Sort of a strange situation...

[RMF]

This is bit of a strange situation. Its a little long, so I understand if you don't read it

Also, I used fake terms/names like "hotmail.com", "example.com", and "bob" a lot instead of using the real info. As you can probably understand why.

Well, here we go....

I was contacted late last week about a domain I own, however, I wasn’t home. Let’s call the domain “example.com”. Its not really “example.com”. I then called back a couple hours later, and left a message with his wife or daughter of this guy who is contacting me. Let’s call him “Bob”. “Bob” doesn’t call me back, and he doesn’t even email me. Now, lets pretend my email in the whois is [email protected] (real email not @hotmail.com, but is also a free email provider). “Bob” went and contacted the owner of “hotmail.com” and basically got the owners “hotmail.com” involved with all of this, and what im about to talk about shortly. Lastnight, the owner of “hotmail.com” calls me to discuss this situation. A situtation that I really knew nothing about since I haven’t spoke with “Bob” as of yet. So now I basically learn what “Bob” wants through the owner of “hotmail.com” which really made no sense at all. There was no point at all to bring the owner of “hotmail.com” into this situation, as they had nothing to do with it. Now that the owners of “hotmail.com” are involved, they’re worried that they will face legal action, even though I know this can’t happen. Afterall, they didn’t own the domain or have any real connection to it. But still and all, they’re still worried. This also makes me a little mad because it creates problems for me with them (the owners of “hotmail.com”). I feel like the bad guy here, and I didn’t do anything wrong. I registered the domain. I didn’t steal it!

After I got off the phone with the owners of “hotmail.com”, I contacted “Bob” by email. I then called “Bob” in the morning to deal with this ASAP. “Bob” then tells me that “example.com” use to be his. “Bob” then says he just found out that his company didn’t own it anymore. Here is where it gets a little weird. “example.com” expired in or before February of 2003. I registered “example.com” in May. Its now July and hes only now realizing he doesn’t own it anymore. Of course, he is blaming his employees for not keeping his whois information correct, and Network Solutions for not telling him to renew “example.com”. The email “Bob” used for the adminstrative contact in the whois had expired a long time ago. In fact it was registered by another company in March of 2000. What I learned here is that he had at least 2 years to update his email address to receive renewal notifications. He failed to do this. I also realized today which I also explained to him that his main domain name that he still uses, uses the same email he used for “example.com”. So, he obviously can’t manage his domains very well.

Ok, now I hope I didn’t confuse you too much with that.

When I spoke with him on the phone this morning, he said he wanted the domain back. He wanted me to say a price. I refused, and told him to email me his offer. He suggested over the phone that he might also be willing to trade domains for it as he owns several domains. I told him to include any domains he thinks he would like trade with his offer.

When I got his “offer” it did not have anything about any possible domain trade. He gave me a very low offer of $100 and cost of transfer, which wouldn’t even cover my cost in registering this domain. He also included some excuses as to why he lost the domain.

I replied with a nice letter. Here is basically what I said:

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“Bob”,

I'm sorry but your offer isn't acceptable. Your offer wouldn't justify me selling it. I have spent more than what you offered to register the domain name. This doesn't include the time I spent or the fact that it is a great domain name. The domain is an important domain to me as I intended to develop it. The fact is your employees failed to keep your domain whois information up-to-date, which resulted in the expiration and deletion of the domain name. I have decided to ask $3000 for the domain name. "example.com" is worth a lot more to me, but I also don't want to appear unreasonable. Had you not been the previous owner of this domain, I wouldn't sell it.

I would also like to make it clear that “hotmail.com" does not have any involvement with this domain name. I simply use their free email service much like yahoo or aol.

Regards,

RMF
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Now, I thought I would be the nice guy and let them buy the domain back at a reasonable price. I wasn’t going to hand it over for less than what I paid, and I want a decent price that is acceptable to me. I after all didn’t do anything wrong and the domain is valuable to my business and myself. If I had my way, I would keep the domain. But, since he was the previous owner, I thought I would be nice and offer it back for a reasonable offer since he did contact me first about purchasing it.

He then replied with this (Below). Of course, some of it is also removed with examples to keep this somewhat private.

