Selling a name after defending it

[options]

Say you sucessfully defended a name in a WIPO case.

I know it wouldn't be a clever move, but what consequences
could bring your eventual future offer of the name (for sale) to
the former complainant?

 

[system0]

i think this could be very risky indeed - if they didnt want to play ball surely they could report you

 

[HOWARD]

If you already successfully defended a WIPO case and the 10 days have run for filing in U.S. Federal or any other national court, I see no problem in negotiating a sale with the losing claimant, especially if you negotiate through legal counsel.

 

[options]

Originally posted by HOWARD
If you already successfully defended a WIPO case and the 10 days have run for filing in U.S. Federal or any other national court, I see no problem in negotiating a sale with the losing claimant, especially if you negotiate through legal counsel.

But don't you think they could re-open the case, with new proof of "bad intention"?
Even if they initiate the sale, wouldn't that be tricky?

 

[Sheva]

Originally posted by options


But don't you think they could re-open the case, with new proof of "bad intention"?
Even if they initiate the sale, wouldn't that be tricky?

I would like to know this too

Mike

 

[Ari Goldberger]

But don't you think they could re-open the case, with new proof of "bad intention"?
Even if they initiate the sale, wouldn't that be tricky?

-----------------------------------
The answer is that a Complainant can indeed file a new UDRP case and again allege bad faith. This has occurred before. In a UDRP case, the Complainant has the burden of proving bad faith registration and use and, just because the complaint did not meet its burden of proof, does not mean that they won't be able to meet it in the future. So, it is possible that post-victory sales could evidence bad faith. On the other hand, I agree with Howard, that if you use counsel and handle the negotiations professional and with great care, you can negotiate safely. But there's no guarantees...

 

[jberryhill]

"So, it is possible that post-victory sales could evidence bad faith. "

Well, yes, people will try anything. This sort of claim did not go over well with Judge Chin in the SDNY:

http://www.johnberryhill.com/cello -
"The trial was canceled. Neither side requested reinstatement and the dismissal "with prejudice" therefore became final on or about September 14, 2000.
[...]
On September 25, 2000, Storey's counsel sent a letter to "Cello Limited" (the "September 25th Letter") stating that Storey had successfully concluded trademark litigation in which Storey's "ownership interest" in "cello.com" had been "challenged" by Cello. The September 25th Letter further stated that Storey was offering the domain name for sale. (Def. Mem. at Ex. 1).
[...]
The September 25th Letter was not an act of "cybersquatting" in any event. The fact is that Storey did prevail in the First Action. Cello filed suit, asserting claims to the domain name. The claims were dismissed "with prejudice." Hence, Cello failed to achieve the relief it had sought and Storey retained his registration of the domain name.

Cello cites several cases where judgments entered "with prejudice" were held not to have preclusive effect on later claims. None of the cases, however, remotely resembles this case. Here, the allegedly "new" act of "cybersquatting" occurred less than a month after the case was dismissed and was not a new transaction at all. Rather, the September 25th Letter was simply a reassertion by Storey of his rights to the domain name that had been confirmed by the dismissal of the First Action "with prejudice."