Dynadot

question Reverse domain hijack attempt. It's a first one for me.

NameSilo

twiki

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Never had anything like this, but it was bound to happen sometime. Here's what happened.

We own a domain since 2021. I'm using "we" since I trade as a business.

Anyway this is a made-up domain that I regged in May 2021 and been renewing it. It's a good short 7-letter .COM domain that obviously this company wants. I won't post the name here, but anyway it's comprised of a main word and a modifier. For example if the word was "shop" it could be something like "shopify" dot com. Anyway again this is a fictitious example.

So what this brand new trademark owner did was the following:

- They registered the .io correspondent domain.io in January 2022. At the time we had this domain already for about 8 months.

- Since then, there was only a plain Jane website there, sort of "coming soon". No service, no product.

- In October 2022 they filed for a trademark. At this time, notably the trademark is still in PENDING status (obviously this was too little time for their claim on the brand to be approved).

- Today they reached out to Sedo and had our name listing taken down.

I'm baffled how Sedo can do this without a minimal effort in establishing the situation and correctness of the claim. We have owned the domain for more than 1.5 years and anyway even by Whois you can tell registration predates their filing by a lot.

I have submitted a request to Sedo to reinstate the domain, sent them original registration and awaiting their decision. I am very curious how this will go.

Also today they sent us an email with the following contents in brief:

- That they are the owners of the trademark (note, it's still very new and in pending status)
- That they saw the domain listed for low xxx range (FALSE - it was never going to be that low as it's a good name; also it's not a price I ever used for any of my names)
- That they informed Sedo about us doing cybersquatting and extorting a trademark owner
- That they suspect we belong to a group in our country they had ongoing disputes with another TM (not the case, we never had any such ongoing disputes; this phrase makes me think this is a serial hijacker).
- That they hope to settle the deal by offering us that low xxx $ amount for the domain via escrow dot com.
- If not, they will have to pursue "lengthy and time consuming" legal action.
- So we should "please accept the offer."

What do you make of this? How you would respond to it?

Notes:

- For now we sent no reply.

- We are however moving the domain to another registrar, more trusted in handling this correctly as per an firm UDRP resolution.

- The lander is now on a make offer lander via Afternic. (it was already).

- I've informed my Afternic rep about this hijack attempt just to be aware.

- I've contacted our legal team and will be looking into finding future legal support in the US if it deems necessary at some point. I know it's most likely just an UDRP max but still want to get to the bottom of this.

Final note, if I look at the email I don't know if I should cry, be stunned or laugh out loud. What is this, a legal trademark warning, an insult, a lowball bribe, or a 3-in-1?

(edit: even if so, I'm not taking this lightly; very much dislike that someone comes later and want to just take a name I brainstormed and created that they have no rights over)

If their intention was to get this domain for cheap, then that's not going to happen anymore. I'm going to keep the domain and even if unsold I'm going to develop it. I don't like squatters on both side of the process.

Side note if this was a legitimate request I would have thanked them for letting us know, handed them the domain with no regrets and written off the less than $20 spent for it.

Great world we live in.
 
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FAC

Top Contributor
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7,583
Never had anything like this, but it was bound to happen sometime. Here's what happened.

We own a domain since 2021. I'm using "we" since I trade as a business.

Anyway this is a made-up domain that I regged in May 2021 and been renewing it. It's a good short 7-letter .COM domain that obviously this company wants. I won't post the name here, but anyway it's comprised of a main word and a modifier. For example if the word was "shop" it could be something like "shopify" dot com. Anyway again this is a fictitious example.

So what this brand new trademark owner did was the following:

- They registered the .io correspondent domain.io in January 2022. At the time we had this domain already for about 8 months.

- Since then, there was only a plain Jane website there, sort of "coming soon". No service, no product.

- In October 2022 they filed for a trademark. At this time, notably the trademark is still in PENDING status (obviously this was too little time for their claim on the brand to be approved).

- Today they reached out to Sedo and had our name listing taken down.

I'm baffled how Sedo can do this without a minimal effort in establishing the situation and correctness of the claim. We have owned the domain for more than 1.5 years and anyway even by Whois you can tell registration predates their filing by a lot.

I have submitted a request to Sedo to reinstate the domain, sent them original registration and awaiting their decision. I am very curious how this will go.

Also today they sent us an email with the following contents in brief:

- That they are the owners of the trademark (note, it's still very new and in pending status)
- That they saw the domain listed for low xxx range (FALSE - it was never going to be that low as it's a good name; also it's not a price I ever used for any of my names)
- That they informed Sedo about us doing cybersquatting and extorting a trademark owner
- That they suspect we belong to a group in our country they had ongoing disputes with another TM (not the case, we never had any such ongoing disputes; this phrase makes me think this is a serial hijacker).
- That they hope to settle the deal by offering us that low xxx $ amount for the domain via escrow dot com.
- If not, they will have to pursue "lengthy and time consuming" legal action.
- So we should "please accept the offer."

