Lawyer trying to strong arm me for my domain name !!! Need advice!!

[George Verdugo]

bodyDear Mr. Verdugo,

I refer to the email of my colleague, below and to previous correspondence regarding the domain name www..

We request that, by no later than 31 August 2011, you provide us with information of your intentions towards the domain name.

If such such information is not provided to xxxx by 31 August 2011, xxxx will take steps to initiate proceedings with the Arbitration and Mediatin Center of the World Intellectual Property Organization pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy"). You might note that the Policy is incorporated by reference into your registration agreement with the registrar of your domain name, GoDaddy.com.

We await your response.

Yours sincerely

 

[eeedc]

That is a very weak "strong arm" letter. See previous threads for what a strong strong-arm letter looks like.

http://www.dnforum.com/f26/legal-threats-company-no-trademark-service-mark-thread-460793.html

http://www.dnforum.com/f26/cease-desist-letter-name-two-independent-trademarks-thread-463592.html

If you have a good-faith use for the name, tell them.
It's also an opportunity to sell it to them to save the cost of their legal fees, but you have to be careful about asking for money or it may be used against you.

 

[Poker]

Lawyer trying to strong arm me for my domain name !!! Need advice!!

If it's not a TM issue tell him it's not your first rodeo and that he needs to make an offer if he wants to be taken seriously.

 

[eeedc]

"can someone see if the domain is trademarked?? "

You DON"T want to post the domain name, as noted in this forum rules, because they may google the name and use information against you. PM people the name if you need to.

If your domain contains IBA, google IBA and you can see that many different organizations use IBA. This is known as multiple trademarks - thousands of firms have "American" or "United" in their trademarked names. You can look up registered trademarks on the Patent and Trademark site.

If you own an dot org, it's not worth that much in my opinion - sell it to them for the price of the dispute resolution pasted below:
If you own a three letter dot com - It might be time to start the International Bohemians Association. I was thinking of starting an International Association of Lazy Hamsters as a joke site, but I suppose International Bohemian Association would work as well in giving you a good faith use.

It does not look good for you that they previously contacted you; they may be serious. I hope your lawyer, while he might be a good local lawyer, has some trademark/domain name experience.



How much does the UDRP Administrative Procedure cost?

For a case filed with the WIPO Center involving between 1 and 5 domain names that is to be decided by a single Panelist, the fee is USD1500. For a case that is to be decided by 3 Panelists, the fee is USD4000.

 

[George Verdugo]

"can someone see if the domain is trademarked?? "

you don"t want to post the domain name, as noted in this forum rules, because they may google the name and use information against you. Pm people the name if you need to.

If your domain contains iba, google iba and you can see that many different organizations use iba. This is known as multiple trademarks - thousands of firms have "american" or "united" in their trademarked names. You can look up registered trademarks on the patent and trademark site.

If you own an dot org, it's not worth that much in my opinion - sell it to them for the price of the dispute resolution pasted below:
If you own a three letter dot com - it might be time to start the international bohemians association. I was thinking of starting an international association of lazy hamsters as a joke site, but i suppose international bohemian association would work as well in giving you a good faith use.

It does not look good for you that they previously contacted you; they may be serious. I hope your lawyer, while he might be a good local lawyer, has some trademark/domain name experience.



How much does the udrp administrative procedure cost?

For a case filed with the wipo center involving between 1 and 5 domain names that is to be decided by a single panelist, the fee is usd1500. For a case that is to be decided by 3 panelists, the fee is usd4000.

sent pm

---------- Post added at 10:15 PM ---------- Previous post was at 10:13 PM ----------

How can you edit this thread???

 

[grcorp]

Would appreciate it if you could PM me the domain as well.

I would reply in a manner to the following effect;

"My intentions are not any of your business. Should you have a legitimate interest in the terms within the second level of this domain name, it should only be for the present use.

With that in mind, I will continue my legitimate usage of the domain name.

Do not send any further emails alleging improper use unless said email contains evidence that XXXX may have rights to this domain name, in which case your submission will be considered accordingly."

