Tricky situation with pending TM owner inquiring into domain I own

[Nametree]

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?

 

[MapleDots]

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.

I had the exact same situation (still do) and I will give you the best advice you're ever going to get on this one.

Take the domain off any for sale site, point it to a generic business page you own (shows use) and say nothing more. Ignore all emails from this company unless they are an offer. If they make you an offer respond sorry not interested at this time. If they really want it they will come back higher.

The less you say and do the better off you are. Anyone you hire to represent you will have to clean up your mess so start by not making any more mess.

Let it play out, say nothing and leave the job to a qualified legal representative if (and when) the time comes.

 

[hookbox]

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!

Owning a domain store called OwnYour.com isn't going to help you much if they come knocking with a udrp. Just sayin'

 

[Nametree]

Owning a domain store called OwnYour.com isn't going to help you much if they come knocking with a udrp. Just sayin'

Not sure if this is relevant, I know there have been UDRP situations where one argument for a transfer decision was the fact that the owner sells domains, but I've seen just as many or more where the panel says having a domain for sale is acceptable and not in and of itself a proof of bad faith. If being a domain reseller were a proof of bad faith in and of itself, I don't know that any of us would be here.

Of course, unless it can be proven that one specifically purchased a name to target the Complainant's business, and/or one has a history (or portfolio) of targeting trademark owners.

 

[MapleDots]

Not sure if this is relevant, I know there have been UDRP situations where one argument for a transfer decision was the fact that the owner sells domains, but I've seen just as many or more where the panel says having a domain for sale is acceptable and not in and of itself a proof of bad faith. If being a domain reseller were a proof of bad faith in and of itself, I don't know that any of us would be here.

Of course, unless it can be proven that one specifically purchased a name to target the Complainant's business, and/or one has a history (or portfolio) of targeting trademark owners.

Domaining has been recognized by the panels as a legitimate business and in itself will not lose you a case. It is when we do stupid things like make a logo that looks like another companies logo that we get into trouble. Ultimately domainers say or do things that give the company ammunition against them.

My reply (when I think tm is involved) is...

"This domain is on my development list and I am not interested in selling at this time"

Say no more and they will have nothing against you and an experienced tm lawyer will have them for breakfast. They can always offer more money and when they get to an amount you like you can accept.