Worried a transfer might kick off legal proceedings

[mayhemalex]

Hi Team,

I currently have a domain name with Epik that has received a considerably large offer.

This name has sentimental value to me and I do not wish to sell.

I think the buyer wants this name by hook and by crook. I know who it is by they have gone the broker route for obvious reasons.

Have done my research and am fairly certain I am safe even if it goes to arbitration.

However, it is with Epik until 2025.. am worried if might get pinched there or I might lose it so I want to transfer out.

I know the buyer is watching closely and I have transferred it once before in its history and the buyer thought it was sold so reached out again. They are watching the WHOIS closely.

No doubt if I transfer it they might think they have a case of 'renewal by bad faith' and initiate proceedings.

I don't want to go into details but the domain predates the mark.. but if the mark holder thinks I sold it.. it might be a different story.. (I am behind whois privacy for non-nefarious reasons)

I have been the sole owner throughout its history and can prove it.

Again, not overly concerned and have funds/facts to defend it.. but why rush into war?

Should I just leave it at Epik or get it out ASAP?

Thank you.

 

[capybara]

Transfer out and don't worry about the second part.

 

[WillW]

If the domain predates that mark and you have proof of that/funds incase of potential legal action, then it's really up to you if you want to sell it. No issue there.

I would transfer out of Epik regardless of what happens with the sale. Idk if you've kept up with the forum but Epik is in deep waters right now - owes millions of dollars to customers, taking paid domains out of people's accounts, and not renewing domains that were paid for. I would transfer the name in question and any other name you have with Epik asap.

 

[mayhemalex]

If the domain predates that mark and you have proof of that/funds incase of potential legal action, then it's really up to you if you want to sell it. No issue there.

I would transfer out of Epik regardless of what happens with the sale. Idk if you've kept up with the forum but Epik is in deep waters right now - owes millions of dollars to customers, taking paid domains out of people's accounts, and not renewing domains that were paid for. I would transfer the name in question and any other name you have with Epik asap.

Thanks. Yes experienced the non-renewal of paid domains first hand. Not with this domain but another one I had with them. Thought I did a straight forward one year renewal with the last of my account funds (think there is 50c left there) and took about 3 emails to get the name renewed

 

[Gabriel360]

Transfer your name out. There's nothing like bad faith transfer, only bad faith registration.

If your domain name predates the mark, it'd be difficult for them to prove that it was registered in bad faith. As long as you were not part of the team that initially started the business.

Plus if the domain name is as important to you as you claim, then you should have proof that you've taken actions to use it or have used it in the past.

That way, you can also prove that you have legitimate interest in the domain name.

If you can satisfy the two conditions above, then they'd ONLY be left with the fact that your domain name is confusingly similar to their mark.

If that's the only thing they can prove, it'll be impossible for them to take your domain name via UDRP.

That said, if you are attached to a domain name, the last thing you want is to leave it with Epik.

 

[jberryhill]

Among other things, I'd want to know...

...whether they have a trademark in the United States,
...where are you located,
...what is the effective priority date of their mark, if any,
...when and how did you first obtain the domain name and at what registrar,
...when was it last renewed and transferred,
...who, specifically, is writing to you,
...what is the alleged mark,
...what is the domain name,
...what has the domain name been doing all this time,
...and a review of the prior correspondence in detail,

...before getting anywhere near an answer to this question.

 

[jberryhill]

No doubt if I transfer it they might think they have a case of 'renewal by bad faith' and initiate proceedings.

Incidentally, that's not a small concern. That dog does not hunt in the UDRP, but still has some life in it under the ACPA (the US cybersquatting law).

But that's why a comprehensive understanding of all the facts would be helpful to work out a risk/benefit picture.

 

[mayhemalex]

Thank

Among other things, I'd want to know...

...whether they have a trademark in the United States,
...where are you located,
...what is the effective priority date of their mark, if any,
...when and how did you first obtain the domain name and at what registrar,
...when was it last renewed and transferred,
...who, specifically, is writing to you,
...what is the alleged mark,
...what is the domain name,
...what has the domain name been doing all this time,
...and a review of the prior correspondence in detail,

...before getting anywhere near an answer to this question.

Thanks, John. Sorry for the late reply, appreciate your input/help.

I should point out that all correspondence thus far has been through brokers so I can only speculate who the 'client' is but a basic google search and the amount offered as of last correspondence makes it fairly obvious.

Somewhat paranoid that 'they' might be watching as they are likely using something similar to what domaintools offers to monitor my domain.. no sure if they watch the forums.. but quite accurately:

...whether they have a trademark in the United States - yes per USPTO registered: Nov 2022
...where are you located - Oceania
...what is the effective priority date of their mark, if any - Nov 2020
...when and how did you first obtain the domain name and at what registrar - mid 2016 Domain.com
...when was it last renewed and transferred - last transferred into Epik 2021 / last renewed Jan 2023 good until 2025
...who, specifically, is writing to you - two brokers, broker (1) offered higher $xxx , broker (2) wishes to commence negotiations at low $xx,xxx - neither broker disclosed client and that is quite a jump - might be two different clients or its who I think it is and they are making it know they want it
...what is the alleged mark - five letter one word acronym - like tumbl
...what is the domain name - similar to tumbl.com
...what has the domain name been doing all this time - domain default parking for most of it and from around 2022 bodis parking - I ensured ads displayed were not trademark infringing and generally pointed to random stuff - its hard to get ads for 'tumbl'
...and a review of the prior correspondence in detail

Again, appreciate your time. I've enjoyed listening to your podcasts etc.

I've transferred most of my names out of Epik and only this one is left.

I could be jumping the gun here.. I don't want to transfer it anywhere else after this. I kinda have plans for the domain but not in the immediate term, so I will just want to park it at a decent 'forever' registrar.. I'm thinking Dynadot since I've been using them for years and they are fairly good overall.

...before getting anywhere near an answer to this question.

I appreciate you being thorough. Thanks again, John.

 

[robs01]

Here's a few of my thoughts:

1) If transferring away from epik could potentially cause problems then leave it at epik and renew for another 2-3 years. If something happens with epik your domain will have many years (worst case) to ride through the mess when finding its way to another registrar, and I don't think anyone has ever lost a domain when a registrar goes under or is sold on (edit: as long as there is plenty of time before expiry).

2) You mentioned that the domain has sentimental value and you do not want to sell, but what did you say to the brokers when they made you those offers? Did you outright say no, or leave any possibility for them to make a higher offer and you might bite? This could affect things.

3) Perhaps you could explain somewhere in the communication with the broker that Epik is having problems and you fear for your domain and will transfer the domain out - that should cover your backside if they accuse you of doing anything shifty. You can (or should???) continue to correspond with them during the transfer to prove that nothing dodgy is happening.

Hope I've given you a few ideas. Best wishes.