name? transfer to them? what?) (n)
     
    Last edited: Nov 15, 2018
  9. karmaco

    karmaco Active Member VIP

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    If the name was registered before the tm AND you don’t have it up on a page polluted with ads regarding their name or competing products you are good. If it’s up for sale with ads they could easily udrp you no matter when registered.
     
  10. Corey

    Corey ZAZU.com.au Gold Account VIP ★★★★★★★★★★

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    Firstly, remove it from your Efty page.

    Cheer
    Corey
     
  11. Ollie3000

    Ollie3000 Upgraded Member Gold Account VIP

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    This would be the main point. However I doubt they'd have been able to get TM on a generic game so it's probably something they created. But I think it might also depend where you are? If it's EU and your US does that even apply - I have no idea.
     
  12. Recons.Com

    Recons.Com Active Member VIP

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    Very often companies are able to secure TM for a specific use or even the way the word is written. And yes, it depends on the region as well.
     
  13. Chris Wright

    Chris Wright Just play along. It could be fun. VIP

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    If it's something like Mahjong, no one can TM that for a game.
    If it's like Scattergories that's a strong TM.
    Precisely!

    Monopoly is a generic English word.
    Yet, the toy co has a good TM on for board games ONLY.
     
  14. Conor McGregor

    Conor McGregor Established Member

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    Thank you all for your responses.
    I was asked to stop putting it up for sale today and took it off Efty and Afternic. And not use it in any manner that refers to the meaning of the word. Meaning I can sell shoes, etc. under that name.:)
    I am just wondering if I registered it before they got their trademark, I should actually be able to with it whatever I wanted, no? Meaning selling it or even using it under the exact content of the word?
    Guess I will have to do some serious research, because this domain does have some good value!
     
  15. Grilled

    Grilled MIA VIP

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    Did you check when they received their TM?

    Unless I am looking at the wrong domain, the domain registration date is Nov '15 < where as the EU trademark was registered in June '15.

    Thus, it appears what you are wondering, wouldn't apply.
     
    Last edited: Nov 15, 2018
  16. Recons.Com

    Recons.Com Active Member VIP

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    Even if you happen to have registered the name before the TM, unless you were already using the name in that niche or can provide a reliable proof that you were in the process of doing so, you'd still be violating the law.
     
  17. Domains - Wanted

    Domains - Wanted Active Member VIP

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    Asked by the TM owner not to offer the domain for sale? :xf.eek: Now, that's a new twist :sneaky:
    It's been discussed and explained here time and time again, but people still cling to this fantasy that the date of registration of a TM has any bearing on precedence :banghead:

    This aside, it's your asset to do with as you please, so long as you do not infringe on other people's rights, that is, in this case a TM. Offering a domain for sale does not infringe on a TM. That is unless you target the TM holder specifically - still not illegal or TM infringement, but stupid to do as it demonstrates bad faith. I'm surprised they asked you not to offer it for sale (although I'm beginning to suspect what their rationale is). Even more surprised that you've complied so quickly :ROFL:

    I mean, what's the point? Do you want to keep and develop the domain yourself? Or was your intention to sell it? If so, to what end take it off the market? :xf.wink:
    Not using the domain, offering it for sale only with no reference to the TM owner's product or service, what law would he be violating exactly, pray tell? (n)
     
    Last edited: Nov 16, 2018
  18. Grilled

    Grilled MIA VIP

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    FWIW: The TM was filed for in May 2013.
    Except in this case the Efty listing had an image resembling a game and text stating, "________ is an exciting logic-puzzle game similar to the famous Sudoku."

    The TM includes: "Games offered online on a computer network"

    Not sure how this applies here, but there doesn't appear to be a US trademark in place. This probably doesn't apply here as both parties appear to be from the EU, but would things differ if the domain registrant was from the US?

    I ask this because I assume when most US domainers check a TM prior to registering a domain, most usually only check the USPTO. Is this negligent? Should domainers be checking multiple TM databases? Is there a tool / site that checks TM's for multiple countries?
     
    Last edited: Nov 16, 2018
  19. Domains - Wanted

    Domains - Wanted Active Member VIP

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    Thanks for pointing this out. I stand corrected. Obviously, OP has shown poor judgement, opening himself to allegations of bad faith here. [/QUOTE]
     
  20. AdForceOne

    AdForceOne New Member

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    The cold and nasty truth is that any judge will force you to hand the domain over as soon as they ask. A trademark bars a lot of weight, and if you go to war there will be just one short and nasty battle.
     
  21. golan

    golan Leo.Domains Gold Account VIP

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    http://www.wipo.int/branddb/en/
     
  22. AdForceOne

    AdForceOne New Member

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    www(dot)boip(dot)int for Benelux (Holland, Belgium, Luxenburg)
     
  23. AdForceOne

    AdForceOne New Member

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    FYI: a trademark tends to be heavily defended by companies with deep pockets. Sun Tzu already said the best war to win is the one you can avoid. Best turn this drama around by offerig the name to them for a reasonable price, In that case, even if sh*t hits the fan, you have offered them the name at a reasonable price. That will make a Judge wonder why they spend thousands on a lawsuit whe the name could have been bought for less. Get my point?
     
  24. White Fang

    White Fang CustomerService.com Gold Account ★★★★★★★★★★

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    I have a somewhat similar situation but this involves a service mark a big US financial company is using as one of many taglines in their advertising. I registered this dotcom domain in 08; well before they service marked it. It has never been developed but is currently being offered for sale.

    The above conversations are somewhat confusing so can I get an answer as to the best thing to do to not get into any UDRP/ownership problems. Thanks.
     
  25. AGAME

    AGAME Active Member VIP

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    Similar here as well, and I presume we're not alone. I've got a handful of domains that are 14, 15 years or older and now have recent trademarks registered. I guess the smart thing to do would have been to oppose the trademark filing during the period when its permitted but I am not 100% sure that just owning a domain name with that trademark is ground for opposition to the trademark but I, too, would love to know if there is a difnitive answer and how to deal with these names we've got which others have trademarked / service marked, etc
     

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