Interesting situation

[Raider]

I get this email from a guy who works at a hosting service, Rather than explain it I'll just post it;


Dear xxxxx,

The domain, xxxxzzzz.com, has been recently acquired by you. The
most recent domain owner has owned this domain since its creation and
has used this domain since that time and has a trademark on it. The
site has been down for a number of days now. I am emailing you in an
effort to help mitigate the damages and to communicate on working
with you to retreive this domain back to the original owner.

Please email me back as soon as possible so that I am aware that the
lines of communication are open and we can avoid escalating this
issue through the UDP process.

Sincerely yours,

David blah blah
xxxxxxxxxx Hosting
(xxx) xxx-xxxx

Now the domain he's referring to is the PLURAL version of what I do have, NOT the actual name he's referring to, After a lot of back and forth, he keeps on accusing me of owning the domain, I did a quick search and the name appeared to be unregistered, then I found out the name had underlying data and was showing "pending delete". The owner failed to renew it all the way back in September, so it's been down for quite a LONG number of days.

I pointed out the whois info and haven't heard back from him, It appears that when he did a whois lookup, he failed to enter the plural version, found mine and began his quest on trying to retrieve the name back.

They really want this domain name back and it's due to drop on the 5th.... Now I really have no interest in the name, but the way he went about threatening me with a UDP and a lawsuit, I don't take very kindly to that.

So my question is, if this were you, what would you do? Let it go OR Register the name and try to sell it back to him?... It's more of a brandable domain name, and I did a TESS search on it and the only TM that showed up was DEAD.

 

[grcorp]

Don't consider this to be legal advice.

I wouldn't grab the unregistered name, as that would weaken your case.

As the trademark is dead, he has no business making a claim on it. However, if it were to go to court, he would have much more of an interest in the mark than you would, as he had registered it in the past, and to my understanding, you had never registered any such mark.

I would send a message like this,

"David,

To be clear, zzzzzzzzzs.com, the name you had mentioned in your original email is "Pending Delete" as of this writing. Therefore, it is in nobody's possession. If it is claimed by somebody once it is released, then that person is who you will want to speak to in regards to recovering it. I cannot help you.

Additionally, the mark for the term "zzzzzzzzzs" shows up as "DEAD" on a TESS search, so it may be in your client's best interests to attempt to acquire the name as it deletes, as I think that a UDRP panel will not view a dead trademark as adequate rights to the term.

With that in mind, I will expect to receive no further emails in relation to this matter. I have nothing to do with the domain name you are looking for. I wish you the best of luck in securing it for your client, but as I said before, I cannot help you."

Don't make any mention that you're trying to sell the domain name, as that could be viewed as "bad faith".

Hope this helps.

 

[Raider]

Don't consider this to be legal advice.

I wouldn't grab the unregistered name, as that would weaken your case.

As the trademark is dead, he has no business making a claim on it. However, if it were to go to court, he would have much more of an interest in the mark than you would, as he had registered it in the past, and to my understanding, you had never registered any such mark.

I would send a message like this,

"David,

To be clear, zzzzzzzzzs.com, the name you had mentioned in your original email is "Pending Delete" as of this writing. Therefore, it is in nobody's possession. If it is claimed by somebody once it is released, then that person is who you will want to speak to in regards to recovering it. I cannot help you.

Additionally, the mark for the term "zzzzzzzzzs" shows up as "DEAD" on a TESS search, so it may be in your client's best interests to attempt to acquire the name as it deletes, as I think that a UDRP panel will not view a dead trademark as adequate rights to the term.

With that in mind, I will expect to receive no further emails in relation to this matter. I have nothing to do with the domain name you are looking for. I wish you the best of luck in securing it for your client, but as I said before, I cannot help you."

Don't make any mention that you're trying to sell the domain name, as that could be viewed as "bad faith".

Hope this helps.

Excellent advice, I like it.. And I like your letter... I just wish people wouldn't come out swinging with threats when trying to recover a domain, I think it does more in the negotiation than it does good.

The part about him having more interest in the domain makes a lot of sense... I think I'm just asking for trouble by picking up the name on a drop....

Thank you for understanding and addressing my situation so well, I greatly appreciate it.

 

[companyone]

Hi Raider,

Interesting Situation...well said.

I think this Is quite simple:

1. Ignore this guy..it seems he has no clue...
2. If it is "pending delete"... He has already lied to you once.
3. If his 'TM' is Dead...he has lied to you twice.
4. He has lied to you at least twice...I would not send him anything...just ignore him ( you do not want any emails sent by you...he can try and use against you & try and twist your words.

Let his emails.. and his outright two lies..."hang him"....if it happens to go to WIPO ( which it will not) ~ he is standing on a "one legged stool"!



If he doe's not hold a current valid TM... He has no claim to the domain or the domain you currently own...

I would pick up the other domain when it drops..if you can get it cheap enough... "and forget about it"

This guy has no case at all...IMHO (This Not legal advise) ~ but do not let him try and "Reverse- Hijack" & threaten you!

