question UDRP Risk outbounding One Word domains?

[MattDomainNames]

Let's say I own the domain name Example dot io (I don't)

Now, lets say I go to Linkedin, identity a hundred companies using this name as their company name, and email them:

"Hello, we are selling the domain Example dot io, are you interested in buying it?"

Am I risking losing this domain to a UDRP if I do this? If they have a trademark for the name "Example" does this change anything?

I'm just trying to figure out how big the UDRP risk is with generic one word domains in outbounding.

I know if it was a made up word, like Facebook & I was outbouding that, it wouldn't be allowed. But I don't know if things are different when it's generic one word names that hundreds of companies are using.

Would appreciate any insight.

 

[Altetra]

Dictionary words are harder to TM, but in any case I would do advertisement of the domain on social medias rather than outbound, or wait for them to come one day, this would be safer.
If you have buy the domain with the specific intention to sell it to a TM company, expect trouble.
You can TM it with intention of use, it will cost about 250/350$ but not guarantee it will pass the registration.
I have contacted companies, but my domains are different than what they have, so I did not get a reply back at all, however I will wait for them to come soon on their knees!

 

[jberryhill]

Am I risking losing this domain to a UDRP if I do this?

I posted an analysis of this type of activity here:

https://www.namepros.com/threads/trademark-infringement-or-a-smart-acquisition.1330437/#post-9208083

One thing I've been advising brokers to do in these situations is to make sure that, whatever they send, their communication mentions that the domain name is being offered to many potentially interested parties. This not only avoids the recipient thinking they were uniquely targeted, but it is also a basic sales technique to create urgency.

I also recently won this case, which involved outbound sales:

https://www.wipo.int/amc/en/domains/decisions/pdf/2024/d2024-1699.pdf

The takeaway from these cases is:

1. If the Complainant is the only reasonably interested party in an inherently distinctive mark, then you shouldn't have the name in the first place, let alone go poking the bear; and

2. Otherwise, you should make it clear in your communications that you are notifying a number of potentially interested parties, of which the recipient is merely one, that the domain name has become available for sale.

Even if you do that, there are always going to be folks who believe they are entitled to your domain name and, certainly, contacting them will only give them what they believe to be evidence of cybersquatting. Since your email to them is going to be used as evidence in the dispute proceeding, then you should think about what that email says to the UDRP panelist who will be deciding that dispute. For example, does your email:

(a) list selling points of the domain name that are not particular to the recipient, such as whether it is short, memorable, a dictionary word or common phrase, can be used for a variety of different applications or industries thus making it a generally valuable name,

(b) mention that the notice itself is being sent to various parties who may be interested in the domain name because it may be relevant to their industry, location, etc.

(c) provide references to comparable domain names on, for example, the DNJournal sales reports that are in some way similar to the domain name you are selling, and mention the price range of those comparable domain names.

Including those points in your email will not only make it a more informative sales communication, but it will also implicitly demonstrate the reasons why you acquired the domain name, believe it to be generally valuable apart from the recipient's particular potential interest, and provide a basis for valuing the domain name that is independent of the recipient's potential limited trademark claim.

Finally, if you can't do those things in your email, it is worth considering whether you should have the domain name in the first place.

The short answer is "Yes, you are raising your risk profile."

The longer answer is "There are things you can do to mitigate that risk to some extent."

 

[jberryhill]

Dictionary words are harder to TM

Dictionary words are hard to claim as a trademark for things relevant to their dictionary meaning, but that is different from saying they are "harder to TM".

Many of the most famous trademarks on the planet consist of dictionary words used for things other than their dictionary meaning:

Coca-Cola is composed of two dictionary words for plants, and is the most valuable trademark on earth. Others include:

Apple

Amazon

Oracle

Corona

Puma

Converse

Target

Carrefour

Marvel

...and many, many more.

 

[MattDomainNames]

I posted an analysis of this type of activity here:

https://www.namepros.com/threads/trademark-infringement-or-a-smart-acquisition.1330437/#post-9208083



I also recently won this case, which involved outbound sales:

https://www.wipo.int/amc/en/domains/decisions/pdf/2024/d2024-1699.pdf

The takeaway from these cases is:

1. If the Complainant is the only reasonably interested party in an inherently distinctive mark, then you shouldn't have the name in the first place, let alone go poking the bear; and

2. Otherwise, you should make it clear in your communications that you are notifying a number of potentially interested parties, of which the recipient is merely one, that the domain name has become available for sale.

Even if you do that, there are always going to be folks who believe they are entitled to your domain name and, certainly, contacting them will only give them what they believe to be evidence of cybersquatting. Since your email to them is going to be used as evidence in the dispute proceeding, then you should think about what that email says to the UDRP panelist who will be deciding that dispute. For example, does your email:

(a) list selling points of the domain name that are not particular to the recipient, such as whether it is short, memorable, a dictionary word or common phrase, can be used for a variety of different applications or industries thus making it a generally valuable name,

(b) mention that the notice itself is being sent to various parties who may be interested in the domain name because it may be relevant to their industry, location, etc.

(c) provide references to comparable domain names on, for example, the DNJournal sales reports that are in some way similar to the domain name you are selling, and mention the price range of those comparable domain names.

Including those points in your email will not only make it a more informative sales communication, but it will also implicitly demonstrate the reasons why you acquired the domain name, believe it to be generally valuable apart from the recipient's particular potential interest, and provide a basis for valuing the domain name that is independent of the recipient's potential limited trademark claim.

Finally, if you can't do those things in your email, it is worth considering whether you should have the domain name in the first place.

The short answer is "Yes, you are raising your risk profile."

The longer answer is "There are things you can do to mitigate that risk to some extent."

Thanks John! Great insight & beneficial information, exactly what I was looking for. Will study this thoroughly.

 

[DomainInvesting]

John helped me defend my case regarding young.com. Throughout the process, I had many productive discussions with him. He proved to be smart, professional, and dedicated to achieving the best outcome. I'm 100% satisfied with his work. The domain industry is fortunate to have John.