Sale or lawsuit

[CrazyChicken]

First off, thanks for taking the time to read. This is a question from a friend...

My domain is unique and not a common word plus i own the trademark in my country. A billion dollar company tried taking my domaim via UDRP even though i regged the domain 2 years before their inception and i have a trademark. After failing at a UDRP in late 2000's, they offered $100k which i refused since i was using the domain at the time for my business. They do no business in my country but they do have trademarks in many countries including the USA but not my country.

Company is trying to go public in USA now to raise capital for expansion into other countries. I am currently open to selling to fund my business and possibly expand further into my own country. Their company has a current valuation of around $15 billion. My domain is 6 chara long.

FYI the domain recieves about 30k visits a month netting me about $4k per month in parking revenue since i took down my website in 2011. The majority of the traffic is from their customers based on analytics.

Would like to know what is a good price to sell and would it be legal to approach them now even if i own a trademark.

 

[Ategy]

Your "friend" needs to take down any and all ads that imply any affiliation with them or any product/service they offer. Otherwise they will file another UDRP and they will very likely win. They could also pursue you with trademark infringment depending on the ads being displayed.

If I were your friend I'd remove all ads instantly .. and I would put up the old business site .. even if it's not real. Then approach the company saying he's "thinking" of closing the business, and say the 100k offer would help make that decision easier!

 

[alcy]

so let me get thsi straight. your friend has been making 50k per year since 2011 using that company image (as in, ads/trafik related to that company on your parked page).

that's like 300k profit.. perhaps its best to just give it free to them at this stage, and hope they don't ask for this money back?

 

[Kate]

Would like to know what is a good price to sell and would it be legal to approach them now even if i own a trademark.

How can we advise on price without knowing the domain ?

The other aspect is that you're saying the domain is currently parked, and you think you're monetizing traffic from customers of that company. The sponsored links could possibly get you in trouble. The fact that you have a TM, and that the domain has been used in good faith in the past, doesn't mean you can start targeting your competitors by switching to a totally different business model. One famous example is MySpace.co.uk (but the original decision has been reversed).
https://m.theregister.co.uk/2008/04/29/myspace_domain_dispute_nominet_davies/

I personally wouldn't think of approaching a company that filed a UDRP against me. It's such an unfriendly and downright hostile act, almost like being sued.

And you say the domain has been parked for years, during all that time they could have got in touch with you again, seeing that the domain is no longer being used for business. My feeling is that they have given up on the domain. They're probably using something else today, and the window of opportunity may have passed. In fact, it could be new management in charge of the company now, and they may have forgotten about that old story, or have a blurry recollection of the events. They may not care anymore.

 

[CrazyChicken]

My friend was using it for his company's website since 2000 to 2011. The reason i said most of the traffic was definitely for the other company is because its a much bigger company.

Why should he give it to them for free and why would he owe them anything?

 

[CrazyChicken]

Your "friend" needs to take down any and all ads that imply any affiliation with them or any product/service they offer. Otherwise they will file another UDRP and they will very likely win. They could also pursue you with trademark infringment depending on the ads being displayed.

If I were your friend I'd remove all ads instantly .. and I would put up the old business site .. even if it's not real. Then approach the company saying he's "thinking" of closing the business, and say the 100k offer would help make that decision easier!

KIND NOTE: The UDRP was brought on after the page was parked for a while due to redesign of his website. They still lost against him. In the "legitimate use" section even. His parking was covered since he owned the domain and has trademarked it before the other company ever existed.

I left one thing out because i wanted to see what the room would say first. They tried suing him in his country court system and the suit was thrown out.

 

[CrazyChicken]

so let me get thsi straight. your friend has been making 50k per year since 2011 using that company image (as in, ads/trafik related to that company on your parked page).

that's like 300k profit.. perhaps its best to just give it free to them at this stage, and hope they don't ask for this money back?

The name is so unique, he will always serve ads pertaining to the other company. But like i said, he came first with both use and trademark, so i think he has a right to park his domain if he wants. Please see my other comment for clarification.