 

[eeedc]

The WIPO, not being part of the USA legal system, can't hit you with damages beyond taking the domain name from you, so they must know that you have nothing to lose - beyond the domain name - by doing nothing.

Since the domain name is not going to be worth much to you or anyone else (who does not want trademark trouble either), I would just offer to sell it to them for the $1,500 cost - maybe add $500 to $1,000 for what their lawyer would cost them (they might have already done most the work). Unless you upset them by being rude or asking for crazy money, paying for a sure thing beats paying the same amount of money for an uncertain outcome.

 

[grcorp]

The WIPO, not being part of the USA legal system, can't hit you with damages beyond taking the domain name from you, so they must know that you have nothing to lose - beyond the domain name - by doing nothing.

Since the domain name is not going to be worth much to you or anyone else (who does not want trademark trouble either), I would just offer to sell it to them for the $1,500 cost - maybe add $500 to $1,000 for what their lawyer would cost them (they might have already done most the work). Unless you upset them by being rude or asking for crazy money, paying for a sure thing beats paying the same amount of money for an uncertain outcome.

It wouldn't surprise me if they pay the extra money running the risk of losing if it will end up making an example out of the domain owner to show that they don't screw around.

If word got out that that's how they do things (i.e. pay $500 for the names rather than take it to WIPO), then every domainer will find a reason to piss them off with a domain and thus turn their $8 investment into what would be an easy $500.

Don't be afraid of a legal proceeding. Remember, the onus is on them to prove whether they're right or wrong. You are innocent until proven guilty.

Not speaking in a criminal law sense of course, but applying the concept in an analogous manner to fighting it out in arbitration.

 

[TheLegendaryJP]

I am a little shocked you are this deep and dont know if its a TM, secondly why hasnt your lawyer looked at it for you?

 

[Gerry]

I guess I am appalled that someone does not know when something is TM.

And then asks for someone else to look it up for them???

 

[George Verdugo]

I guess I am appalled that someone does not know when something is TM.

And then asks for someone else to look it up for them???

My attorney just fired the email to them yesterday evening do he did search for it yet !! i just wanted to see before hand thats all !! but we will know !! thanks for the responses

 

[Gerry]

Jorge,

Its simple and its free.

uspto.gov is the database.

It would also be a shame to attempt to defend a name that was clearly a TM violation. And it would be a bigger shame for an attorney to accept money in defense of something that he knew could not be won.

All these matters need to be and should be resolved before making a case for or against domain claims.

Sometimes things can be very simple and can be resolved very simply without getting threats, counterthreats, suits, countersuits, and lawyers involved.

 

[eeedc]

While it's easy to look up REGISTERED trademarks, it's not as easy to look up UNregistered trademarks or to understand what the trademark covers and how strong the trademark is.

Obviously if some cybersquater intentionally gets a domain name such as COKECOLANY.com , Coke is just going to make an example of him and not give hime a dime, but I don't think this is the case here.

I think it was a dropped domain in 2008, that I don't think would appraise at anything, so sell it to the company for the cost of the legal fees, unless they think you are a cybersqautter/jerk and want to make an example of you.

I only spent 5 minutes googling it, and it looked like there were TWO, International Boxing Associations, neither of which looked like they invested much in their websites.

---------- Post added at 12:42 PM ---------- Previous post was at 12:37 PM ----------

And unless you really wanted to start a business/website with that exact name, it's not really worth paying for a lawyer to do a trademark analysis, when you could walk away for nothing (except losing the domian name) or at most make a few thousand dollars.

 

[George Verdugo]

While it's easy to look up REGISTERED trademarks, it's not as easy to look up UNregistered trademarks or to understand what the trademark covers and how strong the trademark is.

Obviously if some cybersquater intentionally gets a domain name such as COKECOLANY.com , Coke is just going to make an example of him and not give hime a dime, but I don't think this is the case here.

I think it was a dropped domain in 2008, that I don't think would appraise at anything, so sell it to the company for the cost of the legal fees, unless they think you are a cybersqautter/jerk and want to make an example of you.

