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guide Prospective buyer threatening for UDRP

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Recently got a buyer inquiry for a domain I handreg more than 2.5 years ago. Buyer wants it really cheap and threatening for UDRP if I don't negotiate and sell cheap which I am not going to. buyer says that they have TM for few words in my domain and I checked for few word combination and found that TM filing date is almost 10 months after my registration date. In such case they can just get my domain under UDRP? what are my option to protect my domain. Please advise. Thanks.
 
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Recently got a buyer inquiry for a domain I handreg more than 2.5 years ago. Buyer wants it really cheap and threatening for UDRP if I don't negotiate and sell cheap which I am not going to. buyer says that they have TM for few words in my domain and I checked for few word combination and found that TM filing date is almost 10 months after my registration date. In such case they can just get my domain under UDRP? what are my option to protect my domain. Please advise. Thanks.
Good evening.

Please type 'UDRP' in the search facility in the top right hand corner of the NP screen and this should take you to a place that explains everything that you may need to know.

Failing that, if the domain name is worth it, you should consider consulting with a TM Lawyer who will be able to guide you.

Good luck on your journey.

Kind regards,

Reddstagg
 
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They either UDRP or not.

UDRP costs like $1.5k.

If you offer them the domain for say $1K that's their best and fastest bet.
 
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Not a lawyer but based on the info , it seems that your domain registration predates their trademark filing, which could be in your favor. UDRP cases typically require that the domain was registered and is being used in bad faith, and the timing of your registration could be a strong point in your defense.
 
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found that TM filing date is almost 10 months after my registration date.

Been there. They ended up paying.

Gave them a discount so they'd be happy. I don't like grudges.

If they didn't, I would renew the domain for say 10 years and send them a much higher price.

You need to ask your lawyer though, but I'm just saying.
 
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Buyer wants it really cheap and threatening for UDRP if I don't negotiate and sell cheap which I am not going to.

And there is YOUR alpha. Don't let them scare you into selling for a ridiculously low price. If Facebook saw I had TRYFACEBOOK.com, do you think they would offer me anything if they knew they would win the UDRP? Probably not. More like Delete, Transfer, or UDRP. If the domain is of high value, I would consult with an attorney.

Regardless, do not let them bully you. If you offer @ 10k, and they want 1k, maybe meet at 8k-6k to show good faith. Especially if you are in the money. just my humble opinion. Not a lawyer.

Good Luck. You got this!
 
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TM filing date is almost 10 months after my registration date. In such case they can just get my domain under UDRP?

No, they cannot. They're trying to scare you to get that domain name in an easy and cheaper way.

Actually, instead of discount, renew the domain name for more years and increase the price!

If they really need that domain name, one way or another, they will come back to you. You have to teach them that threats and coercion won't get things done and that they have to be human first.
 
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Generally, the rule of thumb is that if they got the trademark after you registered the domain name, you can keep the domain name. There is no way you could have known that they would file a trademark.

I'm not a domain attorney, but you may want to consult a domain attorney.

Also, I would keep a copy of ALL correspondence with the potential buyer, as you will probably need it as a defense if/when they actually file a UDRP. Showing such evidence that they tried to buy the domain and then decided to file the UDRP could be grounds for a finding of 'reverse domain hijacking'.
 
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Never negotiate with a bully!

Sounds like one of those entitled buyers who think ALL domain investors are squatters. Giving in to his threats will reinforce his fallacious opinions.

Also, you'll not be happy with yourself if you let a bully take your property for pennies on the dollar.

If he wants to file a UDRP, let him. But he'll have to pay $1.5K UDRP fees plus legal fees.

Plus the fact rhat your domain name registration predates his TM registration by 10 months is to your advantage. Especially, if that means he didn't start his business until then.

Whatever you do, NEVER succumb to the bully and his predatory tactics.
 
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Recently got a buyer inquiry for a domain I handreg more than 2.5 years ago. Buyer wants it really cheap and threatening for UDRP if I don't negotiate and sell cheap which I am not going to. buyer says that they have TM for few words in my domain and I checked for few word combination and found that TM filing date is almost 10 months after my registration date. In such case they can just get my domain under UDRP? what are my option to protect my domain. Please advise. Thanks.

A lot of parameters can affect the outcome of a UDRP, including the extent of the matching between the domain and the mark. Without exact knowledge of the two one can only speculate and offer general directions on this.

That being said, assuming you registered the domain before their mark was registered, you might have an advantage. However, their claim of first use might be with an older date: Eg. although the mark was registered in 2022 their tm application claims they began using the mark in 2020.

Your use of the domain may affect the outcome of a UDRP, if it happens to be infringing directly or indirectly (eg. PPC ads pop up that reference the brand or its competitors.)

Lastly, the fact that a prospective buyer threatens to file a UDRP can be used in the response as an indication of a "Plan B" approach: Eg. the buyer didn't want to pay so they filed the UDRP.