 

[Domainscoop.com]

your friend is very lucky guy i must say that. if you are chicken, then he must be crazy shark

 

[CrazyChicken]

How can we advise on price without knowing the domain ?

The other aspect is that you're saying the domain is currently parked, and you think you're monetizing traffic from customers of that company. The sponsored links could possibly get you in trouble. The fact that you have a TM, and that the domain has been used in good faith in the past, doesn't mean you can start targeting your competitors by switching to a totally different business model. One famous example is MySpace.co.uk (but the original decision has been reversed).
https://m.theregister.co.uk/2008/04/29/myspace_domain_dispute_nominet_davies/

I personally wouldn't think of approaching a company that filed a UDRP against me. It's such an unfriendly and downright hostile act, almost like being sued.

And you say the domain has been parked for years, during all that time they could have got in touch with you again, seeing that the domain is no longer being used for business. My feeling is that they have given up on the domain. They're probably using something else today, and the window of opportunity may have passed. In fact, it could be new management in charge of the company now, and they may have forgotten about that old story, or have a blurry recollection of the events. They may not care anymore.

Amazing how you put all that together.

The current board has been trying to buy the domain but they are nowhere close to the $100k price offeredby the previous management years ago. The are using something else but substitutes will always be just that. They still make offers every year.

I dont mention the domain because google exists. The financials are private but since you dont know the domain, its fine to share finacials i think..

 

[CrazyChicken]

your friend is very lucky guy i must say that. if you are chicken, then he must be crazy shark

I think he is very damn lucky but he has a family and things are not going great business wise for some time now so he's trying to consider his options.

 

[VRdommy]

First off, thanks for taking the time to read. This is a question from a friend...

My domain is unique and not a common word plus i own the trademark in my country. A billion dollar company tried taking my domaim via UDRP even though i regged the domain 2 years before their inception and i have a trademark. After failing at a UDRP in late 2000's, they offered $100k which i refused since i was using the domain at the time for my business. They do no business in my country but they do have trademarks in many countries including the USA but not my country.

Company is trying to go public in USA now to raise capital for expansion into other countries. I am currently open to selling to fund my business and possibly expand further into my own country. Their company has a current valuation of around $15 billion. My domain is 6 chara long.

FYI the domain recieves about 30k visits a month netting me about $4k per month in parking revenue since i took down my website in 2011. The majority of the traffic is from their customers based on analytics.

Would like to know what is a good price to sell and would it be legal to approach them now even if i own a trademark.

There a lot of specifics to know before anyone can give proper advise on this.
That being said from the details you have stated, HE has the option of a WIPO case if they are using the trademarked name unless it was abandon. But as I say, a lot of detail are dependent for that.
But, I'm not sure why you took the site down with income. You may have lost rights with WIPO by taking down your TM biz, but I'm not sure how that plays with WIPO now.
So something sounds missing or fishy with this story.

Traffic has value if it is type-in or search traffic and you have long term numbers/demographics for each.
Can't value the name without knowing it.
Best guide would be 2x (last 2-3 year 'average' net income) +?name value.
Traffic values are dependent on how targeted for what field(s) and the quality of the data.
(the how and why folks are landing there... what exactly they are looking for)
You might check adsense keyword charges for some indicators but I think I would work my own biz from that traffic and re-target it myself. You might be able to make more than the value of a sale every year.

Your friend is netting you 30k visits and $4k an month ?...be careful how you word your hypothetical's.

But from everything you have stated, I think you would NEED to sell this as a working biz with the TM because a new owner will not have the same rights. The name goes with the biz and TM.
So you need to get it out of parking and get it hosted with the content of that TM biz.
Only you can do this since you are the registrant before their use of it (you have rights)
If I buy it, I'm back to where you were with UDRP. But I will loose.

'your friend' has missed out on several opportunities and options are shrinking the more you are not doing with this. Cut a deal or do the work. If they find a adequate name and put money behind it, you have nothing but parking revenue for as long as that lasts. If you are not using your trademark, it will be considered abandon sometime. Sit on your hands long enough and you have nothing.

