Potential problem?

[verbster]

Got an inquiry from a company in England for a domain I've owned since Sept. '06. (It's been parked at Fabulous since buying it.)

The inquiry e-mail came directly from their company to my whois admin address.

They wanted to know, "What is the price of the domain?" I wrote back that "I wouldn't be opposed to discussing a price for the domain."

The company sells a product (one of several) with the same name as my domain. I don't lnow how long they've been selling it.

They filed for a TM in Britain in Dec '06 and got it in May of '07.

The co.uk version of the domain is not registered.

There doesn't appear to be a US TM on the name.

1. Does asking for a price mean anything akin to making an offer?

2. Do you see anything for me to worry about?

3. Any advice?

 

[IAmAllanShore]

Finally, in this case, regardless of the status of the inquiry, are there grounds for the buyer to file a UDRP for the domain with his UK TM, even though the filing for the TM was after I bought the domain?

http://www.wipo.int/amc/en/domains/search/overview/index.html#31

3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

Relevant decisions:
John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited D2001-0074, Denied
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, Denied
PrintForBusiness B.V v. LBS Horticulture D2001-1182, Denied

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.

Relevant decisions:
ExecuJet Holdings Ltd. v. Air Alpha America, Inc. D2002-0669, Denied
Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc) D2003-0320, Transfer
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer
General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online D2003-0845, Transfer