Every case is different and every case requires a response via an attorney (I am not one.) Even responding to these threats, at this stage, via a lawyer, is a good practice.
 
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First off, you don't need an attorney for the process. I successfully defended 2 medium value domains (and lost 2 low value domains) against Enterprise Rent-A-Car.

https://www.adrforum.com/domaindecisions/1579392.htm

There are 3 essential elements that must be satisfied in each UDRP.

  1. The Domain Name is identical or confusing similar to a trademark or service mark in which the Complainant has rights.
  2. The Registrant does not have any rights or legitimate interests in the Domain Name.
  3. The Domain Name has been registered and is being used in bad faith.
Most cases appear to come down to the 3rd element above which consists of 2 parts:

  1. When you registered the domain did you register it in bad faith (typosquatting, targeting a specific business), or did you register it based on the generic value of the domain?
  2. Are you currently using the domain in bad faith? Things that can be considered being used in bad faith are attempting to sell the domain name (which some UDRP cases have also acknowledged as a legitimate business model) , or parking the domain with pay-per-click advertising (where the ads feature links to companies that are in the same industry as the trademark holder).

It's important to note that both of the 2 conditions above must be satisfied in the 3rd element. You had to register it in bad faith, and currently use it in bad faith. If either of those are not true, they'll have a hard time taking the domain from you.

The problem with current parking is they'll often auto-magically target the highest payouts, which often end up being in the trademark holders industry. So I don't park domains any longer. I've been domain investing for close to 20 years and it was only during the 5 years I was parking domains that I've ever received a single UDRP threat. Also, keep in mind that this is just a threat. In the 5-6 threats I've received over the years non of them turned into a UDRP. The UDRP that I did have, never tried to talk to me beforehand.

So most important is to stay calm and think clearly because the fact is you don't currently have a UDRP filed against you. Don't negotiate off the threat. The first time I got threatened with a UDRP I sold the domain to a large car wash chain out of fear for $500. Don't do that.

In a case like yours where there is no trademark in the WIPO trademark database before the date you registered the domain, I wouldn't be worried about them being able to take the domain and I wouldn't negotiate a deal unless the value of the domain is less than $2,000. If you don't know the value, either run it through NameWorth (sometimes for emerging tech it still prices low), or you can send me a message. Make sure you look at WIPO and not only the USPTO.

Personally, I would tell them the domain was registered before their trademark was filed, you never heard of their company (if you didn't), and what they are saying sounds a lot like Reverse Domain Name Hijacking. If they don't know what that is, at least they'll look it up and realize you know something about the process and that may potentially diffuse the situation.

After that response, don't make offers, don't have further communications. If they want to make an offer they'll make one.

While this isn't a UDRP, I just want to note that for me, I'd probably defend most of my own UDRPs going forward because I'm fairly good at writing and analysis and I like the process. But for others, you need to decide what is your cut off point. Are you going to spend $5,000 to defend a $10,000 domain? What about a $50,000 or $100,000 domain? There are also time considerations. I spent a week researching cases and an all-nighter drafting up a response to the UDRP. So what is a week of your time worth?

Notice: If you did obviously target a specific business and register something as a typo then disregard everything I said above as the 3rd element is most likely satisfied in the potential case.
 
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Personally, the only time I'd involve an attorney at this point is if it's an Ultra Premium domain or Super Premium domain, where it makes sense to do so. Contacting an attorney about a potential UDRP on a $2,000 domain wouldn't make any sense to me. To me, if it isn't $50k plus I probably wouldn't go though an attorney, but everyone is different.
 
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Recently got a buyer inquiry for a domain I handreg more than 2.5 years ago. Buyer wants it really cheap and threatening for UDRP if I don't negotiate and sell cheap which I am not going to. buyer says that they have TM for few words in my domain and I checked for few word combination and found that TM filing date is almost 10 months after my registration date. In such case they can just get my domain under UDRP? what are my option to protect my domain. Please advise. Thanks.
While it is hard to say "how to protect your domain" .
for we do not know what it is or what likelihood you have in a udrp, wipo or tm case.

I would suggest you know your rights and others rights so you do not get into these fixes.

I can only tell you what I would do if I had bought the name in advance of any conflicts.
And that is stop talking to him. Say nothing. You are opening up potential avenues for him to follow.
Post it as a BIN and let the price be the price.

But I can establish rights to any name I buy for I am a developer. And I chose wisely against conflicts
It is important to have a good history of doing the right thing because you might miss something sometime.
Any name you hold now or have held can be used against you if a bit shady.

While this person may have rights, it is important for you to figure out if you do as well.
If there is a conflicting interest and your purchase is predating his rights and you did not try to sell it to him. Being that he came knocking on your door for it. You are likely in fair standing. Don't screw anything up by talking to much.
Document everything he does and your reply, starting now while it is fresh in your mind.

