question Owner offered $XXX or legal process

[Bohdan]

Hi, pros. I need urgent advice.
Recently, I regged domain and made outbound to 3d studio with short exact match name.
They have responded, that they willing to get it for $XXX, othervise they will:
"...start a legal process to recover that domain which legally belongs to us as is a registered brand". But I have not found any registered TM for this name. Will PM with the name if needed.
Your thoughts, guys?

 

[equity78]

@jberryhill has explained over and over that a company does not need to have a registered TM to have rights in the term.

I will say this over and over,

Don’t Take Legal Advice from a Forum Poster

If the situation arises where you need help with a legal issue, such as a UDRP or cease and desist, it is ok to ask for a recommendation for a domain lawyer but don’t forego contacting the lawyer and just take advice from a forum. I have known people who went on the advice of a non-lawyer that their UDRP was a slam dunk, no need to get a lawyer and then they lost the name in a UDRP. There are some excellent lawyers in this business, John Berryhill, Stevan Lieberman and Zak Muscovitch to name a few.

 

[jberryhill]

For instance, Realtor.com sued someone over the use of the word "realtor" but they lost and had to pay defendant's legal fees + more for the troubles. Judge stated the lawsuit was the "epitome of frivolous", because "realtor" is a dictionary word. In fact, the only live TMs in the USA for the single word "realtor" are for companies that use the single word "realtor" as a brand name for products unrelated to real estate brokerage.

Is there a competition for the most insanely irresponsible thing to post in the Namepros legal forum?

Firstly the case that I was referring to that Realtor.org lost was a case where they sued a over a domain Real Tor [KEYWORD].com I guess the defendant was able to prove that the domain was in fact not meant to be related to Realtor but Real Tor.

But you seem to have misremembered a direct quote from the case. Not only that you seem to also misremember the additional fact that the NAR has a LOT of valid US trademarks for REALTOR, and is the only company which has such marks.

There was no such other case involving any "Real Tor" nonsense either. You just made that up too along with the other case and the false statements about trademark registrations.

You are simply just making stuff up as you go along, and pretending that you know what you are talking about, or have advice to offer to someone with a genuine problem.

 

[WhoaDomain.com]

Did OP check wipo.int? USPTO.gov?

 

[Jv1999]

@jberryhill has explained over and over that a company does not need to have a registered TM to have rights in the term.

I will say this over and over,

Don’t Take Legal Advice from a Forum Poster

If the situation arises where you need help with a legal issue, such as a UDRP or cease and desist, it is ok to ask for a recommendation for a domain lawyer but don’t forego contacting the lawyer and just take advice from a forum. I have known people who went on the advice of a non-lawyer that their UDRP was a slam dunk, no need to get a lawyer and then they lost the name in a UDRP. There are some excellent lawyers in this business, John Berryhill, Stevan Lieberman and Zak Muscovitch to name a few.

Dats sad. I thought this too, that u don't need tm to enforce tm, but so many ppl said iz ok as long as no tm registration on an official database

Guess now non-official tm is tm.

 

[Bohdan]

@equity78, thanks for the great advice

 

[NameBuyer.com]

I decided not to hold possibly TM-related domain. And you know, a bird in hand is worth two in the bush.

I've had this come up a few times over the years. Usually makes sense to go with the $xxx offer unless it is one of your better names.

 

[Winfluence]

@jberryhill has explained over and over that a company does not need to have a registered TM to have rights in the term.

I will say this over and over,

Don’t Take Legal Advice from a Forum Poster

If the situation arises where you need help with a legal issue, such as a UDRP or cease and desist, it is ok to ask for a recommendation for a domain lawyer but don’t forego contacting the lawyer and just take advice from a forum. I have known people who went on the advice of a non-lawyer that their UDRP was a slam dunk, no need to get a lawyer and then they lost the name in a UDRP. There are some excellent lawyers in this business, John Berryhill, Stevan Lieberman and Zak Muscovitch to name a few.

Does it cost money to lose a UDRP? Does this kind of legal action come with a fine of any sort? Or do they just release your domain to the "rightful" owner and you go about your business?

I read that it is expensive to file for a UDRP so many companies won't bother once they realize how expensive it is and will sometimes change their mind and buy it, realizing it's less trouble than a UDRP. Is that true??

 

[equity78]

Does it cost money to lose a UDRP? Does this kind of legal action come with a fine of any sort? Or do they just release your domain to the "rightful" owner and you go about your business?

I read that it is expensive to file for a UDRP so many companies won't bother once they realize how expensive it is and will sometimes change their mind and buy it, realizing it's less trouble than a UDRP. Is that true??

If you lose a UDRP you just lose the name. If someone decides to go to court under the ACPA you can lose the name and $100,000.

Sometimes you win the UDRP and the company takes you to court, wins the name and $50,000 in this example.

Here is an example cited in the article that concerns well known domainer and former DNF owner Greg Ricks.