What do you make of this? How you would respond to it?

Notes:

- For now we sent no reply.

- We are however moving the domain to another registrar, more trusted in handling this correctly as per an firm UDRP resolution.

- The lander is now on a make offer lander via Afternic. (it was already).

- I've informed my Afternic rep about this hijack attempt just to be aware.

- I've contacted our legal team and will be looking into finding future legal support in the US if it deems necessary at some point. I know it's most likely just an UDRP max but still want to get to the bottom of this.

Final note, if I look at the email I don't know if I should cry, be stunned or laugh out loud. What is this, a legal trademark warning, an insult, a lowball bribe, or a 3-in-1?

(edit: even if so, I'm not taking this lightly; very much dislike that someone comes later and want to just take a name I brainstormed and created that they have no rights over)

If their intention was to get this domain for cheap, then that's not going to happen anymore. I'm going to keep the domain and even if unsold I'm going to develop it. I don't like squatters on both side of the process.

Side note if this was a legitimate request I would have thanked them for letting us know, handed them the domain with no regrets and written off the less than $20 spent for it.

Great world we live in.
Seems they are threatening and trying to manipulate you just to get the name for cheap. If you registered the name way before they even filed for the TM which is still pending, I would not bother with them, don't reply and raise your price even more to teach them a lesson. They won't win this in a UDRP and if they do, that would be ridiculous, but I doubt it.
 
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twiki

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Seems they are threatening and trying to manipulate you just to get the name for cheap. If you registered the name way before they even filed for the TM which is still pending, I would not bother with them, don't reply and raise your price even more to teach them a lesson. They won't win this in a UDRP and if they do, that would be ridiculous, but I doubt it.
I agree, and in fact it is the course I've been on.

Thank you for your comment and confirmation.
 

Gabriel360

Established Member
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It'll be difficult to establish bad faith in a situation like this. I wouldn't bother with them.
 

twiki

Top Contributor
Impact
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It'll be difficult to establish bad faith in a situation like this. I wouldn't bother with them.
It's actually impossible to establish bad faith, since our registration predates them by a lot.

One cannot infringe on a trademark from the past, a trademark that will be registered later.

Edit: Even if we pitched them the sale, as the original owner of the domain we can do that safely. It's not like we "cybersquatted" by getting the name once their brand has been filed.
 
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Recons.Com

Top Contributor
Impact
17,900
It's actually impossible to establish bad faith, since our registration predates them by a lot.

One cannot infringe on a trademark from the past, a trademark that will be registered later.

Edit: Even if we pitched them the sale, as the original owner of the domain we can do that safely. It's not like we "cybersquatted" by getting the name once their brand has been filed.

It is not impossible. But you'd have to do something dumb like placing ads on it that would be closely relevant to them or place content that can be confusingly similar or do something else that would indicate that you are targeting them. If the name is ad-free content-free lander, then, yes, it should be impossible.
 

jberryhill

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John Berryhill, Ph.d., Esq.
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Gabriel360

Established Member
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This is why you must never threaten the wrong person. Especially, when you have a shitty claim.

Now, they'd are facing potentially damaging consequences. Plus, they'd likely have to pay through the nose now if the ruling is against them.

By the way, I couldn't stop laughing when I saw the plaintiff going after the trademark they intend to use to hijack the domain name.


I'd be interested in the outcome of this case.
 
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jberryhill

Top Contributor
John Berryhill, Ph.d., Esq.
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karmaco

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The actions of Sedo are unacceptable. They aren’t there to litigate the legitimacy of your continued ownership. They should have told them their hands are tied without a court order or UDRP finding. Other than that its between the seller and them and Sedo should remain neutral.

Like in many other cases, they are likely bluffing hoping you are an easy target and will turn that name over. Or that you don’t know any better or both.
 

jberryhill

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John Berryhill, Ph.d., Esq.
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Other than that its between the seller and them and Sedo should remain neutral.

They can't do that.

Cybersquatting liability can extend to more than just the domain registrant:

https://www.law.cornell.edu/uscode/text/15/1125

(d) Cyberpiracy prevention
(1)
(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;


Look at the language I highlighted. One can be liable if one "registers, traffics in, or uses" a domain name meeting all of the other conditions.

Obviously, a domain marketplace can be held liable for cybersquatting by people who register domain names and list them on the marketplace, since the marketplace may be deemed to be "trafficking" in the domain name by facilitating its sale.

