Reverse domain hijacking

[Amdek]

Hi All,
I won a name at a snap auction and it is not trademarked. However I get this email threatening me with a law suit with all the expenses and lose of business if I don't turn the name over, then came the certified letters not from an attorney but rather a web consulting firm who is representing his client.

I told him with out a trademark he has no case , but he claims he did speak to an attorney and since his client owned the name for 9 years and spent plenty of money promoting the name etc, he can win on common law rights.

In addition he claims that now that I know about the status I am showing willful intent.

Any thoughts, has anyone ever won a name back with out a trademark?
Thanks
Amdek

 

[Raider]

Hi All,
I won a name at a snap auction and it is not trademarked. However I get this email threatening me with a law suit with all the expenses and lose of business if I don't turn the name over, then came the certified letters not from an attorney but rather a web consulting firm who is representing his client.

I told him with out a trademark he has no case , but he claims he did speak to an attorney and since his client owned the name for 9 years and spent plenty of money promoting the name etc, he can win on common law rights.

In addition he claims that now that I know about the status I am showing willful intent.

Any thoughts, has anyone ever won a name back with out a trademark?
Thanks
Amdek

A letter is one thing, action is another. The first thing I would do is NOT communicate with anyone regarding the domain until you seek advice from a reputable attorney. Can you post the letter and edit out the parties names?, it would be helpful.

 

[typist]

Make sure you never use the domain in any context similar to these guys products/services/trademarks.

Eg. if they have any rights to the mark "banana", as a brand name for clothes, never use banana.com for clothes related business. Sell bananas - computers, or whatever else, and you'll most probably be fine.

 

[Raider]

It sounds like the web developer lost the domain for his client, and now he's using legal threats to get it back on the cheap, I don't believe he has any ground to stand on, unless your using the domain with the same product or service as typist pointed out. Its also going to cost him a bundle in legal fees to get the domain back, so you maybe getting an offer instead, in the meantime, I would ignore him.

 

[Theo]

Anyone can sue anyone else over anything. Consult a lawyer; if you don't want to invest $200 - $300 for a consultation that means the domain is not worth $300 to you.

 

[Focus]

tell him you have lots of money and resources and he can spend 20k on legal fee's if he wishes and it does'nt matter to you either way as it's a tax write off at the end of the year...but he can buy it for 5k

 

[tekz999]

I don't think that's a good idea focus lol. It will most likely get you no where. One of the options is to sell the name to the other party for your snapname auction purchase price if the name is not that important for your business. Advice to the other party to both move one step forward, this will be a win-win situation, and you both will become much happier, and much less worries.

However, if the name is worth fighting for, then I advice you to remain silent, stop any form of communication with him, and get an attorney to represent you, and seek for his professional advice, and approach.

 

[Focus]

Well, they legally lost the domain and it went through full expiration and was even available at public auction for them to repurchase and he legally bought it fair and square..not sure what else there is to say here...no TM as stated by thread poster, they should have paid the renewal fees...don't let them bully you..tell them you will fight it till the end and have plenty or resources to do so..or they can buy it

 

[katherine]

Hi All,
I won a name at a snap auction and it is not trademarked. However I get this email threatening me with a law suit with all the expenses and lose of business if I don't turn the name over, then came the certified letters not from an attorney but rather a web consulting firm who is representing his client.

Did they justify their stance ?
If I were serious about a domain I would at least have a lawyer write the letter on my behalf.
They didn't.

...
In addition he claims that now that I know about the status I am showing willful intent.
Amdek

It is not a good idea to show you are knowledgeable with TM law

I would tell him to put me in touch with the lawer (if there is one).
If the domain is worth something to you be prepared to retain the services of a lawyer, that is if you hear from them again.

 

[DNQuest.com]

First off, the OP states there is no trademark, according to whom? No offense, but there are many people here who have no idea what a TM actually is. Just because you never heard of something or there is no registrered mark does not mean there is no trademark.

Second, a C&D and letters do not have to come from lawyer, anyone can do them, lawyers are usually better at them.

As far as the next steps. First, don't listen to Focus, you will be better off. Next, did you try to research the company claiming to have a TM? if so, how? Did you google them to see if in fact they are a real company or not? Were there many links and various sources showing that the company may have some standing somewhere? Like i said, you don't have to hear about them, but they could have some rights.

You need to sit down, take a breath, and take this on logically. Just because it was in a drop does not mean you are free and clear. There could be a number of factors. But rest assurd, a dropped domain gives not give up TM rights. So see if they may possibly have TM rights. If it could be questionable, did you use the domain in a competing manner? Is the actual name worth the fight? It does sound like you may need real legal help if you decide to fight for the domain.

What not to do, be combative, spout off threats you have no intention in following through, lie, make snap statements using your heart and not your head.