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Mr. RMF

Thank you for your email concerning this domain name. I trust that you understand my position as President of “Bob”’s Blah Blah and Blah Blah Inc. and the responsibilities as a Director to the shareholders.

I believe that business practices are based on understanding and fairness. Having said this it is impossible for me to quantify a charge of $3000.00 for the return of this domain. The simple fact that the cost is less then $40.00 to secure a name is my bases for this decision and the fact that you noted in this email that: "Had you not been the previous owner of this domain, I wouldn't sell it."

Unfortunately your demand will not be met by my firms, however please take note, my attorneys will be in contact with you regarding a formal application to both the courts and Network Solution and "all user rights" that were in place with regards to this domain. It truly troubles me when people make an error and individuals believe that they can profit from them. I will spend the $3000. 00 to deal with this event, in a fashion that will not benefit an individual. This decision is based on a simple business principle...it is only yours because we did not renew...not because we did not own or employ the domain.

Please also note: As a courtesy to “hotmail.com” for his assisted, it is my position to allow him to have an understanding of the situation.

Please direct any future correspondence to our company attorney: Mr. “Bob”’s Attorney

Thank you for your time

Yours truly,

“Bob”
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Now, most of his email is flawed. It did cost more than $40 to acquire the domain. I’m not trying to profit from his mistakes. If I have to sell the domain, I want an acceptable price for it. It’s valuable to me because it’s a great name and I want it for my business. Also his nearly last line “it is only yours because we did not renew...not because we did not own or employ the domain” is also flawed. He didn’t renew BECAUSE he FAILED to keep his EMAIL information up-to-date. And it was incorrect for at least 2 years.

Also, a side note. I have taken screenshots of the whois database of two domains I know he owns that are very important to his business that also uses the old domain that dropped in March of 2000 as the email. This really does show that he has a history of mismanaging his domain names.

Oh, now when I check archive.org for the domain I see that “example.com” only redirected to his main domain. The domain is also not listed in search engines. So it appears it wasn’t really promoted very much. At least not online. He also said on the phone the domain was trademarked, however he did not offer any proof of this. I did a search online for any US or Canadian trademarks regarding his company and “example.com”, and found nothing except for his company name. Nothing in the trademark mentioned “example.com”.

Also, with his latest email, he has continued to involve “hotmail.com” which is not necessary. It just creates more headaches for me as “hotmail.com” is getting more worried from all of this.

It’s hard to tell, but I think this must be one of the largest posts ever made.

So, for those of you who made this far, what do you think about all this? Any help or suggestions would be appreciated.

RMF

 

[JoDomains]

Hello RMF,

Yes that was a long post :-D . About your situation there are some points I'ld like to say:

1- Are you sure that the domain name is not a trademark. A trademark is not simply the presence of a record in the US patents office. If he can prove that he advertised the domain name and it was linked to his business, then he has trademark rights. If he has trademark rights, then he can get the domain from you even if he left it to expire and you got it after that.

2- Network Solutions, "Hotmail.com" or anyone else can't do anything about the domain name. If he wants to dispute the domain name, he must first submit it to ICCAN through on of the Arbitration Services (the most popular is the National Arbitration Forum at www.arb-forum.com). Filing a complaint to ICCAN will cost him $1500. Then the NAF will ask the registry to put the domain on hold till it looks in the case. After he presents his case and any supporting evidences, the NAF will contact you by mail and email and set a deadline for you reply (usually 3-4 weeks). After they view the case, they either decide that the domain shall be transfered to Bob or not (if they decided to transfer the domain to Bob, Bob will be required to sent Network Solutions a copy of the decision. Network Solutions will wait 10 days before transfer the domain in case you decided to go to the court to dispute the NAF decision). If any of the sides didn't like the decision, then they can then go to court (most of the time the courts support NAF decisions). That will cost him a lot more!.

3- ICCAN has a standard Uniform Domain Name Dispute Resolution Policy (UDRP) at http://www.arb-forum.com/domains/UDRP/index.asp . Take a good look at it. There are 3 things that he must prove in order to get the domain from you. First one is that the domain name is similar or identical to his trademark. Second one is that you don't have any intrest in the domain (in your case, you have to prove that you are using the domain by having a website at the domain name or at least using it for emails, or designing a logo, or submitting a business plan,...etc). Thrid point is that you registered and is using the domain in "bad faith". Bad faith means you registered it to either harm his business or to resell it to him. He can prove the third point since you sent him an email saying that you'll sell him the domain for $3000. That was a mistake from your part, but remember he has to prove the 3 points otherwise the domain will be yours.

