Received a UDRP email last night, advice plz

[namanimal]

I own a domain name that is XXXXXXXhonda.com. A local car dealership with the exact same name started a UDRP and wants the name. They do not own the trademark to use that name. However they are claiming that under common law and the 5million they spent on advertising, they are entitled to the name. Do i have any ground to stand on? Is it worth fighting? I could easily draft a response letter to the udrp but i'm not sure if i have to hire a lawyer. also can this entire thing be decided by the 2 parties emailing the udrp? that would be nice. Any and all advice is much appreciated. Thanks guys.

 

[maximum]

I am by no means an UDRP expert or lawyer, so take this opinion with that in mind

I own a domain name that is XXXXXXXhonda.com.
Why, may I ask? Did the thought of Honda Motor Co. LTD. coming after you for it not come across your mind in the first place? I have dev'd into ™ domain terms myself, but those were generic terms I thought the UDRP and ICANN would hold-up as too generic to be valid trademarks protected in a name itself. But "Honda" is not a generic term, by any means. It is a proper name, and world known by that name.

A local car dealership with the exact same name started a UDRP and wants the name.
A suprise? They make their living through that name.

They do not own the trademark to use that name.
If they are a licensed Honda dealer, Honda Motor Co. LTD would disagree, I believe.

However they are claiming that under common law and the 5million they spent on advertising, they are entitled to the name.
ICANN's panels, if this ended there (and most courts, probably would too) would hold that this in itself is enough. They have put theirselves out to the world with this name, are known by it, and it is you who has no valid claim to it (Honda Motor Co. would agree too, I assure you). The use of the term, along with Honda's granting them that right as an authorized Honda-dealer, gives them the right to it.

Do i have any ground to stand on?
Other NPers might be able to answer this one better than I can :p

Is it worth fighting?
How much time and money do you have? And, can you afford to have wasted either, if you loose the domain in the end (Nothing personal, but my bet is that this would be the final outcome.)?

I could easily draft a response letter to the udrp but i'm not sure if i have to hire a lawyer.
Only if you knew more about the UDRP procedures, recent cases decided by such, and the related laws in general. I'll assume the letter to you was from their lawyer. If not, be assured they sent him a copy. Any non-lawyer who plays the legal game against an actual lawyer is either a fool or has more nerve than is good for him.

also can this entire thing be decided by the 2 parties emailing the udrp? that would be nice.
Yes, that would be nice. But, seeing as their namesake is on the line, I doubt they will be very obliging to anything other than you just handing it over.


Just the subject :imho: Best of luck, whatever you decide, or whatever happens....

 

[VYFX]

I own a domain name that is XXXXXXXhonda.com. A local car dealership with the exact same name started a UDRP and wants the name. They do not own the trademark to use that name. However they are claiming that under common law and the 5million they spent on advertising, they are entitled to the name. Do i have any ground to stand on? Is it worth fighting? I could easily draft a response letter to the udrp but i'm not sure if i have to hire a lawyer. also can this entire thing be decided by the 2 parties emailing the udrp? that would be nice. Any and all advice is much appreciated. Thanks guys.

In short, there's nothing they can do.

You are the legal owner of the domain, which does not violate any copyrights or trademarks held by the dealership. The fact that they; A) want the domain under common law is complete bullsh*t. They don't have a leg to stand on so they are using this to sound legit, and B) the dealership spent over $5,000,000 on advertising is completely irrelevant to this domain name's legal ownership. You are the owner of the domain name and they are not. If they want it they can buy it.

There is no need to hire a lawyer. Heck, there isn't even a need to respond to their email. Don't be intimidated by this dealership, as companies use their "power" way too often to intimidate others into giving them what they want.

 

[fonzie_007]

I disagree with MOGbase. I would contact a lawyer for help if you really want to keep the domain. First, try pm'ing JBerryHill here at Namepros. He deals with this sort of stuff.

 

[namanimal]

the dealership had XXXXXXhondacars.com 1 year before i registered the domain name. I didnt even find out about thier domain name for a year after i registered mine. Are the dealings with the UDRP have to go to the courtroom. or do we both email our cases and they then decide.

 

[fonzie_007]

I believe you only brief and the arbitration panel then rules. You do not have to show up, your brief/memo is your entire argument. If you don't hire a lawyer, you are going to want to do some research of similar cases and attempt to draw similarities between other cases (where the person was successful defending the attack) and yours.

