Need help with response to legal threat on LLLL.com

[dag]

Yesterday, I picked up a dropping LLLL.com at Snapnames that is not a dictionary word and is not to my knowledge a commonly known abbreviation.

So today I received an offer of $100 at Afternic for it, from a person under a username that is a phrase that matches the acronym. I looked around on the Internet and found what I believe would be her site, sort of a motivational thing that uses both the phrase and the acronym scattered around, with a TM mark next to the acronym.

So figuring that this might be a good enduser situation, I "responded" to the offer in the Afternic fashion, by upping the "Asking Price" to $5000 and increasing the "minimum bid" to $500, with no other communication directly to the seller in any way.

I then got this response, again via Afternic's messaging interface:

A member sends the following message regarding a listing on Afternic.

--------------------> Begin message <---------------------

From: _______________
Regarding domain name: [????].com

I am the owner of the trademark [????] and would like for the domain name you are selling to be returned to me. I have placed a bid based on the selling price listed on the whois database.

I am prepared to take the necessary steps to dispute the domain if necessary.

--------------------> End message <---------------------

I looked it up and there is indeed a live trademark on the acronym, and I'll assume for a moment that this is indeed the trademark holder, not just someone trying to get a good deal on a good LLLL.

[By the way, if you think it's okay to go ahead and mention the specifics of this here, please let me know.]

I know that I actually am not in the wrong here, as I have nothing on the parked page that could in any way be construed as trying to cover this same person's territory, and I never came to her to try to sell it. Basically, I see nothing that could be construed against me as a "bad faith" registration. For all I know, she's the party who dropped it in the first place and now wants it back.

I was hoping that someone could give me some suggested text to respond to her with in a way that makes it clear how her threat wouldn't hold up.

However, if you think she does have a case, I'd of course be interested to hear that side as well...

EDIT: Ultimately, I wouldn't be crushed to give up the domain, but I did pay $145 for it and would like to at the very least get back the full amount I paid without it seeming that I'm responding in bad faith.


Thanks!

 

[Spade]

I will first acknowledge I am not a lawyer. However, I would say a couple things. The first is, any letters can be used to make up almost any possible acronym. In this particular case, you would only be infringing on their trademark, if your using their industry keywords. In this case, you would be profiting from their mark because this isn't a "generic" domain name.

Secondly, anyone who is serious about pursuing legal action to get a domain name back should already know, or come to find out the process is timely and expensive. This usually costs several thousand dollars, and is hardly a guarantee. Most cases its cheaper and faster to settle for somewhere in that neighborhood. I would counter at around $750 - which I would consider a reasonable cost for any half decent business..

Justin

 

[labrocca]

If it was me I would ignore the email and make damn sure that I don't use the domain in any way to infringe on the trademark.

If I did reply it would be something like this:

"Unfortunately because you own the trademark doesn't give you automatic rights to the domain. I will be using the domain outside the scope of your trademark and I will be creating my own usage mark that will not conflict with yours. I understand if you wish to pursue legal action but I advise you consider it carefully. I will certainly defend my ownership to the fullest extent I possibly can. I am well versed in internet and trademark law. I am confident I can keep this domain."

Or something like that.

 

[dag]

Well here's how I responded, along with dropping the asking price down to $750:

Thanks for your message. I'm sorry you felt the need to threaten legal action, but I purchased that domain completely legitimately. Additionally, I'm sure that you must be aware that an acronym can stand for many thousands of things, and trademarks are only infringed when there is a possibility of brand or product confusion. Hence the reason that Apple.org can operate alongside Apple.com and not have to worry about a lawsuit, despite Apple having a VERY strong trademark on the word.