 

[jberryhill]

I won a name at a snap auction and it is not trademarked

And who told you this?

I told him with out a trademark he has no case , but he claims he did speak to an attorney and since his client owned the name for 9 years and spent plenty of money promoting the name etc, he can win on common law rights.

And your basis for believing they don't have common law rights is... what?

 

[Amdek]

Hi All,
Thanks for the replies.
1)The domain is in use at a parking page and it is the same as they were using it as it is two generic words and cannot be used for anything else, and since it is not Trademarked , why should I not use it, that is why I bought it.


2)I did offer to sell them back the name for a very fair price, and he claimed he cannot afford that fee.

3) Raider , I think you hit the nail on the head as he probably lost the name for his client and now is running scared trying to bully me in to forking it over, why else would a attorney not be involed as sdsinc pointed out.

4) I tried to be fair and sell it back not for what the market could bring but a cost of what I paid plus time

5) It comes down to the so called "Common Law" and with no filed trademark , does he have a case? I haven't heard of anyone winning a domain back that was lost from lack of payment on so called "Common Law"

6)It is not that the name is sooooo Important to me , I'm just sick of these guys trying to basically extort a name from me and not willing to pay a fair price.

&) thank you for the replies

 

[Deleted member 70408]

tell him you have lots of money and resources and he can spend 20k on legal fee's if he wishes and it does'nt matter to you either way as it's a tax write off at the end of the year...but he can buy it for 5k

I would avoid doing this. It's like you are at a bar and a guy is threatening to kick your ass, and you replying "go ahead and take your best shot tough guy." Maybe you can beat him up, but why take a chance that you'll get a black eye in the process. Like someone else said, if the name is worth keeping, consult an attorney. They could have common law rights perhaps, and maybe it isn't worth fighting. Oftentimes people expect a difficult time dealing with domain investors so they come out with cannons blazing. This is probably a result of dealing with tactics that people like Focus obviously display. Sometimes common sense prevails and you both can be happy with the agreement. Better to have a fair settlement rather than a domain name you can't develop without fear of a lawsuit.

 

[Amdek]

Ok some quick replies,
Thanks Mr Berryhill for adding in your thoughts, I may be hiring you shortly if you are available.

I checked for a registered mark, I know this doesn't mean they don't have some claim based on using the name for the passed 6 years.
The name (if I can explain this correctly) is not the name of there business, they have a separate name and website for that, rather the name is generic, a let's say a off shoot of what they sell, like a service., the name was redirected to their main site.

I have also called the owned directly and emailed him with no response, placed a inquiry (as a customer)at there website with no response.
So I don't even know if the guy who is harassing me is really connected with the so called client of his, since that client hasn't replied.


I have since taken the name down until I see what happens.

 

[jberryhill]

rather the name is generic

My general experience is that domainers are poor judges of whether a term is "generic". Whether they have an enforceable common law claim is going to depend on the distinctiveness of the alleged mark. Saying "it's kind of like this" or "it's kind of like that" is not going to be helpful.

I have also called the owned directly

Steerike one...

I have since taken the name down until I see what happens.

Steerike two...

The crowd eagerly awaits the next pitch.

 

[DNQuest.com]

I guess my post is invisible except to myself. No love for DNQ...

As far as checking, did you google the name to see what pops up? If they are claiming common law TM, then the name should have some secondary meaning, if so, you should be able to somewhat see that. It is not an end all to the common law question, but it can help.

 

[Raider]

I have also called the owned directly and emailed him with no response, placed a inquiry (as a customer)at there website with no response. So I don't even know if the guy who is harassing me is really connected with the so called client of his, since that client hasn't replied.

So this could be AlienGG for all we know.

The next time your contacted by this guy, tell him you'll only reply to the previous owner on record, If what he says is true that he's working on behalf of the previous owner, ask him to provide proof of Power of Attorney....Is the email address of the previous owner active?

 

[Amdek]

Update:
Sorry DNQuest, I appreciate your comments and Yes I did all my homework on Google, they are listed there, one link, no incoming links, they have a few incoming links on all the rest of the search engines but not very much.

In addition I found out that on their main site they have a links page, with the name I've purchased on it, two other links on that page are now dead as well , meaning they have been bought by others and are parked. Three more links on that page points to other websites owned by them and are live.

John, I don't want to take your time too much since I can appreciate your position, but what do you mean by strike one, two, etc, was I wrong in trying to verify if the company that did own the name is connected with the person who is contacting me, and why was it wrong to temporally take down to parked page, no infringement if the name points to nowhere.

please clarify if you can.
Thanks Again to all
Amdek

 

[Raider]

You have to forgive John, he talks in riddles....

 

[Amdek]

Thanks Raider for your thoughts and comments, What is AlienGG?
Not up to speed with that one.
Thanks