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Old 12-22-2001, 11:19 PM   #1
austincassidy
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Default Somewhat Urgent Domain Name Legal Question

Hi Everyone,

I have a legal question concerning a domain name I own. Basically, I'm just curious if this guy has a legal right to my currently under-development domain name... and am I legally required to hand it over to him?

It's a part-time project of mine... I've spent a few hours here and there working on this little piece of freeware... it's no big deal, really. I registered this domain cause it seemed catchy, and I don't have a working product together (or near completion yet)... for a while I even was considering just selling the domain name.

This guy sent me an email a while ago asking about buying the name, but he didn't offer anything except to pay like half of the registration fee. I figured I'd rather keep it and potentially sell it to someone who recognized it's worth, or work on my own idea.

Eventually, I decided to just work on my own thing.

Anyway... he sent me this email, and I want to know if what he's saying is legit. I don't really know much about domain laws, and it seems strange to me that someone can come along and take my domain from me. Far as I'm concerned... I got it first, and he can pay me some actual money if he wants it.

The email.... (with names and places changed to protect the innocent)

--------------------------------------------

Austin:

It has come to my attention that you have registered the domain domain.com and you may not realize that Some Company, Inc. owns the registered United States Trademark ( REG #: xxxxxxx ). I realize we have had correspondence with you in the past where you have indicated your intention to sell the domain, or simply wait until you were ready to use the name.

Under the Uniform Domain Name Resolution Policy (UDRP) TITLE 15, Sec 1125, False descriptions and/or dissolution of Trademarks provides Some Company, Inc. the right to own and use the domain.com domain name since we have been using the name in commerce since 09/06/2000 and your domain registration was applied for on 02/17/01.

I would like to resolve this matter without the need for legal action, as any use of the nameinquestion name by any other party other than Some Company, Inc. or in conjunction with the Internet or Commercial product would directly confuse and mislead potential customers.

I would like to offer to pay for your domain registration fee which you paid last year, and have the domain transferred into our possession. If this domain transfer does not occur within a 30 day time period, we will inform your registrant (register.com) that you have violated the UDRP and have the domain transferred to our ownership directly.

I look forward to hearing back from you immediately with a quick resolution to this matter.

Sincerely,

Some Guy
President
Some Company, Inc.
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Old 12-22-2001, 11:35 PM   #2
PWR_Paul_Banker
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It's hard to make a decision since you've withheld the domain name and company in question. If what the company says is true, they do have a legitiment claim to your domain name. Since you claim the site is a "no big deal, really" I'd consider turning it over. I've got big domain problems at the moment too and I'd probably be the last person you'd expect to recommend surrendering the domain name, but if it's not a big deal to you, then just register a new name and go from there. It sounds as if his claim is legit anyways.
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Old 12-23-2001, 12:02 AM   #3
Steve_S
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Hi,

1. Use the search form at the top of this forum for "trademark"

2. Our last juicy bit of geek/talk in this thread:

http://www.geekvillage.com/forums/sh...threadid=14421

3. Surrender the domain based on the facts you have supplied.

4. Yes, all of what the person says is "kosher" aka Legit"
aka "truthfull"

5. Consult and pay for legal advice since neither myself nor geek PWRPB are members of the bar and thus this is not legal advice.


HTH and good luck
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Old 12-23-2001, 01:44 PM   #4
austincassidy
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Default Thanks!

Ok, thanks for the advice, guys! I'll probably just let him go ahead and "take it" as he claims he can do.

Seems very strange to me that someone can create a serious product, then not register the available domain name for it.

If he approached me for the domain and I didn't give it to him... then he went out and got the trademark, months after I registered the site... does that help me any? Basically... because I owned the domain before he had the trademark?

<ranting> <raving> I hate these laws... in my opinion, if you get a domain name then it's yours to do with as you please. If a company was too slow to register it, then they are faced with the task of convincing you to sell the name to them. </ranting> </raving>
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Old 12-23-2001, 03:05 PM   #5
Steve_S
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Please provide the domain name which you own and the domain name of the party who wrote you in this thread? Also the docket and ID number of the "trademark" in this thread?

With this data we might be able to answer your questions and help further. If you don't wish to do this then I continue to suggest that you see an attorney for the answers to your questions.


Good luck and HTH
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Old 12-28-2001, 10:59 PM   #6
austincassidy
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Thumbs up Thanks!

Thanks for all your help guys... just wanted to let you know I decided to give in and surrender the domain.

Don't want to cause too much of a stir over this, particularly since I'm probably in the wrong!

Thanks, again!