Some tips for writing a decent brief:
Be pursuasive. Make sure your brief is well-written and reasoned. Remember, ignorance is not a valid excuse. You are going to want to paint the other side's actions as being hasty, ill-warranted, and unfair. Don't make things personal, but extend a well-reasoned argument in your favor. The arbitration panel doesn't need to like you or your motives, they just need to dislike the other side and their motives more.

Disclaimer: I'm not a lawyer, but I'm one in training...

 

[namanimal]

a big question of mine is "can they sue me for any damages" if they win the case and/or i just give them the domain name. Their lawyers fees could be up to 5k or even 10k. I dont want to be lible for that. In the UDRP brief i received they had a section that said "remedy requested" it only said that they want control of the domain name. But can they come back and sue me for legal fees afterwards? It's so hard to be prepared the first time it happens.

 

[fonzie_007]

I'd love to answer your question, but being that I have never been in a UDRP or represented someone in one, I will defer your question to someone else.

 

[bluesman]

Two points to consider:

1) If you're not using the trademarked Honda name to make money, then what are you doing wasting your time with it? You're losing out on making money with something else.

2) If you ARE making money with the name, then you're in clear violation of dilluting Honda's mark and of diverting Honda's revenue.

Either way you lose.

(And yes, all Honda dealerships in the Honda franchise chain DO ultimately answer to and represent the Honda home office.)

Conclusion: Dump the domain like it's poison.

 

[almarti2]

Wow,

The interpretation of law by DNers is truly astounding.

My suggestion if you wish to discuss the law, you should 1. Go to law school and graduate 2. Pass the Bar 3. Get a job, if you haven't already recieved an offer 4. Begin practicing.

Or if you considering domaining a "business" in which some level of legal acumen is warranted...

Educate yourself to a minimal level about e-commerce, trademark, and copyright law so that you can intelligently discuss, analyze your position and make legally justified business decisions. If you cannot do that, refrain from domaining.


"I didn't know" is not a valid defense to cybersquatting.

 

[labrocca]

In short, there's nothing they can do.

You are the legal owner of the domain, which does not violate any copyrights or trademarks held by the dealership. The fact that they; A) want the domain under common law is complete bullsh*t. They don't have a leg to stand on so they are using this to sound legit, and B) the dealership spent over $5,000,000 on advertising is completely irrelevant to this domain name's legal ownership. You are the owner of the domain name and they are not. If they want it they can buy it.

There is no need to hire a lawyer. Heck, there isn't even a need to respond to their email. Don't be intimidated by this dealership, as companies use their "power" way too often to intimidate others into giving them what they want.

Some of the advice around here lately is downright terrible. If you posted this thinking it was funny..it's not. The person is here asking for some advice. What you told him is basically the worst possible advice you can give.

Do the exact opposite of what he suggests.

 

[RJ]

While they may not have exclusive trademark on the term 'honda', if their business name is XXXXXX Honda then you're surely going to lose this case at UDRP. However, if you do lose and they are awarded the name its unlikely they will pursue a lawsuit against you (but anything is possible).

I'd recommend trying to negotiate with them NOW to give them the name and close the UDRP process. They can get a partial refund for the fees they paid, and may be willing to pay a nominal cost to get the name for sure in lieu of taking their chances at UDRP.

 

[maximum]

I generally don't make it a habit of down-playing or degrading anyone's given advice, especially when it is in a field I am not a certified expert in. And, usually I don't when they are not, even if I am, becuase it causes hurt feelings. But this needed said. Opinions are just that...opinions. Advice is just that...advice. Niether are stone-written rules on what you should or shouldn't do, in a given situation. However, I have to agree with Labrocca, here. MOGBase's advice, rather through just thinking it was funny or from lack of knowing better, is outright dangerous in this situation. Many folks have lost not only domains, but court cases that cost them huge financially, just by thinking if they ignored folks going after them that the situation would disappear. They didn't go through the trouble of looking you up, even if that was a simple whois search on the domain, and writing you, just so you could ignore them and they then forget all about it. I don't know what, for sure, was going though MOGBase's mind when that was posted. It was, however, posted with either ignorance of how these things work or no concern to really help the issue at hand.

Emanuel, as I stated, I can't tell you exactly what to do. I can, howver, tell you for sure..Don't just think it will go away on its own!

