Dominion.Domains

Tricky situation with pending TM owner inquiring into domain I own

Discussion in 'Legal Discussion' started by NameTurtle, Feb 10, 2018.

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  1. NameTurtle

    NameTurtle Upgraded Member Blue Account

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    Hey folks,

    Seeking some opinions on a tricky situation I haven't found information on yet.

    I recently purchased a name through GD Auctions (~$xx) which is a .com name (I can't disclose the name publicly since situation is pending, but for the purposes of this let's call it MediaSomething, a two word name where the first word is generic for the industry). The name has been registered since 2013, having had numerous registrations priorly since 2000.

    The day the name hit my account I received an inquiry from a gentleman "looking to purchase it as a first domain for a project" and asking if I would sell. I replied politely saying I hadn't thought of selling it, but would consider it if he had an offer. He didn't know what it would be worth and tried to get a number from me. I replied with a few Namebio comps of similar names selling in the last year for 4-5 figures, saying I would consider similar offers.

    After a brief search I determined he works for a company that has a pending TM application (record initialized, not assigned to examiner) for the exact match name, and they registered alternative extensions right before reaching out to me. They may have common law trademark rights but they're recent, the company just launched a product in the last few months.

    After some back and forth where I invited them to make an offer if they had a genuine interest, and they kept replying that it was their first domain and mentioned they would like to use it for something akin to a blog - they replied with an offer that was far from the comps I had sent. I politely denied and after being pressed to put a number on it, I averaged out the comps I sent them and proposed a high 4 figure sum.

    They replied declining the offer, saying they would use other extensions instead, but also coming clean about who they are and asking me to tell them who I end up selling the name to so they could send that buyer a cease and desist letter; closing with an invitation to let them know if I ever drop the price. I came back with a brief response dropping the price some to show goodwill, and asking them to make a serious offer considering the comps I had sent. Never heard back again.

    I've owned the name for very little time and I haven't had any ads on it, and since this product is so recent all the parking pages that have been on the name prior to my ownership (according to Screenshots.com/Archive.org) have no connection to the product. I should mention I have a business in the industry the name is in, so I can explain why I purchased it and what my intentions were for it (though I literally owned it for hours before the inquiry, so I've never actually built anything on it). I decided to put the name on Afternic so they would be able to purchase it if they decided to pay the price, so the name has a basic Afternic lander with no ads, just the name and their phone number.

    I haven't dealt with a UDRP before but I've read plenty of decisions and to my understanding I should be in the clear because I haven't used the name in bad faith, I have some rights to it because I work in the industry and have many names like it, I haven't solicited/offered the name for sale other than replying to their inquiry. They've also been deceptive when reaching out to me, and I've seen that be a factor in pro-domainer UDRP decisions.

    Has anyone had to deal with a similar situation? Would you take a lowball offer just to be 100% in the clear, or would you wait it out? This isn't a small company so money doesn't seem to be a problem, they just seem unwilling to actually pay a decent price for it. Do I stand a chance to keep the name or am I playing with fire if I don't sell at their lowball price?
     
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  2. loredan

    loredan Active Member VIP ★★★★★★★★★★

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    Usually if your asking price is $1,000 or lower is going to be cheaper for the potential buyer to get your domain name rather than start a UDRP, as long as you don't get greedy and buyer is happy you can both close a nice deal, hold hands and sing Kumbaya! :)
     
  3. NameTurtle

    NameTurtle Upgraded Member Blue Account

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    The thing is, it's not, it's higher four figures and rightfully so given similar sales. They were aware of the number before they made me aware of their "rights", so they can't claim I'm jacking up the price just because I know who they are - I could have asked for $50k given the circumstances. But I am also irked by deception, so my willingness to negotiate is somewhat depleted. :cyclops:
     
  4. leftfielder

    leftfielder Established Member ★★★★★★★★★★

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    ^^Terrible advice. Don’t act so hard up that you can’t afford to lose this one, and instead of writing a novel, trying to justify and playing with fire, cancel it and let it be.
     
  5. NameTurtle

    NameTurtle Upgraded Member Blue Account

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    I appreciate your comment but if all domainers just cancelled their names or handed them over each time an entitled business owner had a trademark application and/or wanted to grab the name for peanuts, then what the hell are we doing in this business.
     
  6. Kate

    Kate Domainosaurus Rex VIP ★★★★★★★★★★

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    I am not a lawyer but:
    If you bought the domain in good faith, did not target them and could not know about their yet non-existing TM you are ok unless they can demonstrate the opposite.
    However, depending on what kind of purpose you had in mind for the domain - it may be neutered now. At the very least you have to be careful.
    I think they know it, and they are expecting you to flinch, drop the price or ultimately drop the domain. Or maybe they are hoping you will do something stupid so they can file a UDRP against you.
    You may have the perfect domain they don't have, but if you can't use it without causing infringement it's some sort of frozen conflict with no winners :)
    My advice: keep watching, see if they develop a site on the other extensions and track the progress of their TM application. Try to get a clear picture of what they are doing, and what kind of margin you have.
    Many projects do not come to fruition or fail after just a few years. At some point the concern may even go away. You never know.
     
