I own a LLLL.org, and they want it... (more)

[Belcamino]

I was approached by SEDO on behalf of someone with a very low offer on a domain that makes nice revenue. I had a page with ads, and also a forum that actually got some use. After I didn't accept their offer, the person at SEDO informed me that they were going to seek legal action. The LLLL was NOT trademarked, but it was an acronym for their TM. It is actually a very common acronym with at least 23 legitimate uses (when I search Google I see a ton of people using it).

Just recently, May 1 - they filed for the TM on the LLLL and I am sure that is in preparation to come after me with a C&D.

I have turned off the page, and now direct the LLLL.org to a legitimate third party page that uses the LLLL in it (it is actually a government page and the LLLL acronym is used in some biological context).

Am I at risk of losing the domain? What should I do?

Thanks in advance.

Bill

 

[hugegrowth]

Find a good domain lawyer in the legal section of dnforum.

 

[Belcamino]

My lawyer friend has advised me:

4. Mandatory Administrative Proceeding.

This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrative-dispute-resolution service providers listed at www.icann.org/udrp/approved-providers.htm (each, a "Provider").

a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

http://www.icann.org/udrp/udrp-policy-24oct99.htm

-snip-

He thinks I will win, if I am sued. But I want other peoples opinion/advice.

Thanks!

 

[dotNetKing]

Did you register it in bad faith?

If not, then if the panel is fair, it would not be right for you to lose it in UDRP (although not impossible to lose of course).

Did you use it in bad faith? If not, even more reason why it would not be right for you to lose it.

I have a portfolio of such .org names and I think I have received 3 or 4 C & D / hand-the-name-over type e-mails/letters but in neither case have the "complainants" followed through to UDRP or legal action (yet), although a couple of them waited a few months and tried again, even with a different law firm.

In all cases I insisted that I registered the domain name in good faith, and additionally that I was unaware of their company until they contacted me, (although after they contacted me I did realise that the automatic PPC pages did show some affiliate links for their products).

The domains were also principally "generic", just like yours, with multiple potential uses, despite the fact that additionally one or more companies had taken out TMs on the names.

I have never yet used professional legal advice for such matters, but there again, the cost to me of the domains has always been way under US$100, so if it came to the worst and I lost a domain, it would be no real loss, just an (unjust!) smudge on my name.

This is just my personal experience, and you should of course take legal advice if you think you need it or the circumstances merit it.

What ever happens, I wish you good look and hope that justice prevails and you can keep your domain name or dispose of it as you see fit.

p.s. It seems strange that SEDO would threaten legal action, unless it is one of their trademarks.

They paid a fair amount for sedo.com and they work in the aftermarket, so I don't really think they would be taking legal action against you, unless there is some blatant abuse.

In what I wrote above, I am assuming that you are refering to UDRP / WIPO / National Arbitration Forum, and not legal action in a court. Although for me, the same criteria should really be applying (and I don't know if they do.)

 

[Focus]

sell it to them...negotitation is key here

 

[domainah]

sounds to me SEDO has become a tool for that other party to threaten you without them having to disclose their contact info etc...dont trust sedo one second..they are not interested in your intrestes..actually..if I were you I might think about seeking legal action against Sedo as they say they act as an impartial third party and clearly violated that. I think by being pro-active about it and telling Sedo that you are thinking about seeking legal action against them as well Sedo will probably ask the buyer to up his offer, which they should because they are trying to steal a domain now if the facts that you are stating are true..

 

[AlienGG]

If an abbreviation can cost you the domain, I'd file a trademark for Sequential Executable Xanthator and send a C&D letter to the owner of Sex.com.
Keep in mind that you have 5 years to dispute a TM reg.

 

[DNQuest.com]

As always, TMs can be tricky, there are many factors involved. Unfortunately, there isn't enough details to give any true opinions. But I will try with the info stated...

1- Was the company known by the acronym? IE- IBM, AOL, etc.. Even though it is not thier business names, we all know what they are

2- Registering TMs in not enough to show rights to a name since the domain was registered before the filing. What you have to watch out for if they can prove they have rights to the name and that those rights were established befoer you registered teh domain. In UDRPs, all a complainant has to do is show they have rights to a name and show that you do not. This is where developing domain can help a domain owner as opposed to parking.

3- have you used the domain in "bad faith"? Though many domaineers have differing opinions, the bottom line is, do you have commercial gain from usage of the domain and how is that gain derived? If it is parked and you offer the TM holders or their competitors goods/services, then that will not help.

4- it does not matter what everyone else is doing, UDRPs stand on thier own merits. IT is just like being pulled over for speeding, if you use the "everyone else was doing it" defense, you will lose.

So, for the 3 items of criterea for a successful challenge...

1- is the domain similar of confusingly similar to name? If the panel accepts the acronym as a TM (which they can and have done), tehn it appears to be yes

2- Do you have rights to the domain? You made no mention how you use the domain though you state it makes good revenue. Now iot would be up to teh TM holder to prove that reveneue was based off of thier TM, if they can, then item 3 comes into play..

3- is the domain being used in bad faith? As mentioned, if the revenue was becuase of their TM, it will not look good for you. You don't say how you get teh revenue, but if it is from parking, that will not help.

Unfortunately, UDRPs does not follow specific guidelines to prove the items of criterea, it is based on opinions of the panelists. Can they be convinced the name is afforded TM status for the purpose of the proceedings (you see that a lot, where there may not be a TM, but compainant shows they use the name in commerce and for "purpose of the proceedings" will treat it as a TM is they are satisfied the complainatn does have rights to the name). The same holds true for your rights to the domain, cna you prove you have rights? You need to convince the panelists. And "bad faith", I have seen some bad decisions, that is why the domain owner has to protect themselves.