 

[namanimal]

a couple of things that came to mind. it costs 1300 to make a case at the UDRP. For a lawyer to draft the letter and research it it probably cost them 1500-2000. So figure they spent 3000 total so far. That is all they have to do for the UDRP case. If they sue me civily they will be looking at a lawsuit costing them from 10,000 to 20,000 dollars depending on if it goes all the way and if i drag it out. I dont think those are unrealistic numbers. So i figure that why would they risk on average 15,000 dollars to recover 3,000 plus damages? Honestly it just doesn't make sense. Unless they have thier hearts set on ruining my life. So even though i'm extremely worried at least until i talk to a lawyer (which will be soon), i honestly feel that they will not press the matter civily even if they win at the UDRP. If i'm not making sense, please let me know.

 

[maximum]

a couple of things that came to mind. it costs 1300 to make a case at the UDRP. For a lawyer to draft the letter and research it it probably cost them 1500-2000. So figure they spent 3000 total so far. That is all they have to do for the UDRP case. If they sue me civily they will be looking at a lawsuit costing them from 10,000 to 20,000 dollars depending on if it goes all the way and if i drag it out. I dont think those are unrealistic numbers. So i figure that why would they risk on average 15,000 dollars to recover 3,000 plus damages? Honestly it just doesn't make sense. Unless they have thier hearts set on ruining my life. So even though i'm extremely worried at least until i talk to a lawyer (which will be soon), i honestly feel that they will not press the matter civily even if they win at the UDRP. If i'm not making sense, please let me know.

Under the federal laws of the "Anticybersquatting Consumer Protection Act" (see: http://www.patents.com/acpa.htm), they can sue for damages up-to $100,000. This $100k does not include court-cost (their lawyers, ect.), which they could also get from you. IF things went as bad as they could get, you loose the name, pay $100k in civil damages, plus several thousand more dollars for their lawyers. Expensive, :imho: , unless this was a multi-million dollar domain or one you ran your own business from.

 

[LatinPride]

a couple of things that came to mind. it costs 1300 to make a case at the UDRP. For a lawyer to draft the letter and research it it probably cost them 1500-2000. So figure they spent 3000 total so far. That is all they have to do for the UDRP case. If they sue me civily they will be looking at a lawsuit costing them from 10,000 to 20,000 dollars depending on if it goes all the way and if i drag it out. I dont think those are unrealistic numbers. So i figure that why would they risk on average 15,000 dollars to recover 3,000 plus damages? Honestly it just doesn't make sense. Unless they have thier hearts set on ruining my life. So even though i'm extremely worried at least until i talk to a lawyer (which will be soon), i honestly feel that they will not press the matter civily even if they win at the UDRP. If i'm not making sense, please let me know.

Any lawyer is going to ask you... "Are you prepared(do you have money and is it worth the fight) to take this through litigation?"

Secondly, if you can get any money out of this... Any lawyer will tell you (assuming you don't want to go to court, and that you dont have money to waste) , take whatever money is thrown your way, and run...

 

[namanimal]

i have no reason to fight a civil case, i am meerly thinking that they might not want to start an action such as that. i assume all they want is the domain. how often does the winning party at arbitration sue the other guy for damages?

 

[Alan Glennon]

Don't forget Honda is also a family name. At infospace, I found 250+ people with that last name.

Also, I'm assuming your xxxxxxxxxxHonda name couldn't be interpreted as something else, like: Rhonda.com, McMahonDA.com, or ihatecarsmadebyhonda.com

 

[almarti2]

Please think about the numbers given in describing this situation. This company claims to have spent 5 million on promoting their name. 20,000 might sound like a big number to you but it surely isn't for a company with strong revenues and an operating margin. In fact for them to recover and protect their mark, they will only be spending 2/5 of a percent of the cost of promoting the name! Additionally, if they can recover attorney's fees, the only thing it may cost them is time and upfront payment.

Furthermore, you have to pursue and protect your marks in order to retain a valid claim to them. Legitimate business mark owners are really getting tired of cybersquatters that "coincidentally" have their domain name. 20,000 is a low number here, they could push their costs (and yours) to a 100,000 very easily. Do you have much cash on hand? It's getting harder to file personal bankrupcy...

Give it up.

 

[DNQuest.com]

Don't forget Honda is also a family name. At infospace, I found 250+ people with that last name.

Also, I'm assuming your xxxxxxxxxxHonda name couldn't be interpreted as something else, like: Rhonda.com, McMahonDA.com, or ihatecarsmadebyhonda.com

If you read the entire thread, you will see the domain matches exactly with a car dealership. Please read everything before posting. I see your new, so you may want to read the older TM thread and you will see why I have responded the way I have.