How do I handle potential UDRP and still sell ?

**domaingenius** · 06-12-2008, 03:56 AM

I had a "Senior counsel" send me an email asking if a domain name was for sale. The subject of the email was "xxxxx com IP" and then in body simple message
and his details stating trademark lawyer etc.

He made no mention of any claim of the name. Now what I dont want to do is blunder into this so got colleague to write and ask " ......Do you claim and rights in the domain or do you have a trademark..." ..

Now if this guy writes back and says "No we dont have any claim and have no trademark" can I then safely make an offer to him , and what if he then says " in fact we do have a claim on the name " ?. Can he trick me this way and still use it in UDRP against me ?.

Thanks
DG

**flamewalker** · 06-12-2008, 08:38 PM

Number one thing: whats the usage of the name currently?

Is the name generic/descriptive?

Did he offer to purchase it first?

Did you do a TM lookup? (google, uspto)

The answers above will result in a more informed opinion

**domaingenius** · 06-13-2008, 03:46 AM

Originally Posted by flamewalker

number One Thing: Whats The Usage Of The Name Currently?

very Little Use, Virtually Nil

Is The Name Generic/descriptive?

no It Is A Made Up Name

Did He Offer To Purchase It First?

this Is What He Said: "i Understand You Are The Owner Of The Following Domain Name. Xxxxxxx.com. Can You Please Let Me Know If You Are Interested In Selling Same. Best Regards.."

Did You Do A Tm Lookup? (google, Uspto)

yep, No Trademark At All

The Answers Above Will Result In A More Informed Opinion

Dg

**DNQuest.com** · 06-13-2008, 09:30 AM

Whats The Usage Of The Name Currently?

very Little Use, Virtually Nil

But how iis it being used? Parked, developed, 404, etc? Virtually nil means there is used, maybe just not getting many hits (ie- parking)

You say it is a made up word, did you make it up or did someone else? This is important to establish any possible TM. When you type it into google, are there hits other than your site coming up? If so, anythig of significance (IE- a product/business/service name)?

**Fatbat** · 06-13-2008, 11:50 AM

Tell them you have plans to develop the domain, but are open to offers. Get them to make you an offer to open up the negotiations.

**domaingenius** · 06-13-2008, 12:06 PM

It is parked and has only had 3 hits since 1st May,lol. Hardly a traffic domain.
Of course I made it up, but someone seems to have thought of exactly the same name at around same time.http://www.dnforum.com/images/icons/icon10.gif
Talking

It is going to be the name of a large Resort,apparently.

DG

Originally Posted by DNQuest.com

But how iis it being used? Parked, developed, 404, etc? Virtually nil means there is used, maybe just not getting many hits (ie- parking)

You say it is a made up word, did you make it up or did someone else? This is important to establish any possible TM. When you type it into google, are there hits other than your site coming up? If so, anythig of significance (IE- a product/business/service name)?

**flamewalker** · 06-13-2008, 12:28 PM

Well as long as they can't prove that you knew about the resort before purchasing the name... Based on what you have stated I don't *think* you will have much trouble.

Make sure the name doesn't show resort related ads would be my first step, then like fatbat suggested, I would tell them that the name isn't for sale because you intend to develop it, but that you would consider any offer they might make.

Now, as a side note, do you have plans on developing different than a resort?

**DNQuest.com** · 06-13-2008, 03:49 PM

Originally Posted by domaingenius

It is parked and has only had 3 hits since 1st May,lol. Hardly a traffic domain.

But still, it is only parked, and if I was a betting man, I would bet there are ads that compete with any potential TM.

Of course I made it up, but someone seems to have thought of exactly the same name at around same time.

Ok, let's call BS here... I am guessing the name was around before the domain was registered. (See next line). Let's put it this way, why would one park a name they created since they know they know there would be no hits since noone else in the world knows aobu this newly "created" name.

It is going to be the name of a large Resort,apparently.

Gee.. apparently? coincedence? or maybe subconciously read the name somehwhere and didn't realize it when you registered it then find out it may be a name of a resort?

**jberryhill** · 06-16-2008, 12:02 PM

Gee.. apparently? coincedence? or maybe subconciously read the name somehwhere and didn't realize it when you registered it then find out it may be a name of a resort?

It's not clear from the discussion whether registration of the domain name was informed by that knowledge. In typical DNForum fashion, the poster does not explain the reason for registering the domain name.

I have had situations where someone had registered a name that they made up simply because they thought it sounded good, and long before a potential TM claimant thought of using the term in question.

But, more facts are needed here.

**DNQuest.com** · 06-16-2008, 01:34 PM

Though I guess you could have a point, I think the domainer is pretty smart. And presentation plays a big part. Unfortunately with this thread dealing with a "made up" word parked since May 1 (which I would bet be around the same time it was registered), and then all of a sudden a possible Resort of the exact same name comes up where the name was thought up at the exact same time? I'll call it lol

**domaingenius** · 06-16-2008, 04:27 PM

Originally Posted by jberryhill

It's not clear from the discussion whether registration of the domain name was informed by that knowledge. In typical DNForum fashion, the poster does not explain the reason for registering the domain name.