So, no, Sedo can't stay neutral, and they have been named in ACPA suits in the past.

Typically, they review TM claims that are sent to them, and they also have a blocklist for names for which they have reached agreements with certain large TM owners.

However, their review is not perfect, and typically, if the right facts are pointed out to them, they are reasonable about correcting an error.

But it is entirely up to them what they allow to be listed and what they do not, because it is their ass on the line if something goes sideways.
 

twiki

Top Contributor
Impact
23,408
They can't do that.

Cybersquatting liability can extend to more than just the domain registrant:

https://www.law.cornell.edu/uscode/text/15/1125

(d) Cyberpiracy prevention
(1)
(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;


Look at the language I highlighted. One can be liable if one "registers, traffics in, or uses" a domain name meeting all of the other conditions.

Obviously, a domain marketplace can be held liable for cybersquatting by people who register domain names and list them on the marketplace, since the marketplace may be deemed to be "trafficking" in the domain name by facilitating its sale.

So, no, Sedo can't stay neutral, and they have been named in ACPA suits in the past.

Typically, they review TM claims that are sent to them, and they also have a blocklist for names for which they have reached agreements with certain large TM owners.

However, their review is not perfect, and typically, if the right facts are pointed out to them, they are reasonable about correcting an error.

But it is entirely up to them what they allow to be listed and what they do not, because it is their ass on the line if something goes sideways.
Thanks for this.

I have reached out to Sedo, provided proof to them and awaiting their reasonable fix of the error.
 
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I hired John Berryhill when someone did this to me. He called their bluff and essentially blocked the trademark registration. I still own the domain.
 
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karmaco

Top Contributor
Impact
11,414
They can't do that.

Cybersquatting liability can extend to more than just the domain registrant:

https://www.law.cornell.edu/uscode/text/15/1125

(d) Cyberpiracy prevention
(1)
(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;


Look at the language I highlighted. One can be liable if one "registers, traffics in, or uses" a domain name meeting all of the other conditions.

Obviously, a domain marketplace can be held liable for cybersquatting by people who register domain names and list them on the marketplace, since the marketplace may be deemed to be "trafficking" in the domain name by facilitating its sale.

So, no, Sedo can't stay neutral, and they have been named in ACPA suits in the past.

Typically, they review TM claims that are sent to them, and they also have a blocklist for names for which they have reached agreements with certain large TM owners.

However, their review is not perfect, and typically, if the right facts are pointed out to them, they are reasonable about correcting an error.

But it is entirely up to them what they allow to be listed and what they do not, because it is their ass on the line if something goes sideways.
I didn’t say they aren’t culpable at all. I said they should follow what the registrars follow and not make decisions out of fear or arm twisting but legal documents indicating cybersquatting which they don’t have. They didn’t even look at the dates.
 
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jberryhill

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John Berryhill, Ph.d., Esq.
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I said they should follow what the registrars follow

The problem is that the registrars have immunity. On the one hand, both Sedo and the registrar are providing neutral services, and the domain selection is up to their customers. On the other hand, the law is literally different for registrars, because they have an exception written into it:

https://www.law.cornell.edu/uscode/text/15/1114


(II) A domain name registrar, domain name registry, or other domain name registration authority described in subclause (I) may be subject to injunctive relief only if such registrar, registry, or other registration authority has—

(aa) not expeditiously deposited with a court, in which an action has been filed regarding the disposition of the domain name, documents sufficient for the court to establish the court’s control and authority regarding the disposition of the registration and use of the domain name;

(bb) transferred, suspended, or otherwise modified the domain name during the pendency of the action, except upon order of the court; or
(cc) willfully failed to comply with any such court order.

...


(iii) A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.


The first part says that as long as a registrar deposits control of the domain name with the court, then they are not subject to monetary damages. They can only be order to "do something" with the domain name. The second part says that as long as they are just providing ordinary registration and maintenance of the domain name, then they are not liable for monetary damages.

The ACPA and the UDRP were drafted in the same year, and the general counsel for Network Solutions at the time provided advice to both drafting groups. The entire point of his efforts, and the cross-reference between the ACPA and the UDRP, was to make sure that registrars and registries were not sued into oblivion as domain names became an essential commercial identifier and utility in the new century.

There's been a lot of litigation around what are core "registrar services" for which a registrar is immune from monetary damages, but the upshot is that, in general, if the registrar is just doing its registrar thing and providing the UDRP, then they are not liable under the ACPA.

Sedo isn't immune from monetary damages, and that's why they can't do the same thing that registrars do in these circumstances. They are literally providing "trafficking" services under the ACPA, and are on the hook for damages.