4- Contacting "Hotmail.com" is just an attempt to put pressure on you. Don't give it any thought.

5- the screenshots of WHOIS is not an evidence since they can be easily forged. However, Network Solutions or whoever is his registrar of the domains must keep a record of 3 months of changes to any domain. So they can prove what was his whois data and what he changed it to. It will not harm to keep the screenshots and submitting them to NAF if it got to there.

Good luck and let's know how it goes ;-)

 

[JoDomains]

Sorry I made a small mistake. The fee for the domain complaint with NAF is $1150 for a single member panel, and $2500 for a three member panel.

 

[RMF]

Thanks for the information.

I don't feel I registered it in bad faith. I only sent a "counter offer". Not the initial offer. He contacted me first to buy the domain. He also requested me to suggest a price for the domain. Which I didn't until after he made his offer. How is this bad for me?. The only reason I agreed to possibly sell the domain to him well below whats it worth to me, is because he was the previous owner. I wanted to be reasonable, but I also didn't want to give it away for basically nothing. Its valuable to myself and to my business.

Doesn't the fact that he had incorrect whois information for such a long period of time have anything against him?.

Also, I don't think the domain is trademarked. I think it would be a tough domain to trademark.

Anyways, thanks for your information. Anymore help, suggestions, comments, would be appreciated.

RMF

 

[jberryhill]

"Also, I don't think the domain is trademarked. I think it would be a tough domain to trademark. "

Depends on the domain name.

Incidentally, the filing fees at NAF, WIPO or ADNDRC are just the filing fees. The typical novice complainants' attorney will charge much more than that to prepare and file the complaint. For example, public records indicate that the City of Salinas paid something on the order of $21,000 for the privilege of losing a UDRP dispute.


Change your admin contact email address if you are worried about the email service provider doing something odd.


"If he can prove that he advertised the domain name and it was linked to his business, then he has trademark rights. "

No. I can use the word "lawyer" in advertising from now until the end of time. That is not going to earn trademark rights, even on the unstated operative assumption here that Bob is in a common law jurisdiction. There is also the issue of use *as* a trademark... Suffice it to say without a dissertation that using a term in advertising or in connection with some business does not, without more, create trademark rights.

Per usual, the most fascinating aspect of the types of stories that get posted here is the complete absence of anything about why the domain name was registered, or what, if anything, it has been used for. "The domain name is valuable to my business" - how? I mean, do people just register domain names in their sleep, and then wake up in the morning wondering, "How on earth did I happen to end up with this domain name?"

The dispute policy is not at all as simple as "if they have a trademark, they will get the domain name". It gets sold that way to trademark owners, who are shocked to find out that there is more to it than that.

 

[jberryhill]

"Please direct any future correspondence to our company attorney: Mr. “Bob”’s Attorney"

Go right ahead. After all, Mr. Bob is going to get billed for every minute of that guy's time you waste.

 

[RON2]

Like you said, his logic is flawed. If there's not a trademark issue involved here, you're in the clear. He lost all rights to the domain name when it expired. If he wants to spin his wheels and waste money on a UDRP and lawsuit, go ahead and let him.

As far as trademarks are concerned, is it obvious what the "example" term plays to Bob's business? Is it a product name? Slogan? Check uspto.gov's trademark search to see if there IS a registered trademark on the term.

 

[JoDomains]

thanks John for you input. When I talked about advertising, I didn't mean just using any word. If he advertised example.com through newspapers, brochures, direct mail,...etc then he has rights to it. Of course we are not talking about "Lawyer" or "USA" words. But when I talk about "NeshTech" for example which is not a generic name, and I advertise it and use it widely , then I have trademark rights to it even if it's not registered with the US patents office. Isn't that right?

 

[jberryhill]

If "Nesh Tech" is used in a manner that would be recognized by consumers as an indicator of the source or origin of the goods.

The basic rule is that trademarks are adjectives, not nouns, e.g. "BAND-AID bandages", "BAYER aspirin", "CHRYSLER automobiles", "TROJAN condoms".