  7. tonyk2000

    tonyk2000 Upgraded Member Gold Account ★★★★★★★★★★

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    I've seen UDRP case (with the Respondent being represented by @jberryhill I think) where such a behavior of Complainant (who also emailed domainer owner and said they are individual or student or blogger etc) was detected and found to be wire fraud (as per the laws of the country the Complainant was located in). The Complainant was acting in bad faith. He lost UDRP.

    Assuming that MediaSomething is indeed generic or descriptive, and assuming that it was acquired without prior knowledge about the buyer, their business and/or their pending TM (for which purpose it would be useful to have some proof and/or common sense logic - different countries of buyer and seller, google searches not showing the buyer exclusively or at all, other similar marks or companies with similar branding, etc) I think it would make sense to simply give them a price, with some references to comparable sales. Depending on the real domain niche and/or buyers size it may or may not be practical to compose an increased price offer - it is not obvious that the buyer needs the domain that much to overpay (vs. normal aftermarket price, in line or below comparable sales).
     
  8. hookbox

    hookbox Active Member VIP

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    When they already start talking lawyer mumbo jumbo it may be time to cut your losses but still try and make a good profit. I would probably let it go for $2500. It's right within range of a UDRP cost and it saves them the hassle of filing it and possibly losing the case. It also saves you the cost to fight it. Take the profit and move on. Just my opinion but always listen to your gut in these situations.
     
  9. alcy

    alcy Active Member VIP

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    its a XX domain to you.
    namebio similar sales can sometimes work and be a guide... but why would you bet all your money they'll work and apply here?

    ask for 1-2k. make nice roi. and sleep nice at nite on your new pillow made of 1-2k 1$ bills.

    gl
     
  10. urlurl

    urlurl Active Member VIP

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    so they have "a pending TM application" - has the TM even been granted or approved, when was the application date?

    they want you to tell them who the new buyer is (if you sell) so they can send them a C&D - WTF



    something smells funny with this co
     
    Last edited: Feb 10, 2018
  11. karmaco

    karmaco Active Member VIP

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    I think it was a mistake to let them press you into giving a figure after you knew what they were up to posing as a poor student , pending TM app etc. You didn’t do anything wrong but you never want to give them ammo. If someone lies and won’t just put out an offer that is a sign to tread carefully.

    They are trying to manipulate you into selling for their price. That’s very obvious. I would cease communication if it was me unless they came back with a fair offer. Or you can sell for their price and be done with it.
     
  12. john888

    john888 Established Member

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    Register it for 5 years. Set up a site on it selling widgets. Trademark similar key words. If they contact you say no longer for sale. If they take you to UDRP defend it and counter sue. I know this takes money but they will burn money also.
     
  13. xynames

    xynames XYNames.com VIP

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  14. NoBS

    NoBS Established Member

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    Much of any good domain will have TM attached either registered or common law. A pending TM registration would ensure I upped my asking price considerably. So long as the mark is not overly unique and your not doing anything stupid... why worry?

    Other than an unfortunate assignment of some derranged UDRP panel...but I don't live in servitude to despotic institutions.
     
  15. DomainVP

    DomainVP Domain Expert Gold Account VIP

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    They don't have a leg to stand on.

    I've dealt personally with people who have applied for a TM and then registered out other extensions.

    Usually this is a company that intends to use the domain/brand and they want to try to secure it through intimidation at a low price if a successful backorder/catch is unsuccessful.

    Everyone uses Snap, NameJet, and DropCatch... but they forgot about Pheenix ;)

    So I caught the domain via Pheenix and didn't think anything of it until a month later when the company contacted me with a $50 US offer. Blah blah TM and bs... little did they know that I do the research before I buy any domain.

    After doing research I saw that a TM application was filed when the domain hit expiration, when pending delete was in its final days they regged out the extensions.

    The domain was generic and the TM was for a generic phrase, there was no way they were going to get this approved by the USPTO. So I backordered it and won.

    Long story short they never bought the domain but another service provider that provided a similar service did for $6500. *No it was not the original company.
     
  16. xynames

    xynames XYNames.com VIP

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    What most don’t realize is trademark validity dates from use - not filing. While filing may be viewed as some notice or proof of use, mere filing alone is not proof of use.

    I.E. First to use takes precedence over first to file.

    So, take a look at that application. What is the claimed date of first use? Keep in mind though that the uspto accepts the date claimed as first use without any real proof - it would be up to a challenger to dispute it and of course such a challenge would generally be made only by someone claiming prior use.

    I could go on for hundreds of pages about the subtleties of intellectual property law as I’ve lived it for years even before I studied it, but just know that there is a lot more to it than most imagine. As far as whether these subtleties will help or hurt your case here, depends on more factors than any real lawyer would want to spend his time on analyzing without pay.

