UDRP Question

[UltraNames.com]

Right now someone filed udrp for a name that i own.

Here are the facts,

My name is fully english. Ex: HappyBike.com (Just as example, not real name.)

Company is from spain and has a main domain name as something like this one; HappyBici.com

Happy is english and Bici is spanish for bike.

They own the name last year and forgot to renew it.

I catched it.

When i search google "happy bike", their website comes 5th. First one is happybike.ca and second one is happybike.in

When i searched term on trademark search engine there is no result. But they own the trademark in their country. Also as i understand they had a trademark on wipo.

I tried to sell this name to them and also other firms that associated with same name because i thought that it was a generic name and it wouldnt be a cybersquatting attempt.

Also after they filed udrp i stupidly threatened them by saying if they wont pay for the name i will give it to happybike.ca which is a firm in a country that speaks english so i told them they are deserving it more then they do.

Company is rich. They spend $20M on advertising per year.

Those are all i remember.

 

[Kate]

Well you gave them the ammo they needed. It doesn't matter if you had a legitimate purpose.

You know what I think ? Work out an arrangement with them. I think they can still cancel the wipo and recover half the fee. It makes sense financially and it's less aggravation for everyone.
If the wipo is terminated, then there is no ruling. It's better for you, because rulings are published on the wipo website for the whole world to see. Then your name will be permanently recorded in google along with the cybersquatter label. I wouldn't want that. It could even jeopardize your position in future dealings, and leave you open to more disputes.

PS: trying to sell them a name they dropped, either by accident or deliberately => not smart...

Disclaimer: I am not a lawyer, this is just friendly advice but not qualified legal advice.

 

[DomainVP]

They also did $1000 offer and i refused it.

He did not see UDRP coming otherwise he would have accepted that offer.

You did the right thing not accepting the offer.

A $1k offer actually will weigh in your favor.

Complainant was willing to pay an amount that exceeded registration and renewal costs of the domain. This can be used as an example of them recognizing that you are the owner AND can be levied as a RDNH (reverse domain name hijacking) against them since they are using a UDRP as a second solution since they didn't like your price.

I hope you fight this and don't just bail.

It doesn't cost money to respond to a UDRP if you do it yourself.

 

[DomainVP]

Right now someone filed udrp for a name that i own.

Wow, first off congrats! That means someone wants your domain bad enough to spend $1500 at minimum.

if you win you can keep it

I've got to be honest. You don't sound very serious about fighting this, nor winning this.

I tried to sell this name to them and also other firms that associated with same name because i thought that it was a generic name and it wouldnt be a cybersquatting attempt.

Not so good...

Although you are not in their jurisdiction, this leaves you at the mercy of the panelist. If you had it parked and have done nothing with the domain, I don't think you are in for a pleasant outcome.

You should have started reading TM/IP law the second you got this domain, way before you even consider doing outreach to the company to previously owned to domain.

You knew the company was still in operation and by reaching out to sell it to them without any development or use on your part, while they still have a TM in another country - I can't say any of that will weigh in your favor.

Actually i pushed the name to a friends account who is not in domain business actively i did it before i get wipo mail. So there is also this thing the mailing that i did before push is not associated with the new owners info. So i actually kinda gifted the domain to this friend and told him that if you win you can keep it. Do you guys think that the ammo that i gave to the company is now useless for the new owner?

This sounds incredibly sketchy and will only go into the favor of the complainant.

Legally, if you had good faith and then 'gifted' or sold the domain to another party, that good will extends to that party. However, since you demonstrated bad faith then that bad faith may pass onto the new owner.

What to do now?

Claim that the generic nature of the domain allows you to offer it to whomever uses a similar name, and that the complainant does not have an exclusive monopoly on the term online worldwide - use the other sites using the similar term as example.

Focus on the fact that neither the action of suggesting an offer for the domain nor the current use of the domain are done in bad faith; since it is a generic domain.

Establish an eMail address with the domain and claim it's use. It's a little too late after the UDRP is filed, but maybe the panelist will give you some leniency.

Refute every point that they make, address everything; look up some similar cases for previous procedure decisions.

Good luck.

 

[Kate]

I dont have any experience about udrp, thats why.

Check out wipo.int, and read some recent domain decisions. You can also perform a free text search, or by complainant/domain name. You might even find out that the complainant has already filed in the past (and won). I have seen too many cases similar to yours, to think you are not in a good position.

I found two decisions that vaguely remind me of your case:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-0949
http://www.wipo.int/amc/en/domains/decisions/text/2010/d2010-0131.html

 

[Kate]

Actually i pushed the name to a friends account who is not in domain business actively i did it before i get wipo mail.

