Back to the basics, parking a trademark domain.

[fischermx]

I'm sorry if after this years, I'm going to ask a basic thing.
But, I can't think with clarity when I'm upset.

I've just received a letter from a lawyer from a domain owner who has a trademark in an Europe country that happens to be a domain name that I own.

The term is a spanish word, pretty much generic, like "smart", or "clever". And it is a common word here, though I don't have a trademark for it.

I have this domain parked at SEDO.

My basic question is: just for the fact that I have this domain parked in Sedo did I already messed up the case?

After some readings, I'm thinking clearer. They have to prove, similarity to their trademark, no legitimate interest, and registration or use in bad faith.
Still, I don't know.

Actually, I don't know if I should respond to their email and tell them ... what?

 

[rcade]

After some readings, I'm thinking clearer. They have to prove, similarity to their trademark, no legitimate interest, and registration or use in bad faith.

That last part would hinge on whether you knew it was a trademark in Europe. If it isn't a registered trademark in the U.S. or something commercially available in the U.S., that should help your case.

 

[fischermx]

They said they have it in EU. I searched on USPO and couldn't find theirs, but for others.
Now, I'm in Mexico, not in the U.S. I'm sure they don't have it here either.

 

[Brett Lewis]

It sounds like they are overreaching. You should send a response letter. Some companies will file a UDRP if the domain holder does not respond, guessing that you will default in a UDRP. A letter could make a difference, so it's usually worth sending.

 

[DNA]

You should analyse the popularity of the original website and company which owns it. Is it multinational? If yes, ask them what are their trademarked asset ( words in this case)? If your name violates it very clearly; i think being in mexico for now would help you own it for certain time. But you need to return it back sooner or later. I have already received like 4 C and D and i have lost all of them as they were popular companies with a strong attorney strength which i could never match. So, u should consider these things.


cheers

 

[Focus]

Tell them you have alot of money and will vigorously defend yourself and the domain with the best legal counsel available anywhere in the world.

 

[fischermx]

You should send a response letter.

Thanks for the advise, but telling what? I was thinking of replying to their email just saying "I'll hand this over my lawyer, and we'll back to you soon", or something like that, then come back and tell them they don't have a case.
Their email said they sent a physical letter. Should I reply with a physical letter as well ?

If your name violates it very clearly

The name is identical, just change the extension. They have the .eu and their ccTld. But it is a generic spanish word! The last "famous" company in Mexico I've heard using that word commercially was a soap brand in the 80's.

I know it is not a good idea to expose a case here, but I'll try to give some details. The company is multinational in Europe and only in Europe. Their website is not very popular (Alexa ranking 1,000,000+), but due the nature of its very expensive product, I would not expect a very trafficked site.
This company is owned/managed by another even richer company related to gambling (which is another brand and site).
Their brand is totally unknown in Mexico. Their product is just seen in American movies.

I don't know why they do this. An UDRP is $4,000.00, plus the attorney is easly another 2 to 4 (not sure). That's about $8,000.00.

I could be happy to sell it at mid X,XXX and avoid all these stupid things, but I know, I know, I should not tell them this idea.


DNA: How did you lost? default? Or just defended yourself ?

 

[DNA]

I don't want to expose anything here but mine was a multinational Airlines, a media corporation and a shopping site to name a few and after discussing for some time, i found that i would lose the names. so, i passed them to their owners quietly.
One way to check is to write to them saying you will think for it and don't reply. After some time, if they reply threatening with a court case with all procedures in a formal way, then u know that u should better return them in case of multinationals. I mean, unless your point is stronger, u r certain to lose the case.

telling lies about your strength of money and attorney are matters of joke and nothing else.
I suggest you hold the domain until they really inform you they are starting court procedures. Your positive point is you are in mexico.

 

[fab]

Generic terms, even if parked should not be a problem, unless they can prove you are taking advantage of their trademark, like placing ads to do with their TM. See previous decisions here. Generic domains happen to have higher values as well, which might be the cause for their running after you, reverse highjacking. Sending them an offer may be considered admission of guilt (cybersquatting) as well. On the other hand responding with a letter and e-mail saying the domain is a generic term, therefore no TM, especially non-local applies, would seem logical. You need to add some legal term as well, that won't allow them to use the ;etter against you in court.

 

[mkellerman]

My advice:
- Look at the past decisions in wipo.int to get an idea of the criteria they use in their decisions

- Do NOT offer to sell the domain to them. This is vital, otherwise they could say you are a cybersquatter

- if your domain is a g-tld (such as .com), if their brand is famous in Europe, but not famous in Mexico, I don't think they have any case. If your domain is a cc-tld, what counts is if the brand is famous in that country.

