Threatened about my acronym becoming a TM so I can be forced to sell cheap !

[angel69]

Can somebody help ....? I'd bought an acronym (let's call it WXYZ.com) well over 3 yrs ago, it wasn't TMd then and it still isn't, semi-pronounceable, we haven't had time to develop, it's always been parked. This jerk contacted me over 1 yr ago, here are the main parts of his text (edited for spelling), Jan 12, 2011. It was his response to a friendly email I'd sent after his inquiry about sale/price, we've always listed it high $ XXX s. I said he should make an offer, it's still worth that to us + we paid a lot for it, others have also sent inquiries. In this text as you see he claims he'd been using it as his own "trademark" for 2 yrs, obviously he wasn't familiar w/what a trademark meant, at least not back then, & thought that starting a biz & calling it WXYZ would give him tm rights, he also claimed he was sick + poor, wow.....whereas all domainers are 100% healthy & filthy rich I guess ... they aren't even his initials (which would not make any difference) he took part of his 1st name and part of his last name and lo and behold, he had his own trademark, isn't he clever ! ............

Before we got a chance to reply he emailed 8 days later (Jan 20, 2011), same story, in another part of the email he implied I should donate WXYZ.com to his biz for altruistic reasons, (gee, aren't domainers so loaded that we can afford giving out names for free !) then I simply forgot to answer, I actually didn't know what to say if I had.....

Now he's treatening me that he's about to trademark "WXYZ" (we've owned WXYZ.com well over 3 yrs) and that once he does I face a $ 250 K penalty for violating his tm, even though we've owned the thing free and clear > 3 yrs, anyone who reads all he's said (not all of it is posted below) knows he had neither the resources nor the intention to tm any domain and is only resorting to this so that if the tm is granted to him he can then "force" me to sell him WXYZ.com for $ 150 (or perhaps just donate it !) .....

I wonder if I should even reply since he'll use anything I say against me, the truth is that assuming h was telling the truth about being sick/poor I'd feel sorry but no one has ever helped me because I'm in dire straights w/$ or w/a health problem, in fact both apply to me right now.... (anybody here got any free names for me ? lol) Since he wanted it for free a yr ago and now only offers $ 150 there cannot be any deal since the gap is too wide.... does anybody know for sure he doesn't have a prayer w/this ? while it's not a dictionary word, number, etc, something that would be denied as a tm, it still is a 4-letter acronym that isn't pronounceable, I don't know how easy it is for someone to succeed w/such lousy claim since by his own admisssion his business only started in 2009 and we'd owned the name several mos already back then.....my concern is that ICANN (provided someone recommended he go there) would make me give it to him/sell it cheap just because we're not putting it to "good use", I would've been shocked if anyone had made this argument not long ago except I once read an ICANN officer did exactly that, making a domain owner give up the name for that very reason, the decision was heavily critized and it was said that officer was inexperienced (I'll try to get that link and post it, it should make for an interesting read.....)

In the event that he should win for some strange reason then we should all leave domaining immediately since in that case what's to prevent some domainer who doesn't like me from trademarking my 5 top names just so that I can later be forced to let him have them/sell to him dirt cheap ? I'd be willing to negotiate if it was a "reasonable" price like he argues, only "reasonable" means a lot less money to him (I didn't know if I should post this in the domain lawyers' own area....) If this is happening to me it can happen to you, I tried to read relevant lit on this but my main question wasn't answered, he could be just blowing smoke and isn't even trying to tm the thing but if people are telling him he has a decent chance he may be going for it for real, he probably went to a domain appraisal free service and the site told him $ 150, lol, if those appraisal services had any accuracy I'deitherbe a millionaire or would've sold my valuable names for like $ 5 !...... Could this jerk ever even have ANY remote claim whatsoever ?.....



Jan 12, 2011
…..I was trying to avoid an argument over an item that has been used by myself as my trademark for the past two years. I have a GOOD standing with that name. How much do you think it’s worth ? Please be reasonable. I am just a local photographer with a good name and camera. It’s worth something to me but not if it’ll put me bankrupt. I only have my disability to work with and I still have my bills to pay…..

Jan 20, 2011
…..My trademark is only very locally known in small areas like a clinic. I'm trying to have a doctor open with my name in order to trade help....and with my trademark I can basically help him get his non-profit clinic open..... I have the .net and .me and all but those wouldn't be the same. Obviously the .org and .com are the most common and it would greatly help the people of Miami….. It involves a bit of marketing so the .com would greatly benefit is. But this is a very tough and large job we are attempting to do on a tight budget with very limited resources other than donations and grants……..Any generous offer on your part would be highly appreciated and not taken for granted……

May 8, 2012
….. Please contact me at my email promptly to avoid any company damages on your part. I just recently submitted many trademark images from the year 2009-2012, including vehicle, corporate name, advertisement on both websites as well as commercially. My car license plate was even sent. Business cards, fliers, logos, t-shirts, pens, photos with my logos, websites (many more than you own), and also investors, including Social Security Disability willing to provide me free legal aid as soon as my trademark is registered. ….. Remember, the domain name is only appraised for $150. Violation of a trademark is $250,000 not including any damages incurred……. Offer a reasonable price, and no one needs to risk going to court in Florida……

 

[YOYOYO]

I don't understand why you're so concerned about this. You say you even have a trademark. There can be numerous trademarks granted for the same term under various uses (classes) for a trademark.

