question Need Help Regarding WIPO domain Dispute

[primenames]

A few days ago I received an email from WIPO regarding one of the domains I own, The mail said that so and so company has the trademark for the domain and they reached out to WIPO for the same.

Few Key Points are:

I registered the domain on 9th of April,2023
The mail arrived on 27th of April, 2023

I did not use the domain to show any ads of I just added it a dan lander and that's all, (I didn't know about the trademark and all till then).

Now, I am NOT IN love with that domain and if that domain and it will not affect me if it is gone, However I do not know if there is any other thing I should be worried about.

The reply and all costs a lot and the domain is not worth it ( I was not going to renew it next year anyway).

Has anyone else dealt with a situation like this? Is there anything I need to do? Any Suggestions are welcomed.

Thank you so much for your help.

 

[bmugford]

A few days ago I received an email from WIPO regarding one of the domains I own, The mail said that so and so company has the trademark for the domain and they the details and everything.

Few Key Points are:

I registered the domain on 9th of April,2023
The mail arrived on 27th of April, 2023

I did not use the domain to show any ads of I just added it a dan lander and that's all, (I didn't know about the trademark and all till then).

Now, I am NOT IN love with that domain and if that domain and it will not affect me if it is gone, However I do not know if there is any other thing I should be worried about.

The reply and all costs a lot and the domain is not worth it ( I was not going to renew it next year anyway).

Has anyone else dealt with a situation like this? Is there anything I need to do? Any Suggestions are welcomed.

Thank you so much for your help.

There are not enough details to look at the merits, but in general -

As a respondent, you can file a response for free.

The costs associated with a defense would be related to lawyer fees and/or requesting a (3) member panel.

If you were not planning on renewing the domain anyway, it is obviously of low value to you.

You might be better off just offering to transfer the domain. This is how many disputes are resolved, before even going to a panel.

Brad

 

[evil]

Everything is a trademark so every registered domain today can receive a WIPO.
It happens if you are a domainer. I don't go looking for trademarks but avoiding them completely is impossible.
So my strategy is don't care about it, do not answer and let go off the domain.

 

[bmugford]

Everything is a trademark so every registered domain today can receive a WIPO.
It happens if you are a domainer. I don't go looking for trademarks but avoiding them completely is impossible.
So my strategy is don't care about it, do not answer and let go off the domain.

Not answering is the worst option IMO.

I would say either defend the domain, or offer to transfer it.

If you don't file a response, your odds of losing are far higher.

The complainant has already made a prima facie case.

It is not ideal to lose a UDRP.

There is no penalty, but it could be used against you in the future to show a pattern.

Brad

 

[primenames]

Everything is a trademark so every registered domain today can receive a WIPO.
It happens if you are a domainer. I don't go looking for trademarks but avoiding them completely is impossible.
So my strategy is don't care about it, do not answer and let go off the domain.

Thanks Bmugford and evil for the help , I plan on just ignoring it, I do not care about the domain, they can take it.
I do try not to buy any domains with any trademark as they are hard to sell, this one was not that obvious trademark.

I am worried about the other domain registered using the same registrar and the same whois address, will there be any problem with those? Do I need to transfer them to different registrar or the different account within the registrar.

I would have offered the domain if they had asked first but the registrar has locked the domain.

 

[evil]

Do I need to transfer them to different registrar or the different account within the registrar.

Why?
WIPO is not so common unless you work with typos on trademark names.
I received (and lost) two WIPOs on XX.XXX domains registered so it's no so frequent.

 

[primenames]

Why?
WIPO is not so common unless you work with typos on trademark names.
I received (and lost) two WIPOs on XX.XXX domains registered so it's no so frequent.

So the only loss is the domain here right?

Thanks for letting me know that Evil, I try my best to not get involved in trademarked names, however one cannot remember the whole list to avoid, I have no interest in that specific domain which is involved in this matter, but because there is very less information available on the internet, I was worried and confused about the whole thing.

Thanks for clearing that up.

 

[bmugford]

I would have offered the domain if they had asked first but the registrar has locked the domain.

It is just locked as part of the process.

Many disputes are resolved via settlement agreement (aka transfer) and the dispute is withdrawn.