He called their bluff and essentially blocked the trademark registration.

Yep, one thing to consider when someone threatens you with a pending registration application is that they aren't going to get any friendlier if that they aren't likely to get any friendlier if they eventually get a registration. So, depending on the broader factual circumstances, you might want to consider a Letter of Protest against their application or eventually opposing the application if it reaches allowance. Opposition can become complicated, but also provides an opportunity to potentially negotiate a resolution.
 

twiki

Top Contributor
Impact
23,408
Some good news.

Our legal team has already provided support and we are about to send a carefully reviewed response to the (let's say) buyer. It's basically informing them they are in error and that there is a time limited counter-offer to buy the domain now, after which the price will likely increase - just as the market trend currently is.

Also, Sedo has acknowledged their error and reinstated our listing.

Thumbs up for Sedo support recognizing this and fixing the error.

Should the buyer go ahead with UDRP, I see no grounds in them having any success. Should they take legal action we will get prepared to fight for the name even in US courts if needed, although we're US based.

Such hijackers have risen in numbers a lot lately.

We need to not let guard down, and protect ourselves against them. Don't let them have your domains for nothing. Fight and keep them.

Edit: Big thanks to all those who posted comments here. A great example of how the finest of Namepros will get in to help when such troubles occur. When in a similar situation yourself, don't forget to ask for help here.
 
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twiki

Top Contributor
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OK - this is an update for everyone who has been watching this thread: at this time things are clear.

( Although technically there's one last step but there's nothing further to stop this outcome ).

We have reached a discounted price deal with the buyer.

- First we have sent our reply to the buyer and made them come into their senses.

- The buyer (sort of) acknowledged their initial impression was wrong. However they said they will continue to pursue the domain in the future, and that we can't sell it, because they will oppose and take it from whoever buys it). ( Actually wrong, we could have sold it to another party. OR just kept it and perhaps even launched something non-competing there - we have the means and ideas - but it just looked immature to me to proceed in that way. )

Anyway clearly the buyer wasn't happy to pay the retail price of the domain.

- The buyer sent a higher counter-offer in the XXX range that we accepted (BIN was roughly $2.5k). End of the day, we have plenty of volume (Edit: domains to buy; actually more than we can keep, from several sources; so at this time I am selling drops I register wholesale to a permanent buyer and in other ways).

And this amount, even with a large discount, goes helping the bottom line. He also paid right away via Dan imported transaction (5% commission).

- At this time we are just waiting for the domain to finish transfer to Dan by the end of the next week, and then we get paid. Not going to post the sale though due to the friction involved in all this.

Notes: Getting into a long legal battle for both sides would have been costly and a burden, probably for both sides. So I think it's wise to get some cash in hand now instead.

Although we would have recovered the money but in time as they had no chance of winning in our opinion, it would have caused time lost, distraction for us and keeping us away from our job of making money. That's why we accepted the deal.

Takeaway: If you can get to a win-win situation for both sides, that's ideal. There's plenty of fish out there (domains) and we have a particularly large pool. No reason to enter a legal battle and waste time and focus on unimportant stuff.

Also, I'd mention: Ego hurts business. This was an ego-filled buyer, but we know better than to listen to ego. You know, the smart one is the one who concedes. Edit: We treated this professionally despite the buyer being acid and threatening and disrespecting etc. This helped the process and they changed tone later. Now seem almost friendly awaiting to get their name.

Thanks for all answers! It was a good exercise for us, now we are much more prepared for a future similar situation, if ever.
 
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poweredbyme

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(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

Am I free to change my personal name as Mr. Coca Cola as long as I don't make profit from it?
What if I decide to make profit from my personal name? Can they take my name back from me. If they can, will I live rest of my life as noname?
 

poweredbyme

Top Contributor
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It's actually impossible to establish bad faith, since our registration predates them by a lot.

There might be one possibility, if they can prove you knew their new brand prior to the legal paperworks.
 

twiki

Top Contributor
Impact
23,408
There might be one possibility, if they can prove you knew their new brand prior to the legal paperworks.
Not in this case. Brand was filed one month ago, while the domain existed for 1.5 years. I made it up.
 

poweredbyme

Top Contributor
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Not in this case. Brand was filed one month ago, while the domain existed for 1.5 years. I made it up.

For new brands, new products, new investments,
marketing research, feasibility assetments, capital/investors negotations, research on best location in the country might take 1.5 years or more.
 

poweredbyme

Top Contributor
Impact
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It's actually impossible to establish bad faith, since our registration predates them by a lot.

Nothing is impossible. If governments, states, laws are involved, everything is possible. I would try to learn about the capabilities and sources of the other side before taking an action.