Serious Advice Needed against $$,$$$,$$$ firm

mulligan · Sep 7, 2006

Advice:

Edit your post and remove all information you just posted.
Then.. contact a good domain lawyer

PS: Under the "Then.. contact a good domain lawyer"
Do a search on this forum for 'domain lawyer'

DNjet · Sep 7, 2006

I don't think that the extra word as you describe "group" will play a big part , it will come down to if they can prove the domain is confusingly similar with the content confusingly similar as to where you are profiting from traffic intended to their domain, they offered you 1k because that is cheaper than filing UDRP and attorney fees. You might consider a counter offer of 2k , they might bite.

BobDiGiTaL · Sep 7, 2006

I can not believe they counter offered.
I would contact that person and begin negotiations.

Ian · Sep 7, 2006

You try to resist the company and you are in for a long legal tussle which will not only financially debilitate you but also waste your time. Accept that you are cybersquatter and charge the TM owner reasonable money in exchange for transfer of the domain.

Onward · Sep 7, 2006

I would take Mulligan's advice. Coorespondence about wanting to sell the trademarked name is enough to have it turned over via wipo...if they are willing to give up 1k not to have to pay the cost of the wipo...I think you have majorly scored.

S-L · Sep 7, 2006

.....

DNQuest.com · Sep 7, 2006

Not being hypothetical here, you are squatting and violating TM law. You will lose a UDRP. Take the $1,000.00 and run. If you push them enough, they may want to make an example of you.

What I find funny is you claiming they no right to their legal name and saying theu don't have rights to "group". All that means is they cannot claim "group" in itself as a TM, but they certainly do have the TM for "Health Finance Group".

1 - You don't need permission from court/WIPO, they could care less if you shoot yourself in the foot.
2- Companies can not show bad faith if you registered thier TMed domain. Your actions will show bad faith or not.
3- What they are doing is trying to be amicable about the situation. Be offering you a settlement, they are not acknowledging your rights to the name. It is aobut dollar and cents.
4- ugh, the rule of thimb is similar or confusingly similar.
5- ugh again.. so what they used an abbreviated version of thier name. In domains, the shorter name is better. But legally are listed as thier full name.
6- Take thier offer and run and hope you don't anger them by your ignorance.

Suggestion- Use the search box and lookup "trademark" and "TM", it will help you in the long run and save me writing my thesis of cybersquatting 101

EDIT TO ADD: I was writing my response when you posted again... You have the domain parked at SEDO, people do that to capture traffic, why register and park a domain unless you know there will be traffic?, additionally, offering the $20,000.00 is a sign of bad faith. Did you ever bother to Google or Yahoo the name in question to see if it was a TM? Or the USPTO?

DNQuest.com · Sep 7, 2006

oops, double post...

S-L · Sep 7, 2006

DNQuest.com · Sep 7, 2006

anytime

Be very happy they offered you 1000 for it, most companies would not do that. It is a hard lesson learn, just be happy they let you off very easy.

tekz999 · Sep 7, 2006

DNQuest.com said:
Not being hypothetical here, you are squatting and violating TM law. You will lose a UDRP. Take the $1,000.00 and run. If you push them enough, they may want to make an example of you.

What I find funny is you claiming they no right to their legal name and saying theu don't have rights to "group". All that means is they cannot claim "group" in itself as a TM, but they certainly do have the TM for "Health Finance Group".

1 - You don't need permission from court/WIPO, they could care less if you shoot yourself in the foot.
2- Companies can not show bad faith if you registered thier TMed domain. Your actions will show bad faith or not.
3- What they are doing is trying to be amicable about the situation. Be offering you a settlement, they are not acknowledging your rights to the name. It is aobut dollar and cents.
4- ugh, the rule of thimb is similar or confusingly similar.
5- ugh again.. so what they used an abbreviated version of thier name. In domains, the shorter name is better. But legally are listed as thier full name.
6- Take thier offer and run and hope you don't anger them by your ignorance.

Suggestion- Use the search box and lookup "trademark" and "TM", it will help you in the long run and save me writing my thesis of cybersquatting 101

EDIT TO ADD: I was writing my response when you posted again... You have the domain parked at SEDO, people do that to capture traffic, why register and park a domain unless you know there will be traffic?, additionally, offering the $20,000.00 is a sign of bad faith. Did you ever bother to Google or Yahoo the name in question to see if it was a TM? Or the USPTO?

Exactly.

S-L · Sep 7, 2006

Just shot them an email...offer accepted, transaction being handled via Sedo... wow, in hind site and after hearing everything from everyone, I can't believe I thought I had a case. This could have gotten real bad real fast. Just so everyone know and can chuckle at my ignorance some more... it was a multi-million dollar law firm I was playing hard ball with. I think every domainer should take the time to study trademark laws as it pertains to domains. Let's just say that's what I will be taking the time out to do this weekend as I am sure that not every situation ends up working as well/lucky as this one.

2ndWave · Sep 10, 2006

1) Is my correspondence with the firm permissable in court/wipo case? YES!
2) Have they shown bad faith in stating that they are willing to make an offer and thus proceeding with an offer? NO! , and in fact some companies will make an offer just to get you to reply and then will use it against you in their case, so be careful about replying.

just wanted to reply to question #2 especially because I've read decisions where this was done and used against a domain owner.

Domagon · Sep 10, 2006

Without knowing the exact name / company involved, it's difficult to say if you did good or not ...

With that said, I'll throw my dimes worth in ... if the domain was as generic as you indicate and they approached you with an offer to buy at $1K, I'd bet they'd gone upwards of ~$5K without litigation.

Ron

denny007 · Sep 11, 2006

Why everyone always mention just USPTO (US pattent office) - there are hundreds of another countries besides USA and all have some trademark office. There is impossible to search all TM databases in the world...

Domagon · Sep 11, 2006

denny007 said:
Why everyone always mention just USPTO (US pattent office) - there are hundreds of another countries besides USA and all have some trademark office. There is impossible to search all TM databases in the world...

Because many domainers, being their nature, view the USPTO like being a glorified Whois of TMs, which it's NOT!

On a related note, TMs are territorial ... it's legally possible for multiple businesses to use the same mark, if in different markets and/or offering differing products / services.

Most have no understanding that the USPTO is only for the U.S.; yes, some registrations in there reference foreign registered marks, but they don't magically appear there - the owner of those marks had to go through some effort, pay money, etc to get them in there ...

Getting back to the U.S. ... even within the U.S. the USPTO DB is not comprehensive ... it doesn't include state / provincial marks nor common law marks that are legally enforceable to some extent because they are being actively used in commerce in the U.S., but are not registered for whatever reason.

Ron

DNQuest.com · Sep 11, 2006

Domagon said:
Without knowing the exact name / company involved, it's difficult to say if you did good or not ...

With that said, I'll throw my dimes worth in ... if the domain was as generic as you indicate and they approached you with an offer to buy at $1K, I'd bet they'd gone upwards of ~$5K without litigation.

Ron

The name isn't generic, it is the legal name of the comapany who uses a .com without the word "group".

I think the reason USPTO is important is because jurisdiciton on .coms and .nets. is the US. So if you have a US mark, it stregthens your case. But there are TMs all around the world. Though they maybe territorial, many countries WILL recognize other countries TMs. Plus with the internet, it is easier to make the world your marketplace.