Previous owner threatens with ICANN dispute on non-TM name

[Hypersot]

Hi,

I recently regged a name which the previous owner apparently wants back and threatens with an ICANN dispute if I don't give it back to him for a reg fee.

Domain name is in the urban dictionary (ie. a word that is used even if rarely), has no TM , at least there is nothing mentioned on the most common TM search sites BUT the name is registered also in the .com.br extension

what do you guys (and gals) think, does the prev-owner have any grounds to his claims just because he owns the .com.br version of the name?

thanks

 

[werty]

Did you run the word on the trademark database to make sure?

http://www.uspto.gov/trademarks/process/search/

If there is no trademark registered, then he can't do anything about it in my opinion. Also the trademark must have been registered before you registered the domain to make it "bad faith". Having the keywords registered in another extension doesn't matter nor give him any rights. But again this is my opinion and I am not a lawyer nor legal advisor. If you want pm me the domain and I can look into it further.

 

[Hypersot]

Yes, I always run searches on multiple trademark-search sites before I buy a name and of course I always check the previous history.
Said domain looked like a blog to me but I liked the name and got it as soon as it went free.

No idea why the prev-owner chose the aggressive way, I was very polite with my answers (as I always do)

 

[pranker]

he forgot to renew and now hes threatening you. Ignore him, its all talk. He thinks you're uneducated on domain rules so he pulls out threats hoping you bite.

 

[4better]

Simple blackmail from a desperate guy. He chose to be aggressive thinking you might bow down in fear and submit to his wishes. If he is really serious about pursuing ICANN dispute, then he must be prepared to spend a lot of money for that. Just to file the complaint, he needs to pay 1500 USD. Do you think he will do that? No way, imho. You see, he wants back his domain name from you for a reg fee. That shows how cheap he is.

 

[Hypersot]

The last mail he sent me he mentioned his brazilian registered business details so, at least for that part, he makes some sense
BUT name is also a word and I'm not sure how a country's trademark can affect the worldwide market (ie. the .com).

I sent him an offer that I think is reasonable, both profitable for me and a very easy price to pay for him. If he doesn't accept, I'm willing to go to the court for this.

 

[Dimitris]

Ignore him. If he was polite, then maybe I would give it back to him. Just recently a very polite guy called me to say that he forgot to renew a domain that I caught. The domain was a .com but with only an active/registered TM in France and he was just the IT guy responsible for the domains. He almost cried maybe because of the pressure he received from his bosses. I fell sorry for the guy and after I made some verification checks I transferred the domain back to him.

Also check another thread of mine, which kind of teaches how to handle such threats (recent real case)

https://www.namepros.com/threads/wipo-complaint-polite-threat.836752/

These are not all the emails that we've exchanged; but some experts in the field and my lawyer who I put in the loop of all the communication, absolutely loved my responses and supported that a legal case won’t get him anywhere.

 

[alien51]

A dispute cannot be filed, unless he is disputing a specific violation he think you committed.

Did he mention what specific violation you have done?

 

[Hypersot]

Not really, he just vaguely threatened with a dispute because he owns the .com.br version

I don't think he'll go forward with this. If he really needed that name he'd accept my offer, it was a really low one since I respect the fact the he owned the name.

I hope this thread can help some new domainers facing similar issues. Are the thread tags being set by the moderators or should I set them myself?

 

[alien51]

Then it is just an empty threat. Ignore it.

 

[nomen]

Explain the situation him and try to break a deal.

 

[SearchEngineZ]

Next time... don't offer to sell it, but wait for him to make an offer. Safer legally.

 

[Hypersot]

That is quite correct. That is the reason I'm very careful with my first replies on such inquiries.
On this occasion though, he made an offer (regfee) and I just replied with a counteroffer.

Since you mentioned this, I always wondered, would it be safer if we just ask as paymet what we get from the income we get from ads?
For example, if I have proof that a domain brings me x earnings / year from ads (that infringe on no trademarks ofc) would it be safer to ask exactly that amount as a compensation for transferring away a domain?

 

[alien51]

Someone trying to offer you with regfee, does not even deserve a reply. Or tell him it's not for sale.

 

[SearchEngineZ]

I've been in this situation numerous times, and they only ever offer regfee. I explain to them I operate a business, and my business is buying expired domains. Their sob story doesn't change my price.

 

[Name Trader]

I agree with 4better's advice.

He could have an unregistered trademark for the domain, but that's harder to prove he has a trademark. Which he will need to do in a UDRP. Also, you have a prima face case that he didn't do anything to protect his trademark, because he let the domain drop. Panelists don't usually take to kindly to that. Also he needs to show proof of you infringing his trademark. And he needs to prove you registered the domain in bad faith, which doesn't sound like you have done. He will need to pony up $1500 to begin a UDRP, and that's for a one person panel, which are notoriously unreliable. Then there is the legal costs. He can file on his own, but if he wants to win, he should employ an trademark/intellectual property attorney, who knows the the UDRP process intimately. You can represent yourself, if you like, and I think you would probably have a good case and win, if he filed without a lawyer.

It's just a load of hot air on his part. I would ignore all his emails unless he is willing to buy the domain. I would definitely only use escrow for any sale.