You might be organized as "Nesh Tech Inc." as your trade name, and you might include your trade name in your advertising, but that can be different from using it as a trademark in connection with specific goods or services.

But, depending on the jurisdiction, registration may not be required to accrue a trademark interest, which is why I keep saying that Google is a better "trademark database" than the USPTO. If you type a term into Google, and you find a preponderance of the first several pages of hits are references to the same entity, then you might well consider whether that entity is pretty well associated with that term in some way.

 

[RMF]

It is a generic name. Again, I've done searches for the domain, and there doesn't appear to be any trademark on it.

As for search engines, the only thing that comes up with my domain is 1 posting in a guestbook made by this guy that had the domain as he email once. Thats it.

The domain is in the same industry as to his business, but its also in the same industry as mine. However, I wouldn't really be competing with him as we are quite different on how we approach the industry. *Hope that makes sense*.

RMF

 

[GT Web]

Just reading that made me mad, what an asshole that guy is!!!
You are clearly in the right here, no question about it. I suggest you call up the lawyer and spend a good few hours explaining the situation, most likely, the lawyer will realize he has no chance of winning the domain back for his client and 'BOB' will either let you keep the name or pay you $3000 for it. At least he will be charged a few hundred dollars in legal fees from the time you spent talking with his attourney

best of luck RMF

 

[actnow]

GT, I understand you are saying to communicate with the lawyer to run up the legal fees.

But, sometimes in conversations, you might say the wrong thing which could be used against you.

If you want to communicate with the lawyer. Do it initially by email or letter. And, you then have a chance to analyze what you saying before you send it.

A few careless words could go against him.

 

[namedropper]

I would reply to the person's lawyer that you have tried to be more than fair and that he is being completely unreasonable. Take the $3,000 offer the table and demand $5,000. I would also tell him that by continually contacting "hotmail.com" he could be guilty of harassment.

The concept that it's your fault that he screwed up and didn't renew the domain is absolutely laughable. I wouldn't worry about the guy too much. Other than spouting off a bunch of nonsense trying to bully you into returning the name, it doesn't sound like he has a clue in the world about how anything works legally.

Just to be safe (i.e. avoid the chance that if it goes to UDRP that some totally clueless person will screw up) I would develop the site in whatever way possible so it shows legitimate use in the way you want to use it, if you haven't done so already. You don't need 100% developed site, but demonstrating that it can and will be used for a totally noninfringing way to "Bob's" supposed (hah) trademarks.

 

[RMF]

I'm waiting for his lawyer to contact me. I was going to reply back to point out all his flaws, but I decided I would wait until his lawyer contacts me. I tried to do a nice thing and give the domain back at a reasonable price. Much lower than what I would ever consider selling it at. I personally would rather keep it for my business as its a great name.

RMF

 

[bobovia]

Bob is a cheap loser....I'd tell Bob to cough up 30 grand if he wants his name back.

 

[JoDomains]

keep us posted

 

[RON2]

Originally posted by RMF
I'm waiting for his lawyer to contact me. I was going to reply back to point out all his flaws, but I decided I would wait until his lawyer contacts me. I tried to do a nice thing and give the domain back at a reasonable price. Much lower than what I would ever consider selling it at. I personally would rather keep it for my business as its a great name.

RMF

If you know it's already going there... save your good points for the UDRP! Revealing your hand to the lawyer will only let him know what points he needs to address in his complaint.

At UDRP, you're at an advantage as the respondant because you get to read their complaint and respond to it. They don't get the luxury of seeing your response, so they're shooting blind in trying to prove why you don't have legitimate rights to the name.

 

[jberryhill]

"At UDRP, you're at an advantage as the respondant because you get to read their complaint and respond to it. They don't get the luxury of seeing your response, so they're shooting blind in trying to prove why you don't have legitimate rights to the name."

For as much as everyone complains about the UDRP, this is one of the handier features. The complainant has to prove three things before he/she knows what you are going to say. You only have to pop one of those bubbles.

 

[Jernet]

Boy, wish i knew what that domain was. I would buy it off you. I'd like to deal with "Bob". I like chewing up guys like this

 

[RMF]

I still haven't heard anything from "bob" or his lawyers. I guess they gave up.

RMF