 

[BrandVenue]

A company worth $15B and currently preparing to go to public I think it's once in a lifetime opportunity for any domain owners. If the domain is exact match of company name and the company is currently using another extension or longer version of a domain then I think they will desperately need the domain (now or in near future) unless they try to rebrand to a new name.

But he should be careful about parking the domain and earning $4K/month by misleading the traffic to competitors. These days you can't guess if an udrp judge will allow or deny a complain unless the term is generic like King.com or Queen.com etc. Your friend may lose a lifetime opportunity for some $4K/month earning. I think putting up old website will be a good idea since that will prove "legitimate interest". After putting old website renew the domain for 10 years, sit back, relax and wait for a nice offer.

For domain price I would suggest your friend to find a way to negotiate for an upfront price + some % of company stock. I think negotiating to $500K - $1M cash range is pretty solid, your friend own the domain, they need the domain and they are capable to pay. On the other hand $100K-$200K cash and another $100K-$200K worth of company stock sounds good too. In any case, only $100K cash is way too cheaper imo. These days startups without much profit record spends five figures to secure their exact match domain name.

 

[Kate]

The current board has been trying to buy the domain but they are nowhere close to the $100k price offeredby the previous management years ago. The are using something else but substitutes will always be just that. They still make offers every year.

Then I don't really understand why you are asking if it's okay to approach them. You just have to wait until the next time they submit an offer. And this time you reply that they have a once in a lifetime opportunity to buy the domain if they are prepared to make an offer you can't refuse. You'd lose the upper hand by making first contact.
Is it because your friend is in need of money and cannot afford to wait ?

 

[CrazyChicken]

Y does eve

Then I don't really understand why you are asking if it's okay to approach them. You just have to wait until the next time they submit an offer. And this time you reply that they have a once in a lifetime opportunity to buy the domain if they are prepared to make an offer you can't refuse. You'd lose the upper hand by making first contact.
Is it because your friend is in need of money and cannot afford to wait ?

Yes that is why he is asking if its a good idea to approach them now. This is all in response to his needs. I think everyone here is either thinking about this too simply or maybe not grasping the situation fully.

Like i said i cant give you certain info, but i was only asking for opinions on possible value based on the numbers i gave.

 

[CrazyChicken]

A company worth $15B and currently preparing to go to public I think it's once in a lifetime opportunity for any domain owners. If the domain is exact match of company name and the company is currently using another extension or longer version of a domain then I think they will desperately need the domain (now or in near future) unless they try to rebrand to a new name.

But he should be careful about parking the domain and earning $4K/month by misleading the traffic to competitors. These days you can't guess if an udrp judge will allow or deny a complain unless the term is generic like King.com or Queen.com etc. Your friend may lose a lifetime opportunity for some $4K/month earning. I think putting up old website will be a good idea since that will prove "legitimate interest". After putting old website renew the domain for 10 years, sit back, relax and wait for a nice offer.

For domain price I would suggest your friend to find a way to negotiate for an upfront price + some % of company stock. I think negotiating to $500K - $1M cash range is pretty solid, your friend own the domain, they need the domain and they are capable to pay. On the other hand $100K-$200K cash and another $100K-$200K worth of company stock sounds good too. In any case, only $100K cash is way too cheaper imo. These days startups without much profit record spends five figures to secure their exact match domain name.

Thanks for your response.

So even though my friend owns a trademark before the other company, bought the domain 2 years before the other company was ever formed and has been the sole owner of the domain, had an online business but still has a physical store in his country and he still might lose it because he parked it?

 

[DNGear]

Why dont we file a WIPO against that company like they are infringing your domain.(To get some attention), provided you have the TM.

 

[CrazyChicken]

Why dont we file a WIPO against that company like they are infringing your domain.(To get some attention), provided you have the TM.

I know i have kept you guys in the dark about the domain which means you cannot even verify the TM but my question is based on the fact that the TM is secured. Had the TM for more than a decade. Still active.

I know that TM law can be very tricky so im just looking for those with knowledge and experience on the matter. Im all ears.

As far as your suggestion, my friend has not the capital to do that currently but still, he does not operate in the same market. If you read my OP carefully i think i covered that my friend owns the dot com but does not operate in the US. The bigger company operates in the US.