Does without prejudice apply to UDRP ?

[domaingenius]

Here is the position. Somewhile ago I regged what I think is a very good geographic name (not at all; the one I referred to in earlier thread,seriously) . Then I had contact 6 months from someone by Hotmail. I did a check of the senders IP and it came from a large IP lawyers firm in European Country acting for a client. I contacted and basically they offered a mid xxxx
amount and said otherwise they would use WIPO. I said xxxx was not accepted and please advise me on what basis their client contended they had IP rights.
They came back and said their clients company name was "Their Name and my Domain Name" Ltd . i.e. for example Fred Bloggs London Ltd (London being my domain name ,for example).
I said that did not give them a right to the domain name and the domain was being developed for a legit project, as it is and I have partnership with large company pending on it.
Went quiet for several months until today I received a call from their in house lawyer (not the european lawyers) saying "lets forget email and can we discuss". He then said could I tell him what I want for the domain so he can get things sorted. I said I did not want to sell but feel free to make offer as once UDRP was threatened it was not possible anyway to talk without prejudice. End of conv.

The question is, IS it possible in anyway to get a valid declaration from them that would exclude what we discussed from UDRP ,i.e. like without prejudice ?.

Of course although I am developing the site legimitately there is always a price.

DG

 

[jberryhill]

As a rule, no. Some panels will consider settlement discussions to be substantively inadmissible, but not always.

http://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0491.html

Here, Complainant has not shown that Respondent registered <justbulbs.com> "primarily for the purpose of selling" it back as required under paragraph 4(b)(i). In their reply brief, Complainant says that the Respondent demanded monies in excess of their out-of-pocket expenses during settlement negotiations. (Reply, paragraph 5). Specifically, the Respondent is said to have demanded that Complainant divulge some of its savings resulting from an early settlement, in the return of the administrative fee. This appears to be a creative request, which shows that there was not only a pending legal dispute, but it was initiated in the UDRP forum, where issue was joined between the parties. However, this is not probative of Respondent’s intent upon registering the domain name. Respondent’s demand forms part of a confidential offer to settle the dispute. Respondent only demanded a small amount of returned money, and determined that amount by using a pseudo-disgorgement theory. These facts weaken any inference that Respondent’s initial motive was to resell the domain name. Further, there is no direct indication that Respondent sought to otherwise resell the domain name.

 

[domaingenius]

As a rule, no. Some panels will consider settlement discussions to be substantively inadmissible, but not always.

http://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0491.html

Here, Complainant has not shown that Respondent registered <justbulbs.com> "primarily for the purpose of selling" it back as required under paragraph 4(b)(i). In their reply brief, Complainant says that the Respondent demanded monies in excess of their out-of-pocket expenses during settlement negotiations. (Reply, paragraph 5). Specifically, the Respondent is said to have demanded that Complainant divulge some of its savings resulting from an early settlement, in the return of the administrative fee. This appears to be a creative request, which shows that there was not only a pending legal dispute, but it was initiated in the UDRP forum, where issue was joined between the parties. However, this is not probative of Respondent’s intent upon registering the domain name. Respondent’s demand forms part of a confidential offer to settle the dispute. Respondent only demanded a small amount of returned money, and determined that amount by using a pseudo-disgorgement theory. These facts weaken any inference that Respondent’s initial motive was to resell the domain name. Further, there is no direct indication that Respondent sought to otherwise resell the domain name.

Thank you for that. Hmm, I shall have to be very careful what I say I guess.
It is a shame that UDRP does not make a provision for allowing all without prejudice communications to be excluded, then there would be a lot less UDRP's.

Also may I ask. IF the party comes to me and says "we will offer you $50,000 for the domain" and I say "yes ok" ,can they then backtrack and issue
UDRP and say that I accepted US$50,000 which is in excess etc ?.

DG

 

[jberryhill]

IF the party comes to me and says "we will offer you $50,000 for the domain" and I say "yes ok" ,can they then backtrack and issue
UDRP and say that I accepted US$50,000 which is in excess etc ?

That was the pattern in tristan.com and the ace.com/ace.us cases.

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1816.html

The Complainant contends that the Respondent’s abusive intent is apparent from the exchange of emails, which took place early last year. That exchange was initiated by an earlier series of approaches to the Respondent by the Complainant’s broker wanting to know if the Respondent was prepared to sell the Domain Name. Initially, the Respondent failed to respond, but it eventually indicated that it would accept nothing less than a 5-figure sum. The Complainant’s broker sent a ‘chaser’ offering $10,000. On that offer being turned down, the broker asked if $100,000 would suffice. The Respondent said that it probably would suffice and the correspondence terminated there.

