Got Letter From Attorney/wipo And I Need Advice.

DOMA1NS

Level 2
Joined
Jan 8, 2008
Messages
29
Reaction score
0
Feedback: 0 / 0 / 0
I received a letter that I’m being taken to WIPO. I would love for anyone to give me info on where I stand.

In 2004 I left my job and opened a new business here in the US. I purchased a few domains that I could use for branding my business in 2004. Let’s pretend I was opening a shoe related business and one of the domains that I purchased was: ekix .com (“kix” as in “kicks”, ie. shoes). I paid a pretty penny (low $X,XXX range) for this domain, but I ultimately decided to use another domain to brand my business. I did use this domain to forward to my website. I kept it because it was a very tough decision on which domain to use for branding.

In 2008, I go to work for a large shoe related retailer. I can’t compete with my new employer, so I therefore take my website down and just park the all my domains so they pull up footwear related info. I keep the domains, because I may one day reopen my own business.

In 2009, a company in Europe trademarks “ekix” for an energy drink brand and set up the domain: ekixEnergyDrinks.com (ex.) As soon as I stopped forwarding the domain, I started getting offers from individuals and businesses wanting to purchase the domain. In the back of my mind I’m thinking that I may one day use these domains again, so I’m not motivated to sell them. I turned down quite a few offers in the low-to-mid $X,XXX range.

Fast forward to present day. I get a letter from the company’s lawyer and WIPO informing me of the upcoming arbitration. The letter states that: 1.) My domain is too similar and confusing to their trademark. 2.) I have no legit interest in this domain. 3.) The domain was registered and being used in bad faith.

In response to these 3 things, I would say: 1.) They applied for and received their trademark 5 years after I purchased the domain. 2.) While I’m not currently using it for an active website, I have used it in the past and I’m still employed in this field. 3.) If I decide to reopen my business and want to use this domain again, it would fit my needs perfectly, therefore if I were to sell it, I would want as much as I think it would cost to purchase a domain that I could use for similar branding purposes. In 2012 they did contact me and offered to purchase the domain for mid $XXX , but I declined and stated that if I were to sell it I would want mid-to-high $X,XXX.

What should I do next? Where do you think I stand in relations to having WIPO take my domain away?

Thanks in advance for your insights and advice.
 

Theo

Level 20
Joined
Feb 28, 2004
Messages
30,304
Reaction score
2,184
Feedback: 723 / 0 / 0
Consult with an IP attorney who will examine the facts closely and will give you professional advice.
 
Top Bottom