Potential Legal Attack - Appreciate Advice

[JjRocker]

Resolved - Thanks for the help

 

[.X.]

If he was going to do something,He would have done it long ago IMHO,If it is not TM.Then i would ignore him,Anyone can threaten legal action on anyone.

 

[Dave_Z]

Not an attorney but will share what I know.

A party doesn't actually need a registered TM if they can prove common law,
although having a registered one gives leverage (to a certain degree).

Your strongest point, based on what you posted, is how your negotiation with
the other party occurred. They may try to argue what you did was bad faith,
but I doubt it'll hold water because they initiated it and there was no
agreement concluded.

Your challenge, thus, is to prove you never used it in bad faith and/or have a
legitimate use for it. Just win one of the 3 required UDRP conditions, the other
has to win all 3.

However, even if they lose, they still have the option to sue you in court. But
so far that appears doubtful based on the additional details you mentioned.

Here are some sites you can read more on the subject:

http://chillingeffects.org/trademark/
http://chillingeffects.org/domain/
http://gigalaw.com/articles/domainnames-trademarks.html

Just the same, though, be prepared with legal counsel. If you need reliable
counsel, just shoot a blank email to attorneyATdavezanDOTcom, you'll get 2
of the best.

Hoping this helps. BTW, this is best posted in the legal forum section...

 

[RJ]

It wouldn't hurt for you to read up on past UDRP cases too. Rulings have not been favorable for domain owners that simply have the names parked or listed for sale. Like Dave mentioned, they have to prove three items to get the name awarded to them.

The first, similarity to trademark, sounds like they have that one in the bag. The fact that his trademark has a space between the words is immaterial. The second, that you have no legitimate use for the name, should also be easy for them to prove since you have it listed at Sedo. I've not known panelists to consider that a legitimate reason for owning a name. Third, your bad faith use or registration of the name... this could go either way, but like I said the cases USUALLY go in favor of the complainant.

From what you've told me, I would strongly consider trying to settle on a price with them. Filing UDRP is $1300+, plus lawyers fees if they use one. Would you sell the domain for $1000?

 

[Midano]

Like RJ said - UDRP claim alone will cost him upwards $1500 and there's no guarantee as long as your site has nothing to do with the niche his business is in.
If he's got some common sense, he'll shell out $1000-$1500 for the name just to avoid the hassle and inevitable snowball of lawyer fees on top of UDRP filing fee.

 

[wisconsin]

If, indeed, the buyer can demonstrate common law rigths to the term/domain in commerce use as they claim, you better negotiate a fair price for the domain up to the maximum domain dispute filling fees + attorney fees. Be fair and ask for less!

Status of an "Abandoned" trademark, does not mean they don't have established common law rights to the mark anymore.

If you realize that no such claims exist and the domain name has potential and is valuable, then it is worth while asking for more!

 

[JjRocker]

Resolved

 

[primacomputer]

Throwing up an Amazon shop was probably a bad idea. I had read plenty of UDRP decisions where such an action was interpreted as the respondent trying to hide his true intentions when facing a legal threat. There really isn’t a difference between parking at Sedo and throwing in an affiliate programme anyway.

Claiming you planed to develop the site was probably also a bad idea. They’ll take one look at your names as say “this guy’s a speculator”. There is nothing wrong with Speculation, but I have seen several decisions where making a claim like this contributed to demonstrating that the name was registered in bad faith.

 

[jberryhill]

Just the same, though, be prepared with legal counsel. If you need reliable
counsel, just shoot a blank email to attorneyATdavezanDOTcom, you'll get 2
of the best.

Dave, I have no idea why you are doing that, but there's something about your collecting email addresses of people looking for attorneys which strikes me as odd.

 

[Dave_Z]

Dave, I have no idea why you are doing that, but there's something about your collecting email addresses of people looking for attorneys which strikes me as odd.

Oh that. It's actually an autoresponder that recommends either you and/or Ari
if one or the other is unavailable, and I don't aim to collect email addresses as
well (not that way, anyway).

I only aim to help as much as I can, especially if they're seeking an attorney
who works on these things. But I'll stop it if it bothers you, just let me know.

 

[jberryhill]

I don't know if it "bothers" me. It just strikes me as odd, that's all.

 

[Dave_Z]

I don't know if it "bothers" me. It just strikes me as odd, that's all.

I understand. I'll be more specific next time that it won't collect emails and
all, thanks.