What would you do?

[wisconsin]

Hello-

I registered a 2 word domain in 2003 and I just recently developed it and I have a pending trademark application for the two word mark (already being used in commerce)

I was recently contacted by a third party representing a client saying they would like to buy it and made a 4 digit offer to "purchase" it. I replied that it is not for sale!

After a couple of days, I decided to do some research and found this same domain has been registered in all ext .net , .org, .biz, .info, .us and several other countries, including .eu, .cn, .com.cn, .tw, .de, .asia, .nl, and several other TLDs by the same entity, including registering the hyphenated version in all above mentioned tlds as well. It turns out it's a multi-billion dollar company that everyone of us knows, regardless where you live! So, I did a little bit more research and found that they had announced a new product in early 2008. It is not out in the market, yet! They also have a pending trademark application with "intent-to-use" in commerce; which they just filed!

What I am offering (goods & services) is completely different, and non related to their field(s) (i.e. I am offering a drink product and they are offering airplanes) This is just an example!


Ok, I have about 5 year prior registration before the new product was even announced or existed! I am also using the domain in unrelated field, and I have a pending trademark application.But again, this is a very big corporation and they can file a suit in federal court, regardless of the merit of the claim, just because they can.


Well, after the discovery, the idea of selling it becomes an opportunity that, perhaps, is worth while considering but I realize that things could go the other way if I make the wrong move! I can always move forward with my original plans (not for sale!) or I can use a different or a similar domain and sell the desired dot com to them. Maybe there are other option!

What would you do if you were in my situation? Next step?

Thank you!

 

[mwzd]

Multiply their offer by 10 and sell.

Not worth the aggravation long term...

Specially if its not your primary business.

 

[Dave_Z]

Multiply their offer by 10 and sell.

But the OP replied back saying it's not for sale. If the other party is even the
least bit familiar with domain-trademark disputes, there's a risk they can think
the OP is BS-ing if s/he suddenly replies (again) with a change of mind..and a
high fee.

 

[Ronald Regging]

Keep telling them its not for sale. Keep developing/promoting/selling your products as normal. The more legitimate your use is, the more rights you establish. If they eventually make you an offer you cant refuse, well, then, you know...

 

[mwzd]

But the OP replied back saying it's not for sale. If the other party is even the least bit familiar with domain-trademark disputes, there's a risk they can think
the OP is BS-ing if s/he suddenly replies (again) with a change of mind..and a high fee.

OP made is clear that his position is quite secure with a developed site and a pre-registered application for tm. If they've taken all extensions plus hyphenated versions they will come after OP whether its now or later.

Plus later they'll be able to prove more ownership of the tm that they can now, OP will never be able to spend as much as a billion dollar corporation to make the brand synonymous with this product.

Selling now for an obscene amount of money is the smartest option atm... later it might not be an option, plus you leave yourself open to all kinds of legal costs.

 

[flamewalker]

Talk to a good lawyer imo... like John Berryhill, and get an opinion. They know who is going after what, and if the company is as big as you say, it might be worth a few hundred $ to have him draft a letter, or he may tell you to hold your position.

Or, hold your line and wait for them to offer. But don't make the first offer at all. The least you admit, the less they can use against you in court or UDRP. Sounds like you have a solid grounding based on what you told us, imo. Don't give it up.

If they offer, definitely talk to a lawyer before responding so he can draft up a response (yes or no), that will keep your position solid, and not show any sign of cybersquatting etc.

 

[maxeaus]

There is no point me saying anything other than listen to flamewalker.

 

[Ross]

I would honestly just keep on developing your brand. So long as its completely different than what the other company is doing with the name. Plus if its a generic it can work in your favor. IMO the more you say not for sale and continue the process of development, makes the bigger company start to panic. Then they start offering the obscene amounts of money. This would be your best bet in my eyes. If you get your TM for your rights then you should have just a strong a case as the big company.

Though these are just my opinions you should really see a professional lawyer in this situation. They will be able to help you more than we will !

 

[wisconsin]

Hi,

Thank you very much to everyone who took the time to post! Appreciated!

Received another email, this weekend, asking for a price! I have not replied, yet! Of course, I have no intention to state a price or even telling them that I will entertain their offer as I feel like it is starting to be a game words.

In their first email, they did make an offer to purchase the domain, including how much they are willing to pay for it, but I am still not satisfied about their real intentions!

Thanks

 

[BitcoinDK]

Contact a lawyer before you reply, imo.

Good luck.

 

[flamewalker]

Yeah, see if you can get a 15 minute consult or something with a reputable lawyer. They probably are trying to get you tripped up, or it could be honest "oh he didn't like that number, ill ask what his number is to sell"... but too much risk that they could be trying to catch you so they can say you are trying to cybersquat.

I agree, the best way to make sure you have all your bases covered now (since they responded again and are obviously anxious to have the name) is to get a consult, even if it costs a few $.

 

[Dave_Z]

Received another email, this weekend, asking for a price! I have not replied, yet!

Now I'll agree with mwzd. :D

Good luck with the potential sale. And talk to a lawyer as others said if need
be.

 

[DutchBoyd]

Was just going through my old subscriptions and wondering how this went. Would love an update!

 

[Bravo]

Was just going through my old subscriptions and wondering how this went. Would love an update!

The same here. Interesting story, would like to know how it went....

 

[Mattias]

I am interested too

 

[BitcoinDK]

Ditto

 

[kp_dom]

Any updates??