Threatening reply to an outbound email

[Trent1000]

I've received the following reply to one of my emails:

There is no trademark registered under the keywords of the domain name. He is not the previous/current owner of the domain name, I registered it after doing an in depth research on it. So it's almost funny as he says "my .com name".

The name is not even close with his business name / domain.
The domain is representing an industry with hundreds of potential end users, his domain is a terrible brandable.

I certainly haven't blackmailed him.

Should I take it seriously or is this a bluff to get the domain name for free? Never run into a situation like this before despite the fact that I sell domains on a weekly basis via outbound.

Advice would be appreciated.

 

[equity78]

All the Above Documents are Clearly talking about ...
Counterfeiting, Miss Use, Damage/Bad faith, Direct Misuse of trademarked Objects through website Or Indirect Misuse through Internet Tools that come with the domain name. .....

" Panelists will look at the totality of the circumstances in each case ".... This line sumsup everything.

I don't think Mark Zuckerberg can get Facebook.NET from Mr. X through using legal clauses.
He Still have to pay the BIN price on Sedo or Flippa if he thinks he need the Dot Net of it...
Like he payed Few million dollars to buy " FaceBook.com " from Mr. Y as he used to have only " TheFaceBook.com " during the launch of his Social Media Business.

I am talking about Domain Registering ( as creative Name Finding in connection to Godaddy / NetworkSolutions etc ... ) as a business by itself which is just limited to holding the name and reselling... Not about how to do business on internet using brand image of trademarked names.

@jberryhill explained to you that's not true. Facebook owns Facebook.net and they have filed and won over 88 separate UDRP actions.

 

[Ramesh Kumar G]

@jberryhill explained to you that's not true. Facebook owns Facebook.net and they have filed and won over 88 separate UDRP actions.

Bro ! i used facebook.NET as ana refernce example.

I am not Getting one point clear ....
Say for example i registered Facebook.io. Now Facebook wants this extension.
Do you mean i should not set a price on this and sell it though i own registration rights on it ?
Or Do you mean , if i get an email from facebook to transfer the domain name to them , i must transfer the Domain name ownership to them ?

Do you Mean to say ,
If a Company Trademarks a Name, Then by default all the Domain name TLDs and other Domain Name versions that contain the Trademark by default belongs to the trademark Holder ?

 

[equity78]

Bro ! i used facebook.NET as ana refernce example.

I am not Getting one point clear ....
Say for example i registered Facebook.io. Now Facebook wants this extension.
Do you mean i should not set a price on this and sell it though i own registration rights on it ?
Or Do you mean , if i get an email from facebook to transfer the domain name to them , i must transfer the Domain name ownership to them ?

More than likely Facebook will come for .io and probably just file a UDRP or look to make an example (which some companies do) and file under ACPA.

Here is an example where Greg Ricks, won the UDRP, the company lost. They took him to court under the ACPA, got the name, $50,000 and legal fees.


There was also, more recently, the “just bulbs” case, Bulbs 4 East Side Inc., d/b/a Just Bulbs v. Fundacion Private Whois/ Gregory Ricks, D2013-1779 (WIPO January 13, 2014) (Complaint denied, but successful in ACPA action, Bulbs 4 E. Side, Inc. v. Ricks, (S.D. Tex., Houston Div. July 18, 2017 together with an award of damages for $50,000 and attorney’s fees)..

Read the full article here

 

[Ramesh Kumar G]

More than likely Facebook will come for .io and probably just file a UDRP or look to make an example (which some companies do) and file under ACPA.

Here is an example where Greg Ricks, won the UDRP, the company lost. They took him to court under the ACPA, got the name, $50,000 and legal fees.