I have had situations where someone had registered a name that they made up simply because they thought it sounded good, and long before a potential TM claimant thought of using the term in question.

But, more facts are needed here.

This raises a point for me in another matter as well. With regard to the present one, I made up the name myself. They just happen to have chosen the name because it is simply a geographic name with "resort" tagged on the end of it. Doesnt take a genius to think of it ,thus I did.

As for the other one. Lets say I saw a name being used in say France by a French Company ,say "We like France" and I thought to myself, hmm, that sounds good for "We Like England" and regged welikeengland.com . Would I be at risk there ?

DG

**TheLegendaryJP** · 06-16-2008, 04:51 PM

Originally Posted by domaingenius

This raises a point for me in another matter as well. With regard to the present one, I made up the name myself. They just happen to have chosen the name because it is simply a geographic name with "resort" tagged on the end of it. Doesnt take a genius to think of it ,thus I did.

As for the other one. Lets say I saw a name being used in say France by a French Company ,say "We like France" and I thought to myself, hmm, that sounds good for "We Like England" and regged welikeengland.com . Would I be at risk there ?

DG

So you made up geographical location plus resort ? So Lasvegasresort.com for example. Is there a TM or evidence they have a legit claim based on your use or filings ?

Secondy, this england/france question is silly but if you used it to mimick their service I can see where you could have a problem yes.

sorry ment THEIR use, not yours.

**flamewalker** · 06-16-2008, 06:37 PM

Correct me if I'm wrong... but a geographical name is... not exactly "made up" -- as in new and unheard of/unused... using a geo name + <adjective> sounds pretty descriptive to me... as another person noted, lasvegasresort.com for instance... would be a resort in las vegas. Now, if they were using "las vegas resort" as something else (no clue what else it could be use for but w/e)... they could tm it easier. Not that they can't tm it for its use, but would be much harder imho.

IMHO, if it is something similar to that, it would be tougher, but not impossible, for them to claim rights to it especially when (or if) they aren't using it commercially. However, if you registered it just before they started using it commercially, a UDRP panelist might get the idea that you heard about this resort going to be put up and registered the name and are trying to squat it. Whether right or wrong, that seems to me a relatively reasonable position to take given the known info.

Personally, I'm with DNQuest on this one (re: "calling it")... sounds fishy to me.

**jberryhill** · 06-16-2008, 06:39 PM

I made up the name myself. They just happen to have chosen the name because it is simply a geographic name with "resort" tagged on the end of it.

What's the chronology?

When did you register the name?

When did these people get the idea to build the Whatever Resort?

As for the other one.

I still don't understand your first question, so I'm staying on that one.

**DNQuest.com** · 06-17-2008, 09:45 AM

Originally Posted by jberryhill

What's the chronology?

ooo ooo ooo Mr. Kotter Mr Kotter [raises hand and do my best Horshack impression]

**flamewalker** · 06-17-2008, 12:22 PM

A google search produced something interesting... I wonder if this is "the" one the author is talking about?

http://www.dominicantoday.com/dr/tou...ar-at-Cap-Cana

**domaingenius** · 06-17-2008, 12:26 PM

What's the chronology?

June 2007 I purchase domain. July 2007 "complainant" publicly states intentions
June 2008 "complainant" contacts me

When did you register the name?

June 2007

When did these people get the idea to build the Whatever Resort?

July 2007

DG

Update:

Well that was easy. "Complainant" made offer. Went back with suggestion of double
the offer and was accepted. Deal done ! Phew...

DG

**flamewalker** · 06-17-2008, 03:14 PM

Excellent! Mind sharing the sale and name (encoded like domain (dot) com)? If not thats cool. I bet thats a monkey off your back lol.

**domaingenius** · 06-17-2008, 05:22 PM

Originally Posted by flamewalker

Excellent! Mind sharing the sale and name (encoded like domain (dot) com)? If not thats cool. I bet thats a monkey off your back lol.

Better not share ,just in case comes back to bite me. Yes good to have got it sorted , now on to the next few thousand sales.

DG

**DNQuest.com** · 06-18-2008, 09:24 AM

Originally Posted by domaingenius

What's the chronology?

June 2007 I purchase domain. July 2007 "complainant" publicly states intentions
June 2008 "complainant" contacts me

I liked the way you put "publicly" in you answer. So that means the name was around in development before then (and public announcements are done well after thd branding is created, and surely, it was more than a month), I stand by my instincts on this one.

Good catch and glad it worked out. so.... did you have inside info or just read about it in some sort of trade or insiders magazine? maybe a friend who may work for the resort? Sorry, not buying the "thought up" argument on this one. You can let us know since the matter since is over