If it was filed at WIPO, the respondent might also be entitled to a partial refund. So in many/most cases the other party would prefer to settle it.

https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en

Settlement or Other Grounds for Termination​

(a) If, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding. A settlement shall follow steps 17(a)(i) – 17(a)(vii):

(i) The Parties provide written notice of a request to suspend the proceedings because the parties are discussing settlement to the Provider.
(ii) The Provider acknowledges receipt of the request for suspension and informs the Registrar of the suspension request and the expected duration of the suspension.
(iii) The Parties reach a settlement and provide a standard settlement form to the Provider further to the Provider's supplemental rules and settlement form. The standard settlement form is not intended to be an agreement itself, but only to summarize the essential terms of the Parties' separate settlement agreement. The Provider shall not disclose the completed standard settlement form to any third party.
(iv) The Provider shall confirm to the Registrar, copying the Parties, the outcome of the settlement as it relates to actions that need to be taken by the Registrar.
(v) Upon receiving notice from the Provider further to 17(a)(iv), the Registrar shall remove the Lock within two (2) business days.
(vi) The Complainant shall confirm to the Provider that the settlement as it relates to the domain name(s) has been implemented further to the Provider's supplemental rules.
(vii) The Provider will dismiss the proceedings without prejudice unless otherwise stipulated in the settlement.

 

[primenames]

All the have is the email that I have been getting, I should reply to the email and offer them the domain? As it is not of any use to me.
Will that be OK?

 

[bmugford]

All the have is the email that I have been getting, I should reply to the email and offer them the domain? As it is not of any use to me.
Will that be OK?

(THIS IS NOT LEGAL ADVICE.)

So there are really (3) options.

The first one is to respond with a defense. You seem to have ruled that one out.

The other two options are basically don't respond, and likely lose the UDRP or contact the complainant and offer to transfer the domain to settle the dispute.

I can't tell you what you should do, but if I was in a situation where I did not feel strongly about the domain and/or my claim I would probably contact the complainant and attempt to settle it.

There is really no upside to doing nothing and losing a UDRP without a response.

Brad

 

[primenames]

Thanks a lot for your valuable advice, I did reply to that email and mentioned that I want to transfer the domain to them, Let's see what happens.

 

[VadimK]

I had a case exactly like this (and also with a name not important to me), but I disregarded the ''cease and desist'' letter from a US lawyer completely because I believed the company claimed the name had no ground. Their trademarked name was one letter different from mine (and when I bought mine, I had no idea that something similar was registered, that was not a goal to profit from the misspelled name, was not a ''bad faith'', however of course they claimed otherwise). Bottom line - nothing happened at all, they wrote two letters then shut up. 8 months later I let that name expire. Also do not consider it a legal advice, it's just my story.

I definitely advise you to check the name here: https://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4807:vdm27g.1.1

If the name is on it or you simply believe they are right and you don't want hussle - give up the domain. Otherwise - fight. )

 

[jberryhill]

I did reply to that email and mentioned that I want to transfer the domain to them

There's a procedure for that. If you received a Notice of Commencement of the dispute, then WIPO should have included a form for opting for the procedure in UDRP Rule 17. If they didn't, you can ask for that when you send your email.

Most of the time, the other side will simply ignore your request to transfer the domain name. Sometimes, you have a junior associate who is more interested in getting a "win" in some no-brainer case than in actually getting their client the domain name. So, among the things you want to point out is that:

If the Complainant agrees to use Rule 17 to terminate the case, then the domain name will be transferred sooner and the Complainant will be entitled to a refund of $1000 of the fees paid to WIPO.

Some lawyers will find that more enticing since they won't tell their client about the $1000 refund.

 

[jberryhill]

Oh, and...

So the only loss is the domain here right?

No, your reputation is also on the line here. If you get a decision against you on a name you shouldn't have had in the first place, then that decision is also going to be cited against you when you have a more defensible case, and it is going to weaken your defense.

 

[jberryhill]

Incidentally, for those playing along at home:

https://www.wipo.int/amc/en/domains/casesx/all.html

There were about six cases commenced on April 27. Of those, there are two for which one might register the domain name without knowing about the trademark. However, one of those - dentless.com - was being used by a business competing with the mark owner.

 

[primenames]

Just Updating that, I did write them an email offering the domain, the case was suspended, I gave the domain (It was not important to me).