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question Should I respond to this inquiry?

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cillx

Established Member
Impact
395
I received an inquiry through IP investigation and acquisition team (not a typical brokerage firm) for one of my domain names. It seems they are not a law firm but their testimonies reveal they closely work with law firms. also, It seems they won't reveal who is the client, however, it is obvious who is the client.

The domain name has a US trademark since January this year but they use the exact same name and they have their website on different extensions for a few years now. Also, the company had won a WIPO case for a different domain name recently.

Because of these reasons, the domain name in question is not actively for sale. I have put a website and a few blog posts on it. Not listed on any platform. The reason to purchase this domain name is, it is a really good brand name and it has its own value without this particular company and its website.

I have heard if they inquire about the availability and the price first and then decide to file a WIPO case against me there is a little chance, that I can prove, they did it because of the price I quote to them, hence I had no bad-faith. Anyway in this case, since they use a third party to inquire about the domain, I can't prove the inquiry came from this particular company.

Should I respond to this inquiry or reject it? What is the most prudent thing to do?
 
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The views expressed on this page by users and staff are their own, not those of NamePros.

jhm

Top Member
Impact
11,586
Well, if its got a real trademark since January...maybe look into it (assuming they aren't a a mickey mouse company trying to pull the wool over your eyes)
 
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VadimK

Top Member
Impact
3,352
Your answer to their claim should be:

 
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Impact
431
IMO your response depends on a variety of factors. Do you intend to develop the name more for yourself or for a business? Does the name have much real value to anyone else or this company? How much do you think its worth realistically? Are you in the domain name business to sell names and make a profit or is it a hobby? If its a business you can sell it and make a profit of course. Why are you running scarred or are you running scarred? These are all questions you and only you need to answer for yourself, not necessarily on this or any other forum. Good luck with things!
 
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enterscope

Domain InvestmentsTop Member
Impact
1,280
The issue most domainers face is with Advertising revenue (ppc/parking ads) because you are profiting off a trademark and potentially deceiving consumers into purchasing a product.

I avoid domains with trademarks unless it is a single, common word.

However, just because someone has a trademark on a word or phrase doesn't mean other people can't use that same mark. Over 1000 trademarks for Apple, just as long as it's not the same industry.

I wouldn't reply personally, sounds like too much hassle. Just put a bin up on Afternic and keep the website up.
 
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Clover

Find your luckRestricted (15-30%)
Impact
609
Maybe just say you don't own the domain, they got the wrong person, then set a BIN for a reasonable price for you to get rid of it and move on.

Then they will be faced with the option to buy it and be done, or try to seek a mysterious person will no tracks to follow (lol)

Just an idea, because it seems that your response may or may not dictate if they take you to court or not.

I literally thought of that 1 second before replying so take it at that haha, sounds good enough to me tho, better than no reply...
 
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topdom

Top Member
Impact
1,492
You can try without much risk?: Pretend that you are your friend, and as your friend, tell them "my friend" (you)
told me he would accept this much for this domain if offered by someone. If they contact actual you, ignore them, unless they make that offer. Once they make their offer, list the domain with a slightly cheaper price, and let your friend inform them about it. Also make sure you remain as a separate person (can be complicated depending on the situation..), to create room for plausable denialibility.
 
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koolishman

Top Member
Impact
8,384
I assume your ownership of this DN precedes their TM.
 
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branding

Private InvestorTop Member
Impact
9,348
Hard to give solid advise without knowing the actual domain.

I have developed tons of domains, when an enquiry comes in from the likes of legal departments or IP services I tell them I'm open to selling and ask them what they have in mind.

Don't state a number. If they make an offer I can live with I send them an invoice, if they don't I just ignore them.

Be short and straightforward. Give them as little info as possible to work with so it can't be used against you may they seek legal recourse. Most important, be honest as when shit hits the fan they'll see right through the bs.

Again, that's my general advise which may or may not be the best approach depending on your domain and your domaining strategy.

Study udrps, study tm law basics and you'll make the right decision 99% of the time.
 
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lock

FREE.MARKETINGTop Member
Impact
7,338
Only you know why you registered it but if they are coming after you don't ask us to hold hands. So if you feel you have every right to name then respond with demands.
 
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twiki

Top Member
Impact
24,246
If your ownership of the domain precedes their TM, then you most likely have nothing to worry about.

Reasoning. One cannot infringe on a trademark while the TM doesn't even exist (from the past to the future). The TM obviously can't be enforced on something that happened prior to it even existing. You can only infringe it AFTER it has been registered.

Consult a lawyer, but still, this is the answer - if hopefully you registered the domain earlier than the TM filing.

(Note: debatable though whether it's the filing moment or the actual final issue moment - lawyer can help with that)

Edit: Been in this situation a few times, the owner was a huge local company in my country in each case. Ended up buying the domain from me.

Edit2: If you got the domain AFTER the TM was registered, then it's a risk, but what I did also was to offer them the domain at a reasonable price, less than the costs they would incur with any legal proceeding to get the domain. And I got paid. If it's fast and cheap then they might bite.

In some cases though I simply handed them the domain when things were too hot.

Anyway, it's definitely your choice. This is just random advice from fellow domainers over the wire.
 
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TribeMagnet

Established Member
Impact
102
Generally, you would need to profit in the same industry for names to be an issue, but things can get messy. Do not be dishonest.

@cyberlawyer, thoughts?
 
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cyberlawyer

Established Member
Impact
63
There are many questions that needs answers before this could be replied, like how strong or distinctive trademark is and can knowledge on your part be assumed?

Also if the trademark was only recent, since when the registrant owns the domain name, like others also queried?
 
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