question UDRP question

[Mr. Holgrave]

Hi All,

Scenario:
Company wants to take away a 20 year old domain name (bought at expired auction) that they say infringed because it was parked for 1 day, and apparently served related ads during that day. It was then moved to a landing page stating that it was for sale via an offer. They send demand letter and give 7 days to hand it over or else, after making lowball offer that was rejected.
If the registrant decides to sell it to another person during that 7 days, does that domain name then get "washed"? Would selling it to someone else give the name a new lease on life without a parking mark against it? The name would not be immediately recognizable to probably 9/10 people by the way. I'm curious about the "chain" of responsibility in a situation like this.

Thanks

 

[Kate]

Let's try a real world analogy:
You have a car and the mechanic tells you that the brakes are defective and in need of urgent replacement. He says the car is dangerous and unfit for driving. Then you immediately proceed to sell the car to a third party without disclosing the facts. A few days alter the buyer has an accident and suffers injuries due to brake failure, and is tipped off about those defects that you chose to conceal at the time of the sale.
Can you be held liable and prosecuted ? You can.

TL;DR version: knowingly selling tainted merchandise is unethical and a shitty move.

 

[Mr. Holgrave]

Let's try a real world analogy:
You have a car and the mechanic tells you that the brakes are defective and in need of urgent replacement. He says the car is dangerous and unfit for driving. Then you immediately proceed to sell the car to a third party without disclosing the facts. A few days alter the buyer has an accident and suffers injuries due to brake failure, and is tipped off about those defects that you chose to conceal at the time of the sale.
Can you be held liable and prosecuted ? You can.

TL;DR version: knowingly selling tainted merchandise is unethical and a sh*tty move.

That wasn't the intent of my question. My question is, by transferring a domain does it break the chain of whatever small problem the complainant had with it in the first place? Let's say the name is H**.com, and for one day the parking page directed to boots by a company called H**. Then, the owner sold the name H**.com to someone else before a UDRP was filed. Would H**.com be protected since it 's new registration was "innocent".

 

[Kate]

Here is one example of UDRP:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1641

It appears to the Panel that this is a classic case of “cyberflight” in which a respondent transfers the domain name to a new registrant in order to avoid a complainant initiating proceedings in relation to the domain name. In these circumstances panels have treated the most recent transfer as the relevant date of registration for the purposes of the determination under this element of the Policy...

Based on my own recollection I would say trying to blur the chain of ownership will do more harm than good when the case is examined by a Wipo panel. A change of ownership whether genuine or faked is unlikely to move the panel.

 

[Mr. Holgrave]

Here is one example of UDRP:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1641

Based on my own recollection I would say trying to blur the chain of ownership will do more harm than good when the case is examined by a Wipo panel. A change of ownership whether genuine or faked is unlikely to move the panel.

Thank you. So playing hot potato doesn't clean the potato. I figured that it would be more like a car getting a parking ticket, and then being sold. The new owner wouldn't be responsible for the parking ticket. I guess it doesn't work that way. So, this means that every investor is at risk of buying a hot potato.

 

[hxp]

Hard to judge without knowing the domain, but the fact they made an offer before threatening legal action is a + point for you. You can show potential RDNH.

&I agree with @Kate. You shouldn't try to "wash" the domain. That looks very bad on you.

IMO, no matter what you do, don't just hand over the domain. Explore all your options and, worst case scenario, defend yourself against the UDRP. You don't have to use a lawyer if you can't afford one, but you can still respond and make a case for yourself.

 

[karmaco]

The take away should be to check any domain you buy for trademark and don’t put it on an ad filled page for sale. It needs to be handled differently.

 

[Name Trader]

@Mr. Holgrove. [B][/B] All that has been said is true. But you have a good argument, which is trademark owners are supposed to protect their trademark. Letting their domain expire, isn't exactly protecting their trademark. I think you have at least an evens chance using this fact and @hxp's point in any UDRP. I don't know the value of this domain. But you would be well advised to consult a lawyer well versed the UDRP procedure. If they go that route. Even more so if they take you straight to court.

 

[Corey]

Have you searched the Trademark database yourself @ Trademark Electronic Search System (TESS) or researched/read @ Trademark basics | USPTO ?

Cheers
Corey

 

[Mr. Holgrave]

I'm 2 months into domain investing and have had had some really huge sales lately. I'm learning my way around all areas of this business fast, and did talk to an attorney. I will report back once things are settled. Hopefully next week sometime. I think education is important for everyone. Thanks for the feedback.

 

[Name Trader]

You need to speak to an attorney well versed in UDRP and Trademarks. Speaking to a corner-shop attorney is probably going to be a waste of money (maybe).

 

[wwwweb]

It doesn't matter if the ad was served for 1 day, or 100 days, if they have evidence, and you have a new ownership record, and a lack of proof to why, or for what use you are using the domain that incorporates their mark you are most likely at the losing end of this deal.

Given the lack of details, nobody here can give you an exact answer, and until the UDRP proceeds, and is decided, not even a lawyer can tell you exactly what is going to happen.

For you to get a letter so quickly, this company must be on the lookout for people attempting to profit from their mark, and they seem willing to let it be known that they are not to be messed with.

 

[xynames]

"because it was parked for 1 day, and apparently served related ads during that day" --- depending on which came first, the domain or the trademark, assuming there is a TM, this parking with ads could actually help your case:
https://www.namepros.com/threads/ow...business-with-same-name.1048004/#post-6416891

Further, a simple PPC page does not necessarily exploit the TM (not necessarily bad faith, let alone for just one day).

Also consider second half of this post:
https://www.namepros.com/threads/its-over-heidipowell-com.1040422/#post-6359587

Basically you are tossing a lot of terms out there like "infringed," but....