You owned the domain name way before he even applied for his trademark, if he did. End of story. You win.

Unless I'm missing something in what you're saying.

Did you check to see if he actually did submit a trademark application as he states.

http://www.uspto.gov/trademarks/index.jsp

---------- Post added at 11:24 PM ---------- Previous post was at 10:59 PM ----------

Reading this over again, I would tell him to stop emailing you about all this nonsense and tell him to file a lawsuit if he thinks he has a case, amd make it very clear that you know he doesn't.

The guy is just a nut who is trying to make you crazy, and to be honest, he's kind of succeeding. Forget about the goofball, block his email and phone number and tell him to get lost.

 

[Johnn]

Unless the email came from a Lawyer or Legal Department. I would not response to the email.

 

[angel69]

Thanks, Johnn/Yoyoyo, it's reassuring, I'm actually not that concerned except like I said there seems to be precedent where ICANN grants a domain that's not being "utilized" to a new person seeking the domain itself or a tm for it, I'll find that thread. Yoyoyo, sorry I wasn't clear but no, I don't have a tm on that name, never have, as far as I've searched there's never been one (I didn't want to post the real domain name here cuz his party will find this thread more easily if he does an appropriate search) I was also trying not to get to the point where a lawyer/some authority formally contacts me. If/when that occurs then I guess I'll need a lawyer ? lol. I was never planning to tm the domain btw, getting a tm is expensive, I have better names I could do that with

This is my 1st tm dispute/dispute wannabe ever lol, I once heard you can't mature as a domainer until this happens to you...

I'm glad Yoyoyo says that since we owned the name several mos before this character opened his own biz this is what counts, I suspected it but couldn't find a clear answer. What normally happens when somebody wants to tm a name and the .com already exists wasn't clear to me, if that party is OK carrying business w/WXYZ being trademarked by them and they don't go after my WXYZ.com (whether I'm using or not,) whether I was still violating a tm in that case then. I didn't think that when a domainer owns a name that this by itself could prevent anyone from trademarking the name but that's where the questions begin. If he goes after your domain after he gets the tm and no price can be agreed on --I say this since almost any name can be submitted for tm, in theory-- and if there's already a .com in use, who then had the last word if a dispute arises. I guess I need to read about more about this

Yeah, Johnn, I shouldn't answer I suppose, he picked my ass lol so I'm not as willing to compromise on price. As far as I know he hasn't filed an app for a tm, he's not driving me crazy yet lol, I'm not really using the name, we wanted to sell when a good offer came and it's not that valuable, my concern was about the general concept since we own many names and this can start happening often. I had considered emailing him just once more telling him to come closer to asking price or else get lost since he doesn't have a prayer here. If he started his own biz in 09, who on earth does that in these times w/o assuring they can get the .com ? Therefore I shouldn't be punished for his poor judgement. The person doesn't have to be a domainer, this is common sense. I had heard more than one tm can be granted for the same term in different uses but I thought the real issue was rather his pursuing a tm while coexisting w/my .com, I found it unclear who decides what happens if he takes action

PS Johnn, if you're reading this, I wanted to shorten my 1st post/correct something, it looks awful long but my screen doesn't show the "edit" option anywhere, I tried several times, this has happened in the past w/other posts, any idea why ? ...thanks

 

[Johnn]

You can't edit in this section.

 

[woofard]

Definitely, do NOT worry about anything he is saying. YOYOYO and Johnn are completely right. No action is necessary. Many times, even letters from lawyers aren't worth responding to (but make sure you have your own lawyer tell you that)

The only communication you should respond to from this person is a negotiation towards a profitable sale.

As a matter of fact, you should charge him more for the name now that he's got into your head and upset your peace of mind.

Let him know the more he acts like a jerk, the higher the domain is going to be priced and you're getting ready to pay the next 30 years of registration fees on the domain so he'll never have it unless he pays up or shuts up...

Just my 2 cents... give or take a penny

 

[angel69]

great, woofard, 3 for 3 in my favor, looks like someone doin what he threatened to do is not that simple after all .... :approve:



k, johnn, understood :cry: ....too bad, though, thing is, a post never looks as long to the poster as it does to all others ...

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