Need some help

[twomoon]

Hey guys, need your help

I have a problem with one company that I contacted.
Let's say I have the domain Cow .tv. (my name is also the name of the animal)
I contacted several companies that are interested in this domain. One of them (dealing on cowtv . com replied me and told that their official name is Cow TV Ltd. and the word COW is trademarked. Not Cow TV but COW. They are British.
So they told me that they own the trademark and they "reserve the right to take action for any infringement of its rights".
After that they send me another email that they may consider the fair payment and asked me to tell them for how much did I purchase the domain.
I gently replied that I don't understand how they can TM a generic word and that I never violated their TM etc. My domain was never ever parked - just redirected to the Sedo Offer page.
And I told them that domain was purchased for low-mid xxx from the other person, plus I paid for the renew for 2 years.
Need to add that my first asking price were higher for 100 EUR from that price.

Now they are saying that they could pay for 1 year renewal fee.

My question: if they would start legal action, what should I worry about? If I would receive something from them (legal document) could I just agree and transfer the domain to them? Or could I have any other problems? I mean is it possible I would need to pay something?

I don't really need this domain name, but I don't want to give it to them for 2 pennies.

Thanks in advance, Nick

 

[Dave_Z]

I gently replied that I don't understand how they can TM a generic word

Apple is a generic word for the fruit, yet it's commercially known for electronics. If anything, that's a matter of context.

My question: if they would start legal action, what should I worry about? If I would receive something from them (legal document) could I just agree and transfer the domain to them? Or could I have any other problems? I mean is it possible I would need to pay something?

Well, you can worry about them filing an administrative action (i.e. Uniform Dispute Resolution Policy) or a lawsuit depending on specifics. If the other party is willing to settling the dispute via your transferring the domain name to them, then hopefully that should do it.

Ultimately, that depends on the other party -- and how far they're willing to go to make their point despite the costs.

 

[alien51]

I gently replied that I don't understand how they can TM a generic word

Check out these handy URL links:

Candy Crush trademarks "Candy"
http://mashable.com/2014/01/20/candy-crush-trademarked-candy/

Facebook trademarks "Face"
http://techcrunch.com/2010/11/23/patent-office-agrees-to-facebooks-face-trademark/

I mean is it possible I would need to pay something?

You have never inflicted any kind of financial damage to their business with your domain for them to ask for financial compensation and punitive costs.

The worst that could probably happen to you is you lose your domain and you getting nothing in return.

I don't really need this domain name, but I don't want to give it to them for 2 pennies.

The problem is, you initiated the contact by attempting to sell the domain to the trademark owner (not aware of the TM is not an excuse). Based on UDRPs i have read, you could lose if they filed a UDRP against you.

But UDRPs cost money to the trademark owner (not you, unless you pay a lawyer to defend you). You can probably try to haggle below the UDRP filing cost. For many companies though, a UDRP filing fee is just a disposable company expense that they won't mind wasting on. So if the case is very strong against you, you either gamble making a few more bucks trying to haggle with them, or they get fed up and pay the UDRP fee and you get nothing in return. Or you can just accept their payment terms to you and dispose that domain and move on with your life.

You can also just ignore them and wait and see if you have other buyers out there. But since you said you don't need the domain, i am presuming you are having a hard time finding a buyer.


Disclaimer: I am not a trademark attorney.

 

[Paul]

I'm a programmer, not a lawyer, but if I recall correctly, trademarks in the UK are based on first advertised date. The first time the trademark was advertised publicly is when they lay claim to it in their industry. Here's the UK IPO website, where you can search for trademarks, though it doesn't need to be registered for them to lay claim to it. Assuming their trademark has a solid legal standing--they are actively utilizing it in the relevant industries--you can't use the trademark in similar industries. Here's the class guide; once you find their trademark(s), match the class numbers to that guide, and you'll know what you need to avoid. Note that you don't necessarily need to be in the exact same class to infringe: you just need to be similar enough to possibly cause confusion.

Note also that UDRP is based on arbitration, and tends to be more in favor of the trademark holder than a court in the US or UK would be. While you might be in good legal standing, you could still theoretically lose your domain via UDRP. Good ways to lose your domain via UDRP while still having a good legal standing include:

• Contacting entities with names or trademarks similar to your domain and offering to sell it to them
• Putting a parking page on your domain instead of content that is obviously from a non-overlapping industry
• Displaying content that could be detrimental to the trademark holder's reputation, such as controversial, scam-like, or adult content

 

[verbster]

Contacting them with an offer to sell hurts your case. on the other hand, do they own similar "infringements" to their trademark?

 

[twomoon]

Great advices guys! Thank you very much! All repped.

Yes, I know I made a mistake when contacted them.
I checked Brititish TM database and there are many registered TM's on this word.

I didn't check for classes cause I don't use my domain, neither park the name so in any way I can't violate their TM's

I have another buyer for this domain, but I think I would only violate our communication if I would just sell this domain to another party.

One important question I have now. If they would start UDRP and pay for it and the result would be that I would lose the domain. Could it be possible that they would try to force me to compensate (to return them back) the money they spent to start UDRP?

 

[verbster]

Just look it up...lots of UDRP/WIPO sites.

 

[Name Trader]

There is no compensation for WIPO fees under WIPO. It's an arbitration body. They'd have to take you to court. I've not heard of anyone doing that, but then I don't follows these things too closely.