There was also, more recently, the “just bulbs” case, Bulbs 4 East Side Inc., d/b/a Just Bulbs v. Fundacion Private Whois/ Gregory Ricks, D2013-1779 (WIPO January 13, 2014) (Complaint denied, but successful in ACPA action, Bulbs 4 E. Side, Inc. v. Ricks, (S.D. Tex., Houston Div. July 18, 2017 together with an award of damages for $50,000 and attorney’s fees)..

https://tldinvestors.com/2018/03/winning-the-udrp-doesnt-always-mean-youre-done.html

 

[Winfluence]

If you lose a UDRP you just lose the name. If someone decides to go to court under the ACPA you can lose the name and $100,000.

Sometimes you win the UDRP and the company takes you to court, wins the name and $50,000 in this example.

Here is an example cited in the article that concerns well known domainer and former DNF owner Greg Ricks.

There was also, more recently, the “just bulbs” case, Bulbs 4 East Side Inc., d/b/a Just Bulbs v. Fundacion Private Whois/ Gregory Ricks, D2013-1779 (WIPO January 13, 2014) (Complaint denied, but successful in ACPA action, Bulbs 4 E. Side, Inc. v. Ricks, (S.D. Tex., Houston Div. July 18, 2017 together with an award of damages for $50,000 and attorney’s fees)..

https://tldinvestors.com/2018/03/winning-the-udrp-doesnt-always-mean-youre-done.html

Thanks! How much does it cost a company to file for an UDRP? I'd like to know, because if it is a large sum of money and the company is small to medium sized it is less likely that they will apply for one and more likely that they would come back to buy the name after seeing that application fee...I wouldn't challenge a larger company, but a smaller one I probably wouldn't take them seriously...especially if their size and funding is certain...

 

[Winfluence]

Plus a ACPA seems like a really big process that involves more legal assistance and process...waiting and etc...probably even more expensive. It sounds like something a mid to large sized corporation would do...am I right?

 

[equity78]

Thanks! How much does it cost a company to file for an UDRP? I'd like to know, because if it is a large sum of money and the company is small to medium sized it is less likely that they will apply for one and more likely that they would come back to buy the name after seeing that application fee...I wouldn't challenge a larger company, but a smaller one I probably wouldn't take them seriously...especially if their size and funding is certain...

Mandatory Filing Fee
The initial filing fee (required in every UDRP case) is approximately the same at the World Intellectual Property Organization (WIPO) and the Forum, which together account for about 97% of all UDRP proceedings: At WIPO, the filing fee starts at $1,500 for a complaint that includes up to five domain names and a single-member panel. At the Forum, the starting fee is $1,300 for up to two domain names and a single-member panel.

(The fees at two of the smaller providers -- the Asian Domain Name Dispute Resolution Centre (ADNDRC) and the Arab Center for Domain Name Dispute Resolution (ACDNDR) -- are comparable, starting at $1,300 and $1,500, respectively. But the fees at the Czech Arbitration Court, which is much less popular, start at $500.)

Since a trademark owner can choose where to file its UDRP complaint, it should know at the beginning what fees to expect.

https://giga.law/blog/2017/8/30/beware-of-extra-fees-in-udrp-proceedings

 

[johnnie018]

Good sale, but remember outbound = spam and from many people's point of view it will look like you registered the name to target them (which is prob true!)

 

[Winfluence]

Mandatory Filing Fee
The initial filing fee (required in every UDRP case) is approximately the same at the World Intellectual Property Organization (WIPO) and the Forum, which together account for about 97% of all UDRP proceedings: At WIPO, the filing fee starts at $1,500 for a complaint that includes up to five domain names and a single-member panel. At the Forum, the starting fee is $1,300 for up to two domain names and a single-member panel.

(The fees at two of the smaller providers -- the Asian Domain Name Dispute Resolution Centre (ADNDRC) and the Arab Center for Domain Name Dispute Resolution (ACDNDR) -- are comparable, starting at $1,300 and $1,500, respectively. But the fees at the Czech Arbitration Court, which is much less popular, start at $500.)

Since a trademark owner can choose where to file its UDRP complaint, it should know at the beginning what fees to expect.

https://giga.law/blog/2017/8/30/beware-of-extra-fees-in-udrp-proceedings

That's interesting and very useful info to relay to an end user who threatens to file for a UDRP.

Would it be reasnonable to respond with something like this if the domain is within a similar range as the UDRP application fee?:

"Let's make this easy. I believe that purchasing this domain would be a better option for your your business, but if you choose to file a UDRP, you can pay $1,300 for the paperwork and wait for approval with no gaurantee that it would be successful (many aren't) or you can purchase my domain and GAURANTEE to have it in your account in just a few minutes for just $300 more than the application fee (for example). Shall I begin an escrow transaction? Fees on me!"

 

[equity78]

That's interesting and very useful info to relay to an end user who threatens to file for a UDRP.

Would it be reasnonable to respond with something like this if the domain is within a similar range as the UDRP application fee?:

"Let's make this easy. I believe that purchasing this domain would be a better option for your your business, but if you choose to file a UDRP, you can pay $1,300 for the paperwork and wait for approval with no gaurantee that it would be successful (many aren't) or you can purchase my domain and GAURANTEE to have it in your account in just a few minutes for just $300 more than the application fee (for example). Shall I begin an escrow transaction? Fees on me!"