There was also, more recently, the “just bulbs” case, Bulbs 4 East Side Inc., d/b/a Just Bulbs v. Fundacion Private Whois/ Gregory Ricks, D2013-1779 (WIPO January 13, 2014) (Complaint denied, but successful in ACPA action, Bulbs 4 E. Side, Inc. v. Ricks, (S.D. Tex., Houston Div. July 18, 2017 together with an award of damages for $50,000 and attorney’s fees)..

Read the full article here

Thanks for this Article.
Should i say , " My eyes a bit More Open " now.
I am under the illusion that registering any domain name gives ownership on the domain and is eligible for resale ( if the name isn't used as a website and interferes with other company trademarks ).
Is there any source on Internet where we can Find guidelines to test if a name we want to register doesn't fall into trademarks trap ?

 

[Ramesh Kumar G]

It is also understood that a whole lot of idiots register domain names corresponding to well known trademarks.



Because, in the US, that's exactly what the relevant law says:

https://www.law.cornell.edu/uscode/text/15/1117

(d) Statutory damages for violation of section 1125(d)(1)

In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.

---

That reference to 1125(d)(1) is to 15 usc 1125(d)(1) which is the section of US trademark law which addresses cybersquatting. So, yes, the $100k is "instead of actual damages".




https://www.wipo.int/amc/en/domains/search/overview3.0/#item33

3.3. Can the “passive holding” or non-use of a domain name support a finding of bad faith?

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

Thanks for taking time and replying to this jberryhill.
Though i never registered and Popular Existing business names Domain extensions basing on business ethic sense ,
But still i used to think , Untill unless the Domain is used for earning money , its ok to register and resell any name be it has trademarks on it.
Thanks for letting me know that this is a huge web of Subtle links and Barbwire connections that in any given situation , only works in favour of Big Bosses

It is also understood that a whole lot of idiots register domain names corresponding to well known trademarks.



Because, in the US, that's exactly what the relevant law says:

https://www.law.cornell.edu/uscode/text/15/1117

(d) Statutory damages for violation of section 1125(d)(1)

In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.

---

That reference to 1125(d)(1) is to 15 usc 1125(d)(1) which is the section of US trademark law which addresses cybersquatting. So, yes, the $100k is "instead of actual damages".




https://www.wipo.int/amc/en/domains/search/overview3.0/#item33

3.3. Can the “passive holding” or non-use of a domain name support a finding of bad faith?

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

@ jberryhill
Thanks for taking time and giving information on few very important things that i might have took it in lighter vein, which actually are serious concerns while going for domain name registrations and particularly if the names are used as websites.
Though i never wanted to register any extensions of popular trademarked names basing on common sense of business ethics, i used to think that its ok to register and resell such extensions aslong as they are not used as websites.
If my words convey any arrogance ( unintended ), please forgive. I have treated this thread as a casual chat untill i read few articles that have huge web of subtle interconnected network of clauses that only favour only the biggies no matter who is right or wrong ( as u rightly said ).

 

[Mr. Deleted]

This business of mailing things to oneself does not prove anything. Why not simply mail yourself an unsealed envelope, and then you can put whatever you like into it at a later time?

But how is this supposed to work? One sues someone for copyright infringement and is allowed to show up in court with a sealed envelope, open it and “Voila!” everyone is amazed as you pull your original work out of it? Is everyone supposed to bring along their own forensic team there on the spot to confirm that the envelope or it’s contents are genuine?

It’s just bizarre, and is based on a cartoon version of reality. Evidence at trial does not work that way. Do people think this has ever proved anything to anyone in an actual legal proceeding?

I agree. I think he did that after he had for years submitted song lyrics to some organization and then one of them went to #4 on the Billboard charts, and he was never credited, nor got compensated for it, but a simple copyright with the US Copyright Office would have solved that problem... And no, not mailing it to himself.

 

[Mr. Deleted]

3.3. Can the “passive holding” or non-use of a domain name support a finding of bad faith?

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

What about that recent case where a guy was the owner of red-dot.com or something like that, and never used it, while he ran a business on a name like jackhammer.com?