    If you read some of my posts I’ve touched on the basics of copyright or trademark law. Such as:
    https://www.namepros.com/threads/udrp-question.1050523/#post-6440391

    https://www.namepros.com/threads/do...ut-i-never-use-them-why.1049139/#post-6427178

    https://www.namepros.com/threads/ow...s-planning-a-business-with-same-name.1048004/

    https://www.namepros.com/threads/so...pany-based-on-my-domain.1054890/#post-6482086
     
    Last edited: Feb 11, 2018
  17. NameTurtle

    NameTurtle Upgraded Member Blue Account

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    They didn’t tell me they had a pending application, that’s something I found myself after they claimed to have a trademark. I took the C&D as a veiled threat, but the way they put it does seem to imply they acknowledge my ownership predates their rights.

    Could having the domain for sale on afternic present an issue (even though I’m not soliciting them), or would I be better off making sure the name doesn’t resolve to any site?

    I appreciate everyone’s answers and time on this.
     
  18. anon22339

    anon22339 Upgraded Member Gold Account

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    I think you are worrying too much about it. They don't have a leg to stand on. Put up a buy-it-now landing page with a price that will make you happy if it sells. Set it and forget it. They or some other company will come along and buy it eventually. Just have faith and patience.

    Meanwhile, remember that anyone can sue you or file a UDRP against you for any reason whatsoever. It doesn't matter who is right or wrong. Some people are just sue happy. There could be some other name in your portfolio that somebody is seething that you own it and they don't, so they just tell their lawyers to go after you even though they have no preceding rights to the name whatsoever. They simply feel entitled or wronged by you owning it and they are in love with the keywords in the name and covet them deeply. They just feel entitled or wealthy and think nothing of suing you or pursuing you. That's the risk of doing business in America and/or the Western world, for the most part. So, ANY domain name in your portfolio is a potential ticking time bomb for legal risks, not just this one from some company you are currently talking to.
     
  19. Furquah

    Furquah The Captain VIP

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    I might sell it to them much lower price, eg low $xxx to high $xxx instead of getting trapped into long battle of UDRP.
     
  20. rafaelo0

    rafaelo0 Established Member

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    From my view they are a startup that still hasn't proof their concept and have a limited buget so if they haven't got a solid case against you where they're at least 90% sure they will win the UDRP they won't go the extra mile to spend a good amount of their budget just to lose.

    Plus they seem to acknowledge you have the right to own the domain (they know you probably win) and when they "have just a pending TM application" and tell you they have a trademark plus they say "they want you to tell them who the new buyer is (if you sell) so they can send them a C&D" this just smells like trying to hijack the domain and i think it can surely be used in the UDRP in your favor has they clearly seem to have bad faith of intrest.

    they're just trying to intimidate you to hand over the domain for a cheap price or for you to slip up in your email so they get a more solid case.

    In my opinion just cease all communication with them and leave the domain at afternic with a BIN price and their fast transfer program.

    I'm far from being a lawyer and honestly i never dealt with a UDRP (thank god) only research lot's of cases so don't take this as legal advice.

    i'm just giving my opinion and trying to help.
     
  21. BrandVenue

    BrandVenue BrandVenue.com Gold Account

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    Yes you are right. They acknowledge your ownership predates their right that's why they didn't give you C&D but want you let them know if you ever sell the domain to another person so they can send C&D to that person.

    at this point I would suggest you to remove any parking page / domain sale page and put up a coming soon landing page with just your contact info (it will be better if contact email is [email protected] domain you own), removing parking page and adding coming soon landing page will establish that you have legitimate interest on this domain.

    if you can establish that you didn't register / purchase the name just to sell them (tm owner), that you have legitimate interest in this name they will not have a udrp case.

    as they have taken other extensions they will ultimately come for .com too, just be patient and watch the progress of tm and website status of other extensions they have taken.
     
  22. bobbarato

    bobbarato Established Member ★★★★★★★★★★

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    I'm with the others who said go silent and wait for them to come back to you. I might even tell them then that the price went up.

    The "evil" side of me says turn it into a porn site.
     
  23. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    Then why don't you proceed to use it for that?
     
  24. Chris Wright

    Chris Wright NameOpps.com VIP

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    It seems they are serious about getting the .com, since they registered the other extensions. Those are brand protection reg's, they don't really want to operate on those. They just want a discount.

    The C&D comment is a veiled threat. They can't go after you, so they want you to think the domain is poisoned. You would have NO reason on earth to tell them who you sold it to. That is comical.

    That is like ransomware on a brand. Acting in bad faith.

    This is the ultimate defense if a domain ever goes to UDRP. Your legitimate business use shuts down many arguments.
     
  25. NameTurtle

    NameTurtle Upgraded Member Blue Account

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    I suppose I could, but now that I was made aware of the existence of a product/business that operates under the exact name, it appears to me that could be an argument against my use. Besides, my plans weren’t quite urgent, it was more of a purchase made for later development.

    I’ve decided to put a BIN on it at Afternic/Godaddy and let it rest for some time, they’ve since registered a long tail .com so they may be moving on. I may renew it for a few years and forget about it.

    Thanks everyone!
     

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