I can see from your username what you must be using "[????]" for, and obviously, I haven't used the domain for anything like that -- in fact, I haven't used the domain at all yet except for the parked page that is currently there. I don't even know what your business is about. That said, I'm clearly open to selling the domain, otherwise I wouldn't have listed it on Afternic where you found it. And since I'm actually a very reasonable person (which you would have found out if you'd just approached me with your situation in a more friendly manner), I'm willing to substantially drop the asking price that I had posted. I'm sure you must realize how expensive legal proceedings would be -- I'm clearly willing for this to work out in a more amicable and less expensive manner. Thanks.

So what do you think? Should that get her off my case, or even better, get her to just buy the damn thing? Did I make any errors in how I handled it?

Thanks for your input, Spade and Labrocca...

 

[labrocca]

Good reply....right amount of strength vs willingness to work with her.

 

[Kate]

Without knowing the name it's difficult to give an authoritative answer.
You say it's a LLLL.com so it could be an acronym for many things unless it's distinctive. Also usage can tip the balance for example if it's parked and showing infringing ads.

Now the timing is interesting. You get contacted the day after the name dropped.
My gut feeling is that person does not know about dropcatching and thought they could just register it again upon deletion. Another case of negligence and naïveté.
As a result they could be overreaching with veiled threats.
Try to identify the person you are dealing with for example by direct exchange of E-mails and also check the past whois at domaintools to establish whether they actually represent the past owner. Their case could be moot but if they have a TM be careful, including with parking.

 

[italiandragon]

I already reported a good example on my Blog on how TMs , even fresh ones can get away domains very easily as soon as the current domain Registrant asks for money.

 

[dag]

I'm 99% certain this was the actual person, but in any case, the "dispute" has been resolved. I've sold it back to her for a small profit on my part, but not trying to wring every dollar out of her possible. She had originally registered it in 1999 and had apparently been negligent in renewing.

Maybe I'm being too nice, but I figure it's good karma -- can't hurt to give domainers a less negative image now and then.

 

[cheezecake]

I already reported a good example on my Blog on how TMs , even fresh ones can get away domains very easily as soon as the current domain Registrant asks for money.

Yeah but in this case the TM holder ofered money first so it is a little diffrent. In theory he would be going to have to "rebrand" his business if he sells the domain in question to the tm holder and since he isnt in a competing market then he wont (At least shouldnt)loose this domain

 

[Kate]

Well done. Let's hope she has learned a valuable lesson.

 

[Spade]

Dag,

Any response to your counter?

Justin

 

[dag]

Dag,

Any response to your counter?

Justin

Yes...as I mentioned above in post #8, things have now been settled. She came back not with a counteroffer but with a much more humble tone. She explained her situation a little more and asked if I'd be willing to let her get it back for the "$100" I paid for it. (She apparently thought that since I only had a minimum offer of $100 set on my Afternic listing -- which I simply hadn't bothered to change from the default -- that that was all I had paid for it myself, which wasn't true.)

I asked her if it had previously been hers, and I explained to her that in any case, people who think a domain "belongs" to them for whatever reason can't simply expect to get it from the current owner by just paying them whatever the current owner had paid for it. And I had paid more than she thought for it anyway, so I gave her a new price that allowed me to make a reasonably good 3-day profit (~33%) after also allowing for Afternic's $60 minimum fee.

She responded with:

"Yes, I was the original owner on May 16, 1999. I purchased the domain name from Network Solutions. Nonetheless, I appreciate you selling me back the domain and I agreed to pay the $XXX. Thank you, I am more than grateful."

I wrote back and told her that this time she should put it on autorenew!

"Thank you so much. I will set it on autopilot this time! Best wishes to you as well. Thanks again."

So a happy ending for her, I make a little profit, and we avoid annoying legal threats etc. And all I know is that I'd better not see that domain in the hands of anyone in this forum, or I will lose all faith in humanity!!! :lol:

 

[Dave_Z]

Good to see a happy ending, dag. That's one less person to worry about. :D

 

[DebX420]

I asked my uncle about this [hes a lawyer]

As long as the domain was registered before the phrase was trademarked, you are fine. Other than that, you will be looking at problems. I'm sure you can say you bought it though