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?

 

[EbookLover]

Can you share those trademark services you used?

Also, at least in the USA, a company does not have to have a registered trademark with USPTO for a trademark infringement case to be valid. But if it is a normal dictionary word, then it is unlikely they have a case. I don't know about other countries.

 

[EbookLover]

Where is this 3d studio company located?

 

[Bohdan]

Spain

 

[EbookLover]

I used 3 different trademark services to find TM's. And only EU trademark service found active registered TM back in 2013. So I decided to sell it. Thanks to all for your advice.

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

 

[Bohdan]

Probably, yes

 

[Bohdan]

Well, even if the 3D studio does not own the TM, then you still may be infringing on someone else's TM. The proper plan of action is not to sell when you find out you have a TM domain, it is to drop TM search should be done before domain reg, not after

I do this mostly everytime I'm registering new domains, but searching only for US TM.

 

[EbookLover]

I do this mostly everytime I'm registering new domains, but searching only for US TM.

So then I take it you are in the US?

 

[Bohdan]

I know that some EU-based companies offering worldwide TM registrations. But I think they just have their worldwide filials to cover most countries.

 

[Bohdan]

So then I take it you are in the US?

No, I'm from Ukraine

 

[EbookLover]

I am wrong. I apologize.

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.

Secondly, all my life I have used the word "Realtor" as a synonym for the word "real estate agent" or "Realty Brokerage Firm". But in fact, it is not. Realtor isn't really a word, per se. It is a proper noun made up by the NAR which people use as if it were a real word. Like Kleenex for facial tissue or like Q-tip for cotton swab.

 

[EbookLover]

 

[Bohdan]

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

 

[EbookLover]

Yes, they are all over the place, but I just never knew Realtor was one of them. I knew about the other you mentioned, but who wants to say "frozen treat on a stick"? lol

 

[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??

 

[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?

 

[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!"

 

[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.

 

[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.