- Do NOT explain the possible defenses you would use in a WIPO case--this gives them an advantage in preparing their case. Your aim should be to keep your defense a secret until an actual case.

- if they take you to WIPO, it will cost them $1000+, but it is FREE for you -- so don't be worried if they do this. If they do, read up wipo.int carefully and defend yourself, or hire a lawyer. If you defend yourself, mention that you are not a lawyer or legal expert and the judge will probably take that into account and be more lenient to you.

This is my advice. A domain lawyer by the name of Berryhill is on DNF and will, I am sure, give you some free advice.

last advice: Don't be frightened of them and just give up the domain.

 

[FreddyS]

did they proove already that they really have the TM? Did they send an attachment with the TM? or a link in which Database it is filed?
for example if you own *smart.abc* and they have a Trademark on *smart what ever* you are very safe. But it also depends in which country they have the TM and in which country they want to sue you.
the major question is, is the domain worth to protect it?

 

[petrosc]

There is some very good advice in this thread, I am only going to add a few points

In order to take your domain away from you, they have to prove that you are or were at some point using the domain in bad faith. You say that the domain was parked. You should find out if the multinational company that is after you has any ads apearing on your landing page. Please correct me if I'm wrong, but your landing page does not show ads from that company, or ads of products similar to the ones that company is marketing, they cannot prove the use in bad faith.

Furthermore, there are some assumptions, that if true, will help you defend your case:

1. You are a Mexican who has not been engaged in the provision of anything related to whatever that company is marketing in Europe.
2. If they have a TM on a generic term ("smart" in spanish for example), it is almost certain that they have registered it with very narrow rights, applicable only in branding the product they are marketing. Owning a trademark of a generic term in this case, means that they cannot claim that you were infringing on their TM, if you(or the content of your page) are not related in any way with the product they sell.
3. You must find out when their trademark was created. If they registered the trademark after you registered the domain name, this weakens their case and greatly helps your "use in good faith" claim.

Remember, other WIPO cases will help you a lot in defending your case, and when you reply to them, do give away your defences to prevent them from preparing themselves, as mkellerman noted above

 

[typist]

"I'll hand this over my lawyer, and we'll back to you soon", or something like that, then come back and tell them they don't have a case.
Their email said they sent a physical letter. Should I reply with a physical letter as well ?

I'd try to avoid making up stories, particularly about having spoken with your lawyer. (I sometimes receive communication from people who claim they've "spoken with their lawyer", most are not credible).

I don't think it's necessary for you to send a physical letter (after all, this is about the domains and internets and stuff), but I'd try to make sure whois contact information is up to date and valid.

 

[fischermx]

Freddy: Well, they didn't provide a link, but they told me the sections.

Petrosc: I really don't think they have a case. I think they know they don't have a case. Because, actually, their letter was a bit "soft", i.e. didn't threat with taking it to court, just asked me to give them the domain.

Typist: I am going to speak with a lawyer, just not decided who, yet.

 

[FreddyS]

Freddy: Well, they didn't provide a link, but they told me the sections.

Petrosc: I really don't think they have a case. I think they know they don't have a case. Because, actually, their letter was a bit "soft", i.e. didn't threat with taking it to court, just asked me to give them the domain.

Typist: I am going to speak with a lawyer, just not decided who, yet.

Lawyer is the most safe way for you.
There are already a few high skilled Lawyers in this area.

 

[fischermx]

I've just discover one strange thing. The site of this company features several products. Their products are listed in a drop down menu and in links in the bottom of all pages.
Some of their products have the "R" sign. But exactly the one they one from me doesn't. They have like 4 products with the "R" and two products without it.

But just to clarify, they do have the trademark, I've just found it here:
http://oami.europa.eu/CTMOnline/RequestManager/

 

[Mr. Deleted]

Freddy: Well, they didn't provide a link, but they told me the sections.

Petrosc: I really don't think they have a case. I think they know they don't have a case. Because, actually, their letter was a bit "soft", i.e. didn't threat with taking it to court, just asked me to give them the domain.

Typist: I am going to speak with a lawyer, just not decided who, yet.

I have heard of companies asking for the Auth codes to transfer a domain out without even as much as a C+D.

 

[fischermx]

I have heard of companies asking for the Auth codes to transfer a domain out without even as much as a C+D.

I don't get it. Do you mean I should give up the domain already?

 

[Mr. Deleted]

No. I mean some try to over reach so far as to not even make threats at all... Some think that just cause they have a TM somewhere they own exclusive rights to it everywhere, but with a generic .com in any language they DON'T have EXCLUSIVE rights. They may have some limited rights, but not exclusive rights.