.tv .tv TM Dispute (Popular common name / surname)

[claudedauman]

Hello Everyone,

About two months ago I purchased a .tv domain name for my bookkeeper's daughter. It is her daughters first name. This name is in the top 40 in terms of popularity. I acquired it in the aftermarket. This name is also also used by a major producer of consumer goods.

I renewed it for the max period (7 years) and asked my bookkeeper to create an account as custodian for her daughter. She did and I attempted to push the name. As it turns out, she did not receive the request for approval for transfer (may have been a typo in her email). Two weeks later, I received notice that the transfer was cancelled.

I have been very busy over the last few weeks as has my bookkeeper. We have spoken about reinitiating the transfer but have needed to put it off. Today I received an email from the counsel for the consumer goods company. As it turns out, the domain was pointed to Sedo when I acquired it and had ads relating to their products. I have already redirected the servers to an empty page.

How would you handle this? I really thought it was an amazing gift for her daughter. I hate to have to take it away.

Claude

 

[DU]

I think I would:

Using Alice as the name. Use MotherName or "Custodian"

Setup email account of "MotherName/Custodian"@Alice.TV
Change the Registrant Whois "MotherName/Custodian"@Alice.TV
Transfer the domain making sure that the Nameservers stayed the same. If you change them also setup a corresponding email (or make sure they use the same email via GoogleApps or whatever)

----
I'm not sure I would respond to the email depending on what it said and to what account it was sent. I'd be inclined to ignore it if it was just a feeler. If it sounded serious I would just be completely honest.

The domain was purchased and held temporarily on behalf of a friend. They now own the domain in the care of their daughter as an investment. I wouldn't mention parking or anything else at all.

That's it. I find it unlikely that you will meet the bad faith criteria if the domain is held for someone of that name and they have an email setup on it.

If they risked a UDRP? It would likely have to be filed against the new "MotherName/Custodian"@Alice.tv and again explain it's simply an asset for the child - EXACTLY what you told them in your response. It's honest, it's consistent and it's clear.

I would also make sure that I received the emails and NOT the mother because I'm likely to be more prepared to handle it.

 

[markhers]

Claude,

If it was me I would pay my domain attorney to write a letter (or write it myself if I didn't want to spend the money or didn't have the money and could write coherently) stating everything you just said including and especially that the domain was pointing to sedo when you acquired it - and that you had no idea nor interest in whatever income it was generating thru sedo and show them the stats to prove it - offer to send them all the income it made since you acquired it and it has been going to sedo "capitalizing on their tm" (50 cents, 10 dollars? i doubt much). Explain that it is in the process of getting transferred to "Alice" as that was the intent when you registered the domain and "Alice" will be using the domain for her own purposes that will in no way infringe on the trademarked product or service they have decided to sell under the brand name of one of the 40th most popular names in the country blah blah blah...

And then i would apologize for any confusion this has caused.

And perhaps add that if there is any further issues regarding the matter please do not contact "Alice" the new domain owner because she has nothing to do with the "issue" they have complained about (which is you making money on their tm for 2 months while you attemted to transfer the newly acquired domain to the new owner) and that any further complaints regarding this matter that your responce letter has not resolved will be forwarded to your attorney blah blah blah again.

And then i would apologize for any confusion this has caused again.

I would do something like that. A domain attorney would do it best for not much money.

Hope this helps,

Mark

 

[DU]

Claude,

If it was me I would pay my domain attorney to write a letter (or write it myself if I didn't want to spend the money or didn't have the money and could write coherently) stating everything you just said including and especially that the domain was pointing to sedo when you acquired it - and that you had no idea nor interest in whatever income it was generating thru sedo and show them the stats to prove it - offer to send them all the income it made since you acquired it and it has been going to sedo "capitalizing on their tm" (50 cents, 10 dollars? i doubt much). Explain that it is in the process of getting transferred to "Alice" as that was the intent when you registered the domain and "Alice" will be using the domain for her own purposes that will in no way infringe on the trademarked product or service they have decided to sell under the brand name of one of the 40th most popular names in the country blah blah blah...

And then i would apologize for any confusion this has caused.

And perhaps add that if there is any further issues regarding the matter please do not contact "Alice" the new domain owner because she has nothing to do with the "issue" they have complained about (which is you making money on their tm for 2 months while you attemted to transfer the newly acquired domain to the new owner) and that any further complaints regarding this matter that your responce letter has not resolved will be forwarded to your attorney blah blah blah again.

And then i would apologize for any confusion this has caused again.

I would do something like that. A domain attorney would do it best for not much money.

Hope this helps,

Mark

Much better answer. Guess who has more experience with this kind of thing?

 

[markhers]

Much better answer. Guess who has more experience with this kind of thing?

Not from experience. Just seems like the logical truthful response to an unfortunate misunderstanding. :imho:

 

[*AllThings.tv*]

Claude,
Drop me an email and I can tell you about my experience and give you a local referral.

If it is generic and they cannot show intent to profit off their trademark, then I think you have a good shot.

One thing to note...while ads might have been served on the domain, did you collect parking revenue or was this putting money solely in SEDO's coffers. If the latter, this serves as further evidence that it wasn't the result of any intent on your part to profit from their TM.

 

[dr manos]

That's why i like the fact that sedo banned me from parking revenue

 

[MattheP]

If it is generic and they cannot show intent to profit off their trademark, then I think you have a good shot.

Unfortunately, if it was parked with sedo with ads related to their product, and they took screenshots etc., they already have proof of "bad fait" registration, regardless of revenue.

Of course, it doesnt mean you have to give them domain right now.

 

[claudedauman]

Thank you all so much for the amazing feedback!

I never did list the domain with any brokerage or parking services as I had no intention of selling the domain or collecting revenues. Whatever click pennies were earned over the short period (if any) went directly to Sedo.

I'll keep you informed as this resolves.

 

[Vito]

Hey Claude,

Im terribly sorry about this.

I was looking in my Sedo account to see if I could find any info on that domain as to see if I even earned a few cents or not in the past coupla years...and I cannot find any info on that domains stats at all.

I just created a thread asking if anyone knew how to find out info/stats/revenue of a domain that WAS in our account a while ago but is no longer in our accounts...
http://www.namepros.com/domain-name-discussion/729369-there-way-get-parking-click-info.html

No one has replied yet, but I seriously doubt if we can see any stats on a domain we dont own anymore.

If you'd like, I can contact sedo and explain to them what happened and they can pull up the records of that name in my account and i can forward that info to you.

I seriously doubt I made even a whole dollar on that domain in the past 2 years, but most likely I made nothing at all on that domain.

Either way, This lesson has lead me to now forward all of my domains to a brand new portfolio site of mine (http://www.DomainSales.tv) where this will not and cannot happen anymore. I am in the process of forwarding them all right now...having a problem forwarding my Name.com domains for some reason, but thats a whole different topic.

Whatever you need, even a letter from me exlaining that I was just holding it for a domaining flip to a potential endUser one day, with that same first name, or a letter of my ignorance listing it in my Sedo for the purposes of having an investment of mine in a world wide established trusted domaining escrow house and not thinking of the clicks amounting to anything since so very few of my domains do amount to any money at all to brag about.

Whatever you need, just let me know.
Best of luck to ya,
Vito

 

[claudedauman]

Hey V,

Nothing to be sorry about. Thank you for offering your assistance.

By the way, I really like your DomainSales.tv web site. It brought to my attention a few five figure sales which I had missed.

Best,

Claude