Legal threat

[bear]

So I had my eye on a domain for about a year now, since I already had the .com version. I tried contacting the owner and his email on the record was no good, and it bounced. There was never a site on it, and I never saw the name mentioned anywhere in all the time I was looking into it.

Fast forward to a few months ago, and the name is expiring. My big chance to secure it...maybe. I watch this daily, and finally it goes into pending delete last week. I use Enom's "club drop" to try and get it, come home on Monday, and there it is. Cool beans, only cost me $19.

Fast forward again to yesterday, and I get this email:

To: info@mydomain.com
Subject: thedomainIbought.net


Hello, my name is Robert Zxxxx. I live in south east missouri and
'thedomainIbought' has been a registered trademark of my business for the last
five years. If you will agree to return my domain for no more than the
amount of registration then no legal action will be taken.

Sincerly,
Robert Z. Zxxxx

I recommended that he obtain a lawyer, and begin an ICANN dispute (at great cost) and let me know via registered letter from said lawyer if he intends to sue or otherwise prevent my keeping and using this name, obtained legally after he let it lapse for 65 days after initial expiration. Bear in mind that I've owned the .com version for over a year now...and he's not mentioned that one at all.

Some people. :poke:

^^^ by the way, new smilie ^^^

[Shuttle-Servers]

That sounds rather strange,

Although he did let the domain expire which therefore put it back up for sale/registration.

Surely nothing can be done legally about this can it?

Regards,

Chris

[bear]

Probably not, and to me it sounds like blustering. Chances are he doesn't own a trademark on this (after all, I own the .com as well), but instead goofed, and realized his error long after it was easy and cheap to get the name back. He likely waited until it was going to be released (like so many do), but thought he would be the only one interested in it.
If he hadn't threatened legal action right off the bat, we might have been able to work something out. It's unfortunate for him, but I was first, and will use this tld to strengthen the position of the .com version I own.

He has no case that I can see, but if he does go to ICANN, and they agree with him, I hand it over. Of course, that will cost him plenty...

[imported_Michael]

Isn't there some way he can prove if it actully is a TM of his business or not? (To show you mabye he's talking bs)

[bear]

He could provide a link to the government trademark site showing the mark, his name and all that. Even so, I have no plans on giving it over. I think it was the threat that bugs me.

[imported_Michael]

But cant he force you to give over?

[Fergal]

I can understand how you feel, no one likes to be threatened. Can you check the govt. website yourself and see if anyone has that name registered as a trademark?

If they do then they may have a claim on the domain and you'll need to consider your options. Not sure what the situation is in US law but in Ireland TM's aren't completely general, they are sector specific. Eg if I reg a TM for a hosting company called "loki" someone could open a pub with the same name without necessarily infringing on my TM, so that could be in your favour.

It's a good warning though for those of us that have domains that might be expiring. It's also a good lesson - as they say in the mafia movies - "A threat is a sign of weakness".

Good luck with it and keep us informed.

Fergal

[bear]

I really feel that he's just claiming that to get me to comply and hand it over, and I don't have the time to see if he owns the trademark. Let him prove his claim, and I will respond. If he has the rights, I will hand it over, IF (note the big if there) made to do so by either ICANN or the government. His claim alone won't do, and the fact that he failed to notice for over 60 days beyond the expiration actually goes in my favor.

The way I see it is this, if he was using it for a site, there would have been something on the name when I looked into it nearly a year ago. If it was just for email, then he should have noticed when the email stopped working (as soon as a name expires, mail, DNS and so on stop working).
So, if this was his trademark, what was it used for? In addition, if the domain is trademarked (which I don't think possible), then why did he not pursue me when I bought the .com version? Failure to actively protect a TM results in lowering it's worth, legally.

As Fergal mentioned, trademarks are just that "trade" marks. If he was a tavern owner using the name, and I used it for hosting, no conflict. It's only when you unfairly "pose" as another using their registered mark where you get in trouble.
I'll wait to hear from him, I think.

[imported_Michael]

Bear, let me know of the outcome of this as it intrigues me :wha:

[coderanger]

If youd like some help looking into the true TM owners (if any exist), id be more than happy to help.