Austin
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Old 12-29-2001, 10:10 AM   #7
Dave-AHFB
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I am sorry to see you give it up, it appears to me with the limited information you gave that you were actually in the right.

Now that it is over could you fill in the blanks from above, this could prove a valuable lesson to yourself and others if we could put the entire puzzle together and see what it really looks like.

Dave
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Old 12-29-2001, 03:09 PM   #8
Ted S
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In the world of marks it comes down to timing. I fyou reigstered your domain before any competing trademarks (or more importantly, before his mark) then he has no claim. A trademark is more powerful then a domain mark but unless he can show he used his mark commercially before you, an infringment case is impossible.

However, subject to the cybersquatting act, it has been found numerous times that an offer to sell a name, or even entertaining such an idea can be considered an act of cybersquatting. People have indeed lost their domains because they made offers or responded to inquires with offers. Futhure more, if you bought a domain which a company was actively using before you registered it (and they can proove it), you run an even higher risk of being found guilty. Of course mediation runs at somethng like $5000 and the party accusing you of cybersquatting normally has to pay it all so he might not actually bother.

Still, if you know you offered to sell the name, if you can see evidence that he used the name commercially before you registered it and if you have no solid use of the name yourself (no site, no products, nada) then you may be best off just giving it up. If you want more legal defenitions of cybersquatting, let me know and I'll type them up.
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Old 01-05-2002, 06:18 PM   #9
darnell
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So I guess the moral of this story is:

If you get a domain name BEFORE a company makes it a trademark, then you'd better not even think about selling it, unless you don't mind it being taken by force.

Glad I've had no issues to date. Thank God.

I'd bet if they never made cybersquatting laws the value of domain names overall would still be high and we would not be going through this current period of less names being renewed. Companies paying for the names they want would help stimilate the economy a bit. But that's all speculation.
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Old 01-05-2002, 08:21 PM   #10
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In this day and time....it is hard to get a name trademarked in less than a year. In fact, my trademark is still in the process and its been over 2 years. Trademark is a lengthy, complicated process.

Has there been enough time for the guy to register a trademark since the last time you received an email?

Check online for the trademark registration....
http://www.uspto.gov/
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Old 01-05-2002, 08:52 PM   #11
tymeracer
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I am not an attorney but I think the major issue is who used the name in commerce first. If the domain was registered and put into use before the other company starting using the name, I think you have a position. His letter claims that he was first, and his trademark will trump you.

BUT, trademarks, like most things, often times comes down to who has the better lawyers and deeper pockets. He probably does, so now you need to extricate yourself from this situation as best as possible. .

If I were you, I would tell him that you are willing to give up the name for all of the money spent by you to date. It's not your fault he was a bonehead and didn't reserve the domain when he did the trademark. Don't extort, but I think it is fair to receive your actual costs and it will be cheaper for him than paying lawyers to write threatening letters and costly discovery. You both benefit.

All the threats for legal damages is a bunch of B.S. unless he suffers actual damages, which he can't.
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Old 01-18-2002, 10:17 AM   #12
gbrott
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Default Don't surrender so easily

Austin - if you think you may have a right to the name, don't surrender so easily. At least say "I understand your point, but I disagree. I'll settle this with you for $500".

That would be a lot cheaper than their legal fees and you would get something out of it. I wouldn't consider this hijacking, rather a friendly resolution to a dispute. You registered the name in good faith and think you have a right to it.
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Old 01-21-2002, 11:44 AM   #13
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while i wouldnt go handing over a name just like that, i was troubled by part of the email which that person said that you tried to sell it to him before.
IF you tried to sell it to them before, that is interesting. first, it indicates that you had an interest in selling it and NOT developing it BUT more importantly, WHY didnt they buy it?
i get so darned sick and tired of companies NOT registering their names and then coming back and crying about it later.
we had a company name that was a trademerked name (in our state) and a guy had bought the .net version and agreeed to sell it to us for $45, then when he founf out it was our company name, he said he wouldnt sell it so cheap and actually said he was gonna hold out for more money.
if this is what you are attempting...bad bad bad
BUT this can get real tricky!
id probably wait it out. they should have bought it when they had the chance, especially considering you just bought it less than a year ago!
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Old 01-21-2002, 12:48 PM   #14
tmax
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Default Competing or non-competing

I'm also not a lawyer but I thought that, so long as this guy is not a competitor or in the same field/arena as Company X with the Trademark, that he could use the domain.

i.e. remember the McDonald's case. A guy named McDonald registers McDonalds.com. McDonalds tried to bully the name out of him, then sued him and lost. Because he was not a competitor nor did his site have anything to do with fast food or burgers, McDonalds was not entitled to the domain.

Just a thought.
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