IS there a trademark, and if so, WHEN was it issued?
WHEN was the domain registered?
Are the domain and TM an exact match?
Even if an exact word match, will the domain be used for a product/service that will likely be confused with whatever the mark covers?

There are considerations on both sides before making a determination as to whether there is likelihood of confusion, bad faith use. I mean, WHAT will the domain be used for ultimately? What if the TM is for soap and the domain ends up being used for selling cell phones. You follow? And only bad faith use (assuming there even is a TM) will result in loss of the domain.

 

[Kate]

Hard to judge without knowing the domain, but the fact they made an offer before threatening legal action is a + point for you. You can show potential RDNH.

If they first made an offer without mentioning TM infringement, yes it looks like an abusive tactic.
Therefore, the Panel could determine that "the parties were engaged in legitimate negotiations for purchase of the domain name and have differing opinions over the market value—which cannot amount to bad faith under Policy" (quote: imec.com UDRP)

Here is one more example of UDRP ruling that may be relevant to the issue at hand:
The domain name: sog.com
Link to decision: http://www.adrforum.com/domaindecisions/1726464.htm
The interesting bits:

7. Numerous persons over the years have made offers to purchase the Domain Name, as will be shown herein.
8. In fact, one of these prospective purchasers was Complainant itself, as will be shown herein, although this fact was not disclosed in the Complaint.

34. And remarkably, on March 2, 2007 – over 10 years ago – Mr. Chris Cashbaugh, Marketing Director of Complainant itself, contacted Respondent and asked if Respondent would sell the Domain Name. Respondent did not respond, as Respondent had just purchased the Domain Name itself. Nowhere in the Complaint was it disclosed that Complainant had previously tried to purchase the Domain Name from Respondent, and then waited 10 years to try a ‘Plan B’, namely this UDRP proceeding.

37. To-date, the Domain Name has remained parked using a commercial domain name parking service which populates the Domain Name with advertising and which publically lists it as being for sale. At no time did Respondent ever target these advertisements to Complainant or its products. All of the ads were automatically selected by the parking service provider based upon its own algorithm. In fact, at all material times Respondent set the Domain Name’s subjectmatter to “sports”, with no intention at all of any ads coming up that related to knives.

40. Accordingly, although there were apparently inadvertent and unintentional instances of knife-related advertisements showing up, this was not the only type of ad, nor even the predominate type of ad that consistently showed up.

41. Moreover, there was absolutely no intention to show knife ads whatsoever, and Respondent adamantly denies that it would ever intentionally infringe upon a trademark or bring any such exposure against its valuable investment quality domain name. Accordingly, any objectionable use of the Domain Name in connection with the limited instances of knife related ads was purely unintentional and was corrected immediately upon the first notice of same, which was this UDRP proceeding. At no time prior did Complainant once complain about the advertisements and had it done so, Respondent would have immediately rectified same.

TL;DR: it all depends on the circumstances, that are specific to the domain name and the current holder.

Disclaimer: this is not qualified legal advice.

 

[eurorealtor]

Hi All,

Scenario:
Company wants to take away a 20 year old domain name (bought at expired auction) that they say infringed because it was parked for 1 day, and apparently served related ads during that day. It was then moved to a landing page stating that it was for sale via an offer. They send demand letter and give 7 days to hand it over or else, after making lowball offer that was rejected.
If the registrant decides to sell it to another person during that 7 days, does that domain name then get "washed"? Would selling it to someone else give the name a new lease on life without a parking mark against it? The name would not be immediately recognizable to probably 9/10 people by the way. I'm curious about the "chain" of responsibility in a situation like this.

Thanks

Does H**.com means 3 letters domain? Have you ever offered them the domain on your own? What's the trademark name? What's the trademark category/s? Three letter word/shortcut is too generic to loose UDRP IMHO, unless the parking page offered their product or service. Good luck tho.

 

[Name Trader]

If they first made an offer without mentioning TM infringement, yes it looks like an abusive tactic.
Therefore, the Panel could determine that "the parties were engaged in legitimate negotiations for purchase of the domain name and have differing opinions over the market value—which cannot amount to bad faith under Policy" (quote: imec.com UDRP)

Here is one more example of UDRP ruling that may be relevant to the issue at hand:
The domain name: sog.com
Link to decision: http://www.adrforum.com/domaindecisions/1726464.htm
The interesting bits:

TL;DR: it all depends on the circumstances, that are specific to the domain name and the current holder.

Disclaimer: this is not qualified legal advice.

Wow! Show what a good lawyer can do for you, IMHO

 

[4better]

Makes me wonder why over the past 20 years that company did not do anything to protect its name by acquiring that particular domain name. Realizing then that the new owner had it parked for a single day with ads automatically selected by parking service provider the complainant comes out with all this hullabaloo sending a threatening letter and trying to get the domain name by intimidation after its prior lowball offer was turned down. I may be wrong but sounds pretty like RDNH for me.

 

[Name Trader]

Selling on the domain to another buyer makes both culpable of trademark infringement. If in fact trademark infringement is proven. Lanham Act, https://en.wikipedia.org/wiki/Lanham_Act (from memory).

If this is a 1 person panel, and a poorly supported response from the Defendant, I could easily see this awarded to the Complainant. Get a good lawyer, if this is already in, or goes to, UDRP.

 

[jberryhill]

They send demand letter and give 7 days to hand it over or else, after making lowball offer that was rejected.
If the registrant decides to sell it to another person during that 7 days...

I never fail to be amazed at how people think there is some magic to "deadlines" which attorneys pull out of their ass in c&d letters.

 

[xynames]

OP hasn’t given us enough information to make a definitive assessment. See, my post above.

The answer to his question depends on whether there is a viable infringement claim to begin with.

Just spinning our wheels speculating without more.