Although "the correspondence terminated there", the broker (which was Sedo in this instance) reported back to the complainant that the domain registrant was demanding 100K. Accordingly, the complaint repeated Sedo's lie.

 

[domaingenius]

That was the pattern in tristan.com and the ace.com/ace.us cases.

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1816.html



Although "the correspondence terminated there", the broker (which was Sedo in this instance) reported back to the complainant that the domain registrant was demanding 100K. Accordingly, the complaint repeated Sedo's lie.

Blimey !. So are you saying John that there is, as appears, no way at all to negotiate the sale of "a" domain without putting oneself at risk of a UDRP ?.
Is there a way ?. In my cases there is no conclusive TM unless a geographic llocation can be trademarked ,but still I am reluctant , and yet why should I be barred from negotiating a sale ?

DG

Just a further point. I guess I would be better off transferring the domain name to a Registrar in my home Country (UK) , would I ?. Then at least, am I correct, litigation could be pursued here in UK ?.

Thanks
DG

Johm, just read that Tristn UDRP you referred to and thanks, very interesting and some neat points that might be useful in mine.

DG

 

[mulligan]

Blimey !. So are you saying John that there is, as appears, no way at all to negotiate the sale of "a" domain without putting oneself at risk of a UDRP ?.
Is there a way ?. In my cases there is no conclusive TM unless a geographic llocation can be trademarked ,but still I am reluctant , and yet why should I be barred from negotiating a sale ?

DG

Just a further point. I guess I would be better off transferring the domain name to a Registrar in my home Country (UK) , would I ?. Then at least, am I correct, litigation could be pursued here in UK ?.

You would rather pay 'litigation' fees in pounds?

 

[domaingenius]

You would rather pay 'litigation' fees in pounds?

Nope I would do it myself in the UK Courts. Whereas if it was fought in USA I would then have no choice really but to appoint lawyer.

DG

 

[jberryhill]

Blimey !. So are you saying John that there is, as appears, no way at all to negotiate the sale of "a" domain without putting oneself at risk of a UDRP ?.
Is there a way ?. In my cases there is no conclusive TM unless a geographic llocation can be trademarked ,but still I am reluctant , and yet why should I be barred from negotiating a sale ?

I wish there was a one-size-fits-all answer to whether there is "a way". Certainly, when you receive a sales inquiry, you should always be concerned that someone is merely sizing you up for a cybersquatting claim.

 

[domaingenius]

Certainly, when you receive a sales inquiry, you should always be concerned that someone is merely sizing you up for a cybersquatting claim.

Oh for sure I do that. Even if it is a generic looking email addy I alway check the IP and many a time have come up with a law firm's details when they are just writing as "Mr Smith" . Problem comes when they use Gmail as that doesnt show the originating IP as far as I know.

DG

 

[draggar]

This is actually quite scare and wouldn't offering to buy it just to use it in a cybersquatting suit be a case of entrapment?

If they initiated the dialogue with the intent / appearance of intent to purchase the domain, shouldn't the domain owner be under some protection?

Heck, I am willing to bet that even if the price was right Barnes & Noble would be willing to sell books.com and then if they accepted, the other company could initiate a UDRP? (This was only an example, BTW, but what if it was Walden Books?) Most domains have a price tag where the owner would be willing to sell.

 

[steveatvillas]

Building on John's comments, what legitimate law firm these days uses gmail? A phone call...you never know where it's coming from or who else is listening in.

My test: Mr./Ms. "whoever you are" send me a fax on your letterhead right now. I'll wait. If a European law firm, ask them for their Registration Nº. If USA, look them up in Martindale and Hubble (www.martindale.com).

In other words, don't talk turkey if you don't know who's gonna be eating it.

Again, see my response to your other post, look at Clause 4a and 4c of the URDP and test the domain, its registration and its use against these "yardsticks" of law. Once you become familiar, it will guide you in future regs.

Are you familiar with the WIPO case, know as the "Barcelona decision"? This set the tone for other geo cases.

Steve

 

[Dave Zan]

Building on John's comments, what legitimate law firm these days uses gmail?

Would you believe one lawyer here does?

 

[steveatvillas]

Man, nothing surprises me anymore......

Heck, I'll give him one of my dropping domains and GoDaddy'll give him/her a free email acount...