The panel could still find that this was a ploy, because you expected some kind of backlash. There is even a word for that: cyberflight.
Why push a name away while you're trying to sell it ? Doesn't make sense at all, and panelists won't buy it. IMHO.

 

[Kate]

I've read a lot of decisions, that's why I am not that optimistic. Just based on what the OP says, it's an easy finding of bad faith in my book. Notwithstanding the cyberflight issue, there are enough facts against him.
Maybe he should seek out legal advice, provided the name is worth fighting for. If it isn't then why fight ?

 

[Ritesh Chauhan]

They also did $1000 offer and i refused it.

Personally, I should have accepted their offer...in order to stay away from the case of cyber squatting..

Its 50-50 chances to win UDRP, even if you have not used domain in bad faith...

Better strategy is to get good amount, and stay away from UDRP.

Evem most of the companies initially tries to get the domain below 1500$.
But if domain owner dont give satisfactory response, then they forced to file UDRP...

 

[jamesosix]

They also did $1000 offer and i refused it.

Should have took it for a hand reg/dropcatch!

 

[jamesosix]

What you have in your mind about dropcatch i dont know but i paid 300$ for this name. So it is not a good profit if you thonk on it.

Oh right..

Here are the facts,

They own the name last year and forgot to renew it.

I catched it.

Sounds like a drop catch to me.

Either way $700 profit still beats a lost UDRP imo.

 

[bashariqbal]

He did not see UDRP coming otherwise he would have accepted that offer.

 

[johnn]

You sound like you know exactly what you are doing so why post and ask other people opinions?

 

[james haw]

So who will be the "respondent" in this UDRP, you or your friend?

Friend

That's some friend..

 

[hxp]

From the info you've provided, I don't think you're in trouble.

Have a read (specifically #4 a, b, and c): https://www.icann.org/resources/pages/policy-2012-02-25-en

You can count 4(a)(i)&(ii) out, IMO. 4(a)(iii) is where you might face issues, due to the conversation that took place between you - See: 4(b)(i).

I would take some time to consider how much I value the name, and how valuable the name is in general. If you think it's worth the effort, you can at least respond to the UDRP (See: https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en#5).

Remember, they must prove 4(a)(i), (ii), and (iii), in order to win the litigation. If, in your response, you can effectively counter those three points; you stand a chance.

 

[UltraNames.com]

He did not see UDRP coming otherwise he would have accepted that offer.

Really thank you

 

[alcy]

that sucks. never had one of these myself. but I feel for you.
I'd remember these things:
remember that the richest are also the cheapest out there
+ the richest have a lot of lawyer cash.

prsonally... closest I ever came to this stuff.. is a cyber lawyer email warning for one of my keyword+keyword domains.. where one of keywords is a very common english dictionary word that apparently is some sort of a bigshot financial institution in USA actual name (so something like "Ventures" bank let's say)...
I guess they can't file for your domain if its called say NiceVentures.com... but.. I presume they can send a nice official lawyer letter like this to cover their basis a bit... the lawyer told me to ensure the domain is not used for anything related to that finanancial institution.

does not look like you'll be getting a sale out of it.. so I hope you do what you gotta do not to lose money on it.

gl.

 

[hxp]

As i said that i pushed it to a friends acc, maybe the conversation wont be a proof because the convo cant be associated with the new info of ownership.

Lol. In that case, they might just have wasted a decent sum of money...

(Unethical hack?): Just say you already sold it for $xx,xxx. If they want want the name, they should take it up with the new owner. If they decide to litigate with the new owner, they should pay (at minimum) his out of pocket costs. Now at: $xx,xxx.

 

[hxp]

The panel could still find that this was a ploy, because you expected some kind of backlash. There is even a word for that: cyberflight.
Why push a name away while you're trying to sell it ? Doesn't make sense at all, and panelists won't buy it. IMHO.

If he transferred the name before any notice/filing/talk of the UDRP, I think he's safe. It might raise questions but, legally, @serhatkotan should no longer be responsible.

 

[Blueforever]

Just read this from Morgan Linton http://morganlinton.com/do-the-righ...ton.com+-+Startups+++Domain+Names+++Branding)
Whether you agree or not. Personally I don't.

 

[UltraNames.com]

They also did $1000 offer and i refused it.

 

[Ritesh Chauhan]

I didnt say it is not a dropcatch, i said you cant put dropcatch and handreg in same basket it is meaningless. Without the information of how much i paid for this dropped domain you are telling selling it for 1000 is good. How could you know?

Cool bro,

There is no debate, that who is wrong and who is right..
Everyone here sharing their own opinions and views over your case...