If he has a case, let him bring it. Bringing the case and winning the case are not the same thing.
You should review the criteria for how those cases are won and see if you are a match.

Without knowing the finer details, how could anyone say more.
Only you can determine if he has rights or that you may have already blown yours.
We don't know all the facts here.

Owning a name is not exactly a violation. It can be more about your intent. By purchase and use.

If you contacted him for the sale, you may have no rights. You may not extort the name to a TM holder or his competitors..
But there is a lot to know to be able to say anything for sure and only you can know these things.
 
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While this isn't a UDRP, I just want to note that for me, I'd probably defend most of my own UDRPs going forward because I'm fairly good at writing and analysis and I like the process. But for others, you need to decide what is your cut off point. Are you going to spend $5,000 to defend a $10,000 domain? What about a $50,000 or $100,000 domain? There are also time considerations. I spent a week researching cases and an all-nighter drafting up a response to the UDRP. So what is a week of your time worth?

Thank you so much NB
It's so helpful to learn how fellow domainers handle TM infringements accusations.

So in deciding whether to call for legal counsel or not, I guess it comes to main 4 elements:

a) how much did the name cost,
b) how much do you value it (present and future value),
c) how much would legal counsel cost,
d) how high/low are your skills in defending yourself from those accusations.
 
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Thank you so much NB
It's so helpful to learn how fellow domainers handle TM infringements accusations.

So in deciding whether to call for legal counsel or not, I guess it comes to main 4 elements:

a) how much did the name cost,
b) how much do you value it (present and future value),
c) how much would legal counsel cost,
d) how high/low are your skills in defending yourself from those accusations.

For me it mostly comes down to that.

Also, just because you don't want a name, doesn't mean you shouldn't defend it.

You don't want to have a reputation of losing UDRPs by not responding.
 
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Would like to share some facts.
Buyer reached out by email, I asked to make offer (domain uses DAN landers with Make Offer option). He offered very low like $50 and I asked above $50k with some negotiation possibility to check if s/he is seriously interested. s/he raise offers twice to max $120 :) !! with message about UDRP, obviously I declined both offers stopped communicating and just started this thread to get some advice.

Thanks everyone for sharing your valuable experience and suggestions.
 
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I think you definitely win with a good domain attorney and it's more of a crapshoot with a UDRP, depending on who is assigned the case. I don't regret hiring John Berryhill in a similar situation. I agree with Acroplex that you should get an attorney involved if you value the domain. I'd personally do so if I valued it over $4K or so.
 
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Would like to share some facts.
Buyer reached out by email, I asked to make offer (domain uses DAN landers with Make Offer option). He offered very low like $50 and I asked above $50k with some negotiation possibility to check if s/he is seriously interested. s/he raise offers twice to max $120 :) !! with message about UDRP, obviously I declined both offers stopped communicating and just started this thread to get some advice.

Thanks everyone for sharing your valuable experience and suggestions.
While I can not tell you what to do here, it's your game.

But if and when someone threatens me with TM/UDRP/WIPO case,
I require that I have proof that I am indeed talking to someone who has or is representing rights to the term they are claiming.
90% of the time, it is not forthcoming. And without that, I communicate NO MORE.


So, the few that remain have been told after I examine what rights they may have, and what rights I can establish that I am willing and able to defend my rights to hold and perhaps use the domain as I intended. Provided this is true and thus far it has been.

Not a word will a give after that. Silence to this person. They either bring a case, accept my listed offer or go away.

But know all of my circumstances have had good specific rights for me. It could come one day where I have to give in from a oversight. But I will not be bullied.

My only advice is to make yourself aware of these rules that are often not written for all instances, you must read previous cases to understand how and why the rulings are the way they are. TM cases and UDRP.
This is not just to guard and guide you in the future buys, but perhaps a bit on your current holdings.
There is nothing better than some experience and you can draw on that from others good and bad to avoid the bad yourself.
Google can be your friend (sometimes LOL)
 
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A lot of good advice here. The only thing I would add is a reminder that there are 45 categories of trademark and one trademark registration only covers one class. There are 44 other industries that the site could be sold/developed in. For example, if they sell cars then your domain can target virtually anything else. Nobody owns the dictionary; even Webster's has competition.
 
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But if and when someone threatens me with TM/UDRP/WIPO case,
I require that I have proof that I am indeed talking to someone who has or is representing rights to the term they are claiming.
90% of the time, it is not forthcoming. And without that, I communicate NO MORE.
This situation happened to me several years ago while at Uniregistry. I believe the Uni broker was Paul Mullen. A client threatened to file a UDRP if I didn't sell the domain for a specific price. Paul simply asked the guy to transfer documents proving his claims. We never heard from him again.
 
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To sum it all up, your answer to the claim should be:

 
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