I only spent 5 minutes googling it, and it looked like there were TWO, International Boxing Associations, neither of which looked like they invested much in their websites.

---------- Post added at 12:42 PM ---------- Previous post was at 12:37 PM ----------

And unless you really wanted to start a business/website with that exact name, it's not really worth paying for a lawyer to do a trademark analysis, when you could walk away for nothing (except losing the domian name) or at most make a few thousand dollars.

Thanks bro for the advice!!

 

[grcorp]

Your PM inbox is full, bigboydog.

In any case, I would recommend you do what I said in my previous post. The onus should be on THEM to assert their claim, not on you to explain what your intentions are. That's your business. Not theirs.

I am not a lawyer, so do not consider this to be legal advice.

 

[Cartoonz]

actually, he should do nothing except wait for his legal counsel to field the response.
The complainant has been instructed not to communicate directly with the OP, so any further communication from him will not be favorable to the outcome.

 

[eeedc]

Your PM inbox is full, bigboydog.

In any case, I would recommend you do what I said in my previous post. The onus should be on THEM to assert their claim, not on you to explain what your intentions are. That's your business. Not theirs.

I am not a lawyer, so do not consider this to be legal advice.

It's a civil case where there is no right to remain silent. And even if it's a criminal case and you are innocent, tell the police your alibi, not "it's none of your business (that I was drunk in some bar last night instead of murdering my ex).


If he says nothing, they will put the fact that he said nothing in the papers. And the burden of proof is low in civil cases.

---------- Post added at 05:28 PM ---------- Previous post was at 05:03 PM ----------

The court even made Bill Clinton when president talk about his sex life. Bill Clinton could have always said, "it's none of your business," but he would then lose by defalut. But not telling the truth did not help Bill Clinton either.

 

[Cartoonz]

had you provided me with a courtesy of a reply to my emails to you dated 12/23/10, 12/27/10, 1/6/11, and 1/12/11, and my letter to you dated 12/27/10, perhaps this matter would have been resolved by now.

Please contact me directly at this email address to discuss your proposed resolution to this matter. I will be looking forward to your reply. [/FONT]

Removed

Guys... it is up to the attorney to handle it from here on. Period.

 

[eeedc]

Obviously, if one has an attorney, one should coordinate with him/her.

But if you have an honest alibi (good-faith, fair-use of the name), I don't see the downside of talking. Of course if you have a "Clintonesque" alibi such as, "I never had sex with that woman," one can get in more trouble.

From the original email in the top post where they did not even ask him to turn over the name for free, it sounds like they just wanted to get it on record that they asked if he had a good-faith use for the name and get it on record that he did not answer. In civil cases, not speaking up, such as not saying where you were the night your wife was murdered, can be used against you in a civil case such as OJs civil case, but not in a criminal case.

And the burden of proof is lower in civil cases which is why OJ is walking around broke, but OJ is not in jail.

---------- Post added at 11:31 AM ---------- Previous post was at 11:04 AM ----------

Someone is selling PenthouseNY.com on the fixed price over $100 thread on DNforum.

My first thought was Penthouse Magazine, and the PenthouseNY.com would be an obvious trademark violation.

But then is occured to me that in NYC and a few other large cities, people do live in and sell penthouses. So if the good faith intention was to have a real estate site selling or renting penthouses, it would not infringe on Penthouses right to the name in the adult entertainment field.

If Penthouse Magazine wrote to you and asked what you are going to do with PenthouseNY.com, I don't see a downside to telling them it's for a real estate site, if that is the honest answer.

 

[George Verdugo]

Update : my attorney told me that the AIBA is not going to give me a dime!!!! my attorney said i can turn it over to them or proceed with the courts! what do you think i should do ?? should i give it up?? let it expire ?? or private register or transfer to someone else?? can they take my other domains or cash from me ??? My friend is not a domain attorney ! but he was cool just to fire off a letter to them! need advice! and help thanks !