Need some advice

[Chappy]

So I have owned a 4 letter .com since 2008. Sometime in 2009 a guy in Canada said his business goes by that name and he has the .ca domain. He demands my domain and starts threatening legal action calling me a squatter. I tell him my name is simply parked, showing results unconnected with his business but if he wants it I'd be glad to give it to him for what I paid (no gain to me). So, he gets all upset and continues to send me threatening emails for about a year.

In 2010 he managed to get the name trademarked with CIPO and is using that as evidence that the .com is now rightfully his.

I refuse to just give the name to him as I don't really think I've done anything wrong and clearly did not register this name in any bad faith. He seems to have it in for 'domainers' and wants to make an example of me through litigation.

The latest development is that he's contacted the parking company where the name is parked and had them remove the name given his trademark claim. Can he do this? I'm waiting a response from the parking company but it seems unfair to me.

Thanks

 

[ukbackorder]

Has he actually taken any action beyond threats? ie have you received a cease and desist/solicitor's letter etc? Regardless I would cease all contact with this guy.

---------- Post added at 07:43 PM ---------- Previous post was at 07:41 PM ----------

BTW most parking companies will roll over at the first threat so you'll get used to it. Just park it elsewhere making sure you show only a generic page.

 

[DropWizard.com]

He has absolutely no claim against you. In fact his actions could be construed as harrassment and interference with a 3rd party contract.

TM's in Canada are not effective in the US and your registration of the .com clearly predates his TM so he'll lose on the argument of "bad faith". That has to be proven before he'd ever get the .com.

Frankly at this point I agree about breaking off all contact with him. Deal with the parking company you're currently at because it sounds like he'd just go after the next one anyway. There's no reason the parking company should delete the name they can block anything related to the TM.

Unfortunately it's just a part of the business to deal with these whack jobs masquarading as intelligent human beings. I can remember one that had a small business for a short time 10 years previously, never incorporated, no website ever claimed a TM on a domain that we owned. Nothing in the world could convince him his claim was ridiculous. In his (warped?) mind the entire world should have known he used that name and it was his forever. We just had to put him on ignore until he went away. :upset:

 

[A D]

He has absolutely no claim against you. In fact his actions could be construed as harrassment and interference with a 3rd party contract.

Agreed, is the name a generic term?

-=DCG=-

 

[katherine]

There is a name for this: reverse domain hijacking.

 

[Chappy]

Agreed, is the name a generic term?

-=DCG=-

Yes its generic...albeit not a very well known term but its in the dictionary (noun).
He's threatening to take action against me by filing a case with the supreme court in his Canadian province but I haven't been served any formal notice yet. Again, he's been harrassing me for over a year now but never formally done anything.
I've dealt with UDRP's before but never anything like this!

I'll avoid contact (I have for several months now) but I'm still upset at my parking company which told me they could no longer accept the name since this guy obviously contacted them.

 

[draggar]

There is a name for this: reverse domain hijacking.

QFT.

I'll avoid contact (I have for several months now) but I'm still upset at my parking company which told me they could no longer accept the name since this guy obviously contacted them.

I see this as a possible new tactic (maybe it's not new) - someone who is savvy reports the domain with all the parking companies in hopes that enough black list it so the owner gives it up.

If it's a generic word and you monetize it for the generic - they have no claim to it. The Canadian courts can't do anything about it- he has to go though WIPO.