As per my understanding, comment was intended with the meaning that its better to stay away from UDRP.
you had not not disclosed price at what you have purchased the name. so one can not judge the case...

Each person might understand the case in different way, as I also have doubt that someone could pay above 1000$ for dropcatch of two word .com domain. but its all depends upon the domain name, so I can't comment over it.

Better advices can be received form experts here, only if you disclose the purchase price for your domain...

Wishing you good luck, and hope you win UDRP.

Regards,
Ritesh

 

[jamesosix]

I didnt say it is not a dropcatch, i said you cant put dropcatch and handreg in same basket it is meaningless. Without the information of how much i paid for this dropped domain you are telling selling it for 1000 is good. How could you know?

Because you was aware a company did not renew it either on purpose or by accident and tried selling it back to them.

 

[UltraNames.com]

You did the right thing not accepting the offer.

A $1k offer actually will weigh in your favor.

Complainant was willing to pay an amount that exceeded registration and renewal costs of the domain. This can be used as an example of them recognizing that you are the owner AND can be levied as a RDNH (reverse domain name hijacking) against them since they are using a UDRP as a second solution since they didn't like your price.

I hope you fight this and don't just bail.

It doesn't cost money to respond to a UDRP if you do it yourself.

Will fight bro but dont want to spend money... But gonna make my defence

 

[jamesosix]

Based on the fact in your OP you said caught it, catches generally dont cost more than a hundred dollars.

So, yeah, I can say it was a decent offer based on what you pay.

Look, you do whats right for you. Im done in here, thanks.

 

[Domainstore]

I had a UDRP against a domainame of mine.
I won because point III of the bad faith that they couldn't proof enough (I had removed the sponsored links, and argued -what is true- that I didn't get parkingrevenue out of it, because while before the UDRP had begun there were sponsored links, I could proof that the registrar doesn't pay ANY parkingearnings). I also could clame I didn't know the company at all. (before the UDRP began there was no contact at all between them and me). They didn't first send an email saying "hé we have a Trademark". They just simply began a UDRP.
I don't know the exact domainname of you and that makes it difficult to give advice.
You could win, because of point 1 : Is it the exact similar word or +/- the similar word ?
What you also haven't given in this thread is the EXTENTION. This is important to know. Their TM is in Spain.

The point is : A UDRP costs time. Even if you win. (or your friend wins).
BTW : Is it against your friend the UDRP has began or yourself ?

And in what stage is it ? I mean : First you get an email with the whole text of the UDRP from Switzerland in an attachment where you can read all the arguments, but that's not the actual beginning of the UDRP. It's the warning that an UDRP will begin against you, but you already get all the arguments they will use in detail. And only a week or 10 days (I don't remember exactly) later or so, you get the UDRP itself. Read the texts very good (as you want to do your own or your friends defence), before the actual UDRP-start has begon. Read that very good and consider this => 1/ Can I win this ? 2/Is this whole thing wurth it ?? (wurth your reputation I mean)
I state this last sentence because of the following ==>
It is indeed so that if you loose your name will stay published as the looser of the UDRP, and this with the argumentation that has been used is published online. If you NOW immediately call to Switserland and email them that they can have the domain for free, and state also that you, don't do this because you admit "any guilt whatsoever", but "because they had the name in the past", your name certainly won't be published, or it will be published that there has been reached anagreement . (I don't know if you can do that still once the UDRP actually has begun => this is something you have to investigate elsewhere, I don't know or call the person in Switserland that is in the email). And it may be that if you do it before the UDRP is actually sent to you officially maybe NOTHING is published at all.
Do phone with Switserland to know more about it.

For the future => When there is a trademark it is adviced that if you contact the ones with the trademark to sell it to them (or you are contacted by them as is the case because they offerred 1.000 USD), you can ask (in the phone!) an amount LOWER then 1.500 USD, because that's what they have to pay to start a UDRP.
That's why in your case I would maybe have agreed with 1.000 USD.
Now it's sadly too late to get money out from them, I guess, because of the UDRP.
Of course you can call the company and say that you accept the 1.000 USD if they don't start actually the UDRP, but not because you find you are guilty but as a courtesy because they lost their domain. (but, and that's something I don't know => Maybe they have already been obliged to pay 1.500 USD, for the work that switzerland has done already by sending you the warning and the text).
Even if they don't accept, i would choose for my reputation and withdraw your claim (in an email to Switserland).

=> In any case if you withdraw, "without that being admitting guilt" => you may loose 300 USD (the price you payed for the domain), but your REPUTATION STAYS INTACT.

Without knowing what domain it is I can't give better advice then this.

Kind regards