What's the chance he'll win? Please help!

[websitedeveloper]

Thanks for taking the time to review my post!

I've been working on a deal for weeks that's for a very nice dot com receiving thousands of type-ins per day. I have the $XX,XXX sitting in Escrow and the seller was moments away from transferring the domain to me when he received an email from the owner of the dot net version. This email states something like, "you're infringing on my TM and if you don't transfer the dot com to me as I have a TM on it, I'll go to ICANN then you'll have to".

So now the seller and I are concerned I could lose the domain to the dot net owner. The seller has therefore given me the option to cancel our deal. I don't want to, but if it's likely the dot net version owner can win the dot com from me, I should cancel the deal, or I'll lose the $XX,XXX.
This is where your advice on what to do would be fantastic!

The domain is descriptive and generic in nature, however the owner of the dot net has an American corporation with the exact name. The dot com domain also only gets its traffic because the dot net version is very famous (in top 5,000 Alexa!).

So based on the information would you go ahead with such a deal:
1. the domain is generic and descriptive in nature
2. I will develop it offering a different service to that offered by the owner of the dot net version so as to not infringe his TM
3. the dot com was registered first, in 2001 and his dot net in 2002
4. the dot net version owner has a registered Service Mark dated September 2004 for the exact term

Please help! Thanks again

 

[draqon]

under those circumstances, i recommend going ahead with the deal. but first, write the owner of the .net a nice letter explaining how your actions are in compliance with both the Lanham act and UDRP. that will possibly shut him up.

 

[Domagon]

My personal opinion:

1. Go ahead with the deal

2. Do not respond to the emails from the .net person *

* If the .net person becomes a real pain, and you have some extra cash, hire an attorney and challenge their TM application; if actually registered, it's likely not yet incontestable.

Ron

 

[jberryhill]

Before spending $xx,xxx, you might think about spending $xxx to have this reviewed by an attorney with the real facts filled in.

 

[changejobs]

John is right. Have a qualified attorney with strong domain background review the case before making an investment of that type.

Before spending $xx,xxx, you might think about spending $xxx to have this reviewed by an attorney with the real facts filled in.

 

[namestrands]

I agree with JB on this one. You will have to get advice.

However being as synical as I am, the owner might have had a better offer, and this would be a great way to get out of it.

Either way its a large investment, but the fact that they own the .net and a corporation with that acronym does not actually entitle them to the .com

They still have to prove that your domain is causing confusion against their mark and that the domain is a bad faith registration. But I find it very suprising that after all this time, they ask for it now...

 

[websitedeveloper]

Thanks for your replies and advice!! It's all very helpful and appreciated!
Depending how it goes I'll post what happens.

John, email sent.

 

[changejobs]

John,

i forgot to ask, do you know any qualified lawyers ?
regards
larry

John is right. Have a qualified attorney with strong domain background review the case before making an investment of that type.

 

[namestrands]

John for all intents and purposes is a qualified lawyer....

 

[websitedeveloper]

Thank you for your advice John. I re-read your email and now realise that you have answered my questions bringing closure to this matter.

 

[Sarcle]

so don't leave us hangning what happened?

 

[Theo]

I think the .com owner is fabricating this "letter" because he got cold feet.

 

[csitenet]

jberryhill, just out of intrest, what do you charge you clients per hour?

 

[Dave Zan]

jberryhill, just out of intrest, what do you charge you clients per hour?

Who cares! His background and experience make every cent worth it!

Just kidding, CSite.Net. I know you're just asking specifics.

 

[websitedeveloper]

The deal went through and the seller was a pleasure to do business with.

The seller and I agreed we would keep our transaction private, so I'm sorry that I cannot write more about it, here and at this time...

 

[jheslop1]

The deal went through and the seller was a pleasure to do business with.

The seller and I agreed we would keep our transaction private, so I'm sorry that I cannot write more about it, here and at this time...

If I may ask. What are you doing with the domain? I'm assuming it was parked or didn't offer the same service/product as the .net domain before you purchased it.

So what have you done with the domain? Have you created a site offering the same product/services to confuse the .net users that type .com instead of .net?