IMHO opinion as always....

Best with this...but I think your on very solid ground...not him.

Peace To You!
Dan

 

[Raider]

Thanks for the advise Dan... I now feel a whole lot better about what I did. :yes:

This is what happened; The name dropped on Sunday and I noticed it was available for reg, I saw opportunity knocking on my door and I grabbed it... I registered the name and used privacy protection.

The next day I get an email from him sent to the whois privacy protection address, It's an exact duplicate of the first one he sent shown above ^, I didn't reply it. Today I get another email, it's pretty much a repeat of the first but now he's using CAPS in the title, It reads;

Re: ** SECOND ATTEMPT: URGENT: Domain Registration - xxxxzzzz.com - Please email back to mitigate damages **

The day I registered it, I parked the name at Sedo and placed a fixed price of $1200, I figure if he wants to proceed with a WIPO, he'd be spending a heck of a lot more than that.

I'll PM you the domain.... Take Care

Eva

 

[grcorp]

Thanks for the advise Dan... I now feel a whole lot better about what I did. :yes:

This is what happened; The name dropped on Sunday and I noticed it was available for reg, I saw opportunity knocking on my door and I grabbed it... I registered the name and used privacy protection.

The next day I get an email from him sent to the whois privacy protection address, It's an exact duplicate of the first one he sent shown above ^, I didn't reply it. Today I get another email, it's pretty much a repeat of the first but now he's using CAPS in the title, It reads;

Re: ** SECOND ATTEMPT: URGENT: Domain Registration - xxxxzzzz.com - Please email back to mitigate damages **

The day I registered it, I parked the name at Sedo and placed a fixed price of $1200, I figure if he wants to proceed with a WIPO, he'd be spending a heck of a lot more than that.

I'll PM you the domain.... Take Care

Eva

Again, I think you're asking for trouble, especially putting it on Sedo.

Not only are you expressing an interest to sell and profit off of somebody else's intellectual property (despite its disputed existence), but that name can, with the right skills, become associated with other names on your Sedo account; ones which might not have WHOIS privacy, and allow this David fellow to identify you.

Care to PM me the domain as well? Could give you my uneducated opinion having more knowledge about the case.

 

[Raider]

Care to PM me the domain as well? Could give you my uneducated opinion having more knowledge about the case.

Sure

 

[DomainsInc]

Again, I think you're asking for trouble, especially putting it on Sedo.

Not only are you expressing an interest to sell and profit off of somebody else's intellectual property (despite its disputed existence), but that name can, with the right skills, become associated with other names on your Sedo account; ones which might not have WHOIS privacy, and allow this David fellow to identify you.

Care to PM me the domain as well? Could give you my uneducated opinion having more knowledge about the case.

most of these people are full of hot air. i get similar unprofessional emails but nothing has ever come of it. Now if a lawyer contacts you repping a well known business, thats a different story but people like this guy, you have nothing to worry about.

 

[ecomindia]

u did right by havin a privacy protection.

if you face any issue post buying a domain , first thing first, follow the basics.. remove it from all the commercial listings and parkings.
put a "site is under construction" page for the time you close this matter

any case, even to trouble you, will work against you if the intention of buying your domain is to monetize out of it using the brand / trade name by putting it up in the parking / listing ...

also, write a mail, very politely but be assertive "to speak and understand the issue" rather then documenting more on paper and mails , giving good material for legals.

 

[A D]

Raider,

I would have done what you did.

-=DCG=-

 

[ecomindia]

Raider,

I would have done what you did.

-=DCG=-

agree, i would have done the same, only thing is, would not have listed it anywhere for the quarter atleast if i would have aware of a history of TM (although dead)

 

[Gramma]

I had a similar situation - The associated company contacted me .. offered me $100 for BOTH the domains, claimed trademark, didn't make a lot of legal noise actually though. I checked trademark, and it was for a similar but not exact term (mine is generic .. place/product - theirs is branded) - I said I wanted $300 for each domain (the price they should pay for being stupid and not getting the domain in the first place) - They grumbled complained, and DID NOT buy them! So I have the stupid domains - and really can't do anything with them for fear OF stepping on their trademark toes. I shoulda bought the squirrel. (Rat Race 2001)

 

[grcorp]

I shoulda bought the squirrel. (Rat Race 2001)

And a high five to you for citing a pitifully underrated movie!

Rarely do I ever turn down an offer. There's no such thing as a bad profit. I'd rather take an easy $100 on the table than wait out $600 that may never come.

There are obviously exceptions to this rule, like for very premium domains. But in cases like yours where they were one of very, very few possible buyers of the name, I'd rather secure the interest of one who came to me, rather than to try and scout out a buyer from a very limited group of people.

 

[Gramma]

in hindsight - i shouldn't have passed it up. I thought that $600 was not that big of a deal for a company whose products are in every grocery store in the country. Guess i showed them huh lol ...