What to do with a trademarked domain for a giant brand?

[teeitup]

I am an online marketer and one of my clients owns the .ca name for a very well known US retailer. To give you a frame of reference... think a bestbuy or wallgreens level brand. This brand is VERY well known. However, this retailer also does a LOT of business online... so for a cybersquatter, this domain could be very profitable.

Its an obvious trademark violation ... and the owners want to get out of the situation due to the less-than-scrupulous intentions. They have asked me for advice- but I have no idea what to say.

If they are serious about getting out, the options as I see it are:
1-let it expire and receive nothing
2-give it to the original trademark owner
3-sell it to another private owner who may have other ways to make use of it. From what I've read- Selling a trademarked domain for profit to another party that doesn't own the trademark isn't illegal. I am under the impression that its only when the trademarked domain is used to siphon money away from the trademark owner that it gets dicey.

#3 would seem to provide the best monetary benefits. However, how much would a canadian version of a well known retailer trademark be worth on the open market? Would selling it even be worth investigating?

If the answer is 'yes' - How would one sell such a domain given the obvious trademark issues? Would one even need to be discrete about such a sale?

Thanks in advance for any advice

 

[Hopper]

For the sake of the $1.95 per year it cost to register why piss around, just let it expire.

They know its wrong, is $1.95 worth the hassle?

:imho:

 

[-NC-]

4-Delete/Cancel it from your registrar account

 

[mis_chiff]

For the sake of the $1.95 per year it cost to register why piss around, just let it expire.

They know its wrong, is $1.95 worth the hassle?

:imho:

$1.95??

If the US company does not have a Canadian Presence,
that could be why the .ca was available in the first place.
Check the TM. Otherwise, just let it expire and save yourself
the hassle.

 

[slaughterbeck]

Simply cancel the domain name and within a few days the problem will cease to exist.



Best wishes,
Kimmy

 

[Shenron]

Offer it to them... maybe they offer you a cheese in return. :D

 

[Hopper]

$1.95??

iDotz.net

 

[GreenGambler]

I would just let it go and consider it finished.

Most likely an offer to the company will result in them demanding the name or them ignoring you. If someone wants to buy it in the aftermarket, sell. But there is probably not a good chance of finding a buyer of a TM'd .ca name.

Good Luck

 

[Ronald Regging]

Technically, if you're attempting to sell the name, that is illegal, because you're trying to profit off of the TM.

I'd just delete the domain and move on.

 

[mis_chiff]

iDotz.net

That would be for .cn - not .ca

 

[notlikeyou]

Let it go.
Why risk the possibility of a large headache for a small, possibly temporary gain.
Not worth the hassle.

 

[flamewalker]

I certainly wouldn't advise trying to sell it to the tm owner, or sell it at all... wouldn't be much value imho and yes he would probably need to be very discreet. I echo the others... let it drop or delete it.

 

[teeitup]

The responses seem to indicate that a sale isn't worth looking into. Thanks for the info.

What's really interesting is that the domain owner originally setup an immediate redirect from the .ca domain to the retailers .com site. They then joined the retailers affiliate program and embedded an affiliate ID in the link. So, they were making a pretty penny off of directing .ca traffic over to the .com site... craziness.

 

[productions]

Let it expire.

 

[mjs]

I'm an attorney, and have knowledge on the subject. Advise your client to delete the domain forthwith. So long as your client is the named registrant, the trademark owner could conceivably initiate a UDRP claim without so much as a wisper of prior notice. Once the process is initiated, since the complainant will have already put down the fling fee, and paid a big up front retainer of several thousand dollars to an attorney, the matter will proceed even if your client throws up a white flag and offers to walk the domain over to the Complainant. End result-Your client is determined to be a cybersquatter. Ramifications-Next time your client is called upon to defend his legitimate rights in another domain, the other party asserts prior determination to show a pattern of cybersquatting in order to help establish bad faith.....I think you see where I'm going with this.

 

[liquidcherry]

Tell your friend to make them an offer for buying their company and then run the new purchased business on your .ca domain...should be easy, right?

Or ask for a franchise option.....

But back to the real world....tell him to cancel the domain, don't park it or try to sell....just duck in the sand and hope everything works out....and don't forget to contact the registrar , tell him not to show ads on that domain after cancelling because that could hurt you in the long run(or your "friend")

Cheers,

Frank

 

[Dave_Z]

What's really interesting is that the domain owner originally setup an immediate redirect from the .ca domain to the retailers .com site. They then joined the retailers affiliate program and embedded an affiliate ID in the link. So, they were making a pretty penny off of directing .ca traffic over to the .com site... craziness.

Tell your client to read the affiliate agreement with that company. S/he might
get the shock of his/her life.

And like the others, tell your client 2 simple words: drop it. May not be worth
the potential hassle, unless your client thrives on risks.

 

[DNQuest.com]

3-sell it to another private owner who may have other ways to make use of it. From what I've read- Selling a trademarked domain for profit to another party that doesn't own the trademark isn't illegal. I am under the impression that its only when the trademarked domain is used to siphon money away from the trademark owner that it gets dicey.

#3 would seem to provide the best monetary benefits. However, how much would a canadian version of a well known retailer trademark be worth on the open market? Would selling it even be worth investigating?

Just to let you know, getting rid of the domain will not release their liability from registering (and profitting from) the domain in the first place. If the TM holder wished, they could still go after them with all of the penalties associated with the Lanham Act.

 

[Hopper]

That would be for .cn - not .ca

My bad sorry. The advise would still be the same though.

 

[flamewalker]

Just to let you know, getting rid of the domain will not release their liability from registering (and profitting from) the domain in the first place. If the TM holder wished, they could still go after them with all of the penalties associated with the Lanham Act.

At that point they have to determine, since the user willingly stopped the infringement, would it be worth it to spend the money to sue him/her... Even if they won, which they almost undoubtedly would, there would be a fair chance the user couldn't pay up. The likelyhood of winning a noticeable sum over the legal fees accrued would probably be relatively low imho. If the tm holder is as big as the op states, they may be willing to make an example of him for the sake of scaring other potential squatters though.

By getting out of the situation asap, he may yet garner some good will and avoid their wrath...only time will tell.