All depends, there is a school of thought price names that might be infringing at $1,500 and hope a company will see the price is around the same and might just want to get the name. I have heard from people who have done this.

I have also spoke to companies that said they want to make an example out of someone and will gladly go to court, they will win, get the name, up to $100,000 and lawyer fees.

When I one time said to a CFO back in 2009 that a lot of small domain investors would not be able to come up with the $100,000.

His reply was, "Well then we have a judgement against them and hopefully are making their life a living hell!" To which I replied alrighty then.

 

[Winfluence]

Good sale, but remember outbound = spam and from many people's point of view it will look like you registered the name to target them (which is prob true!)

The word spam is very broad and subjective. All of the pros do outbound. It won't be viewed as spam if the message you are sending is personalized to a particular person in the company you are contacting and addresses them personally about why they need the domain you are offering.

 

[johnnie018]

The word spam is very broad and subjective. All of the pros do outbound. It won't be viewed as spam if the message you are sending is personalized to a particular person in the company you are contacting and addresses them personally about why they need the domain you are offering.

Nobody who sends spam thinks they are spamming, Always reason why their spam is ok but others not ok!

 

[equity78]

The word spam is very broad and subjective. All of the pros do outbound. It won't be viewed as spam if the message you are sending is personalized to a particular person in the company you are contacting and addresses them personally about why they need the domain you are offering.

Exactly and here is the deal, people who don't ever want to receive an email call all emails they receive SPAM. Cool story bro, not true but whatever helps you sleep at night. Outbound does not = SPAM

From the FTC website in a Q&A where someone asked about emailing a list they purchased. While buying lists is not recommended the first part of the reply from the FTC is what matters if you are starting out.

The CAN-SPAM Act doesn’t require initiators of commercial email to get recipients’ consent before sending them commercial email. In other words, there is no opt-in requirement. So in general, as long as you follow the “initiator” requirements of the Act, you can send email until the recipient asks to opt out.

https://www.ftc.gov/news-events/blogs/business-blog/2015/08/candid-answers-can-spam-questions

The rule is not hard to follow, The Rule requires that a commercial e-mail contain accurate header and subject lines, identify itself as an advertisement, include a valid physical address, and offer recipients a way to opt out of future messages.

 

[Winfluence]

Nobody who sends spam thinks they are spamming, Always reason why their spam is ok but others not ok!

You are in the wrong industry if you do not believe in out bound sales. Sorry to say. Some get by only from just waiting for inbound but that is not common practice by the most successful domain sales veterans and by the most successful people in sales in general. The Sales industry consists of outbound, period, otherwise it is not sales...You are simply a merchant if you depend only on inbound, not a salesman.

Whatever works for you!

 

[Keral_Patel]

If I get an email like this I would opt for legal process in a blink of an eye.

Should be fun.

 

[johnnie018]

You are in the wrong industry if you do not believe in out bound sales. Sorry to say. Some get by only from just waiting for inbound but that is not common practice by the most successful domain sales veterans and by the most successful people in sales in general. The Sales industry consists of outbound, period, otherwise it is not sales...You are simply a merchant if you depend only on inbound, not a salesman.

Whatever works for you!

What you talk about, you think most sales are generated by spamming?

Which successful domain sales veterans get sales mainly from sending spam?? That is for anonymous people in China. What internet business makes money from spamming? They be closed down if they spam.

 

[jberryhill]

I read that it is expensive to file for a UDRP so many companies won't bother once they realize how expensive it is and will sometimes change their mind and buy it, realizing it's less trouble than a UDRP. Is that true??

Where did you read that?

common practice by the most successful domain sales veterans

Oh really? Who?

Name these "most successful domain sales veterans" you are talking about.

 

[karmaco]

Suggesting that top domainers need to outbound is ludicrous. Good names sell themselves and generate interest on their own. And if you sell a name it is a sale no matter whether it is inbound or outbound.

I happen to agree that contacting people to sell a name is generally unsolicited spam just like any other spam selling something.

The people who are routinely successful at outbound are pulling in modest profits most of the time under $2K and most of the time XXX. So I’d hardly judge outbound as some pillar of financial success. It is one avenue and frankly it puts the other person in the drivers seat so sales will naturally be as low as they can get you to go.


Another benefit to not doing outbound is not getting threatened with a UDRP like this thread and so many others.

 

[NamesCost]

The cost of a UDRP can be something useful to consider when pricing or dealing with offers for certain domains and is worth considering before you counter to such threats.

 

[alcy]

there are np members who openly said in various threads that one should not even be refered to as a domainer, unless he is doing outbound on his domains... as in... relying mostly or even exclusively on outbound for his sales.

 

[BrandEntrance.com]

I'm confused, is the EU TM still valid?

I checked against dronePhone.co which I registered. LG is developing one now.
It stated clearly in the status of the Chinese company that one had this trademark that it was now "ended". TM View

Was the trademark you were talking about active or ended?