need advice asap! i got UDRP email last night - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**namanimal** · 08-01-2006, 12:17 PM

I own a domain name that is the same as a local car dealership. They sent me a udrp email yesterday. I did a trademark check and they do not have any trademark on their name. The domain is XXXXXXXHonda. Possibly honda can sue me but I dont think that they can. I need advice on if they can still win the case and how much if anything it would cost me to fight it. If i can just draft a response and email it to the committee then that would be nice and easy. Thanks guys!

Manny

**jdk** · 08-01-2006, 12:49 PM

I am sure Honda can and win; however, I am not sure about the local company. If they do not hold a trademark, I am not sure if they will win.

**namanimal** · 08-01-2006, 12:58 PM

they claim that they have common law trademark rights.... if they have been around for 20 years and spent 5 million dollars on advertising in the last 4 like they claim, were they too lazy to register their trademark? Their complaint makes me look really bad, they say i used the name in bad faith. There is another company in canada with the exact same name.ca maybe that will help by at least saying if the udrp says they should have the domain, maybe the canadian car dealer has equal rights also.

**DNjet** · 08-01-2006, 01:19 PM

Well, its going to cost you probably a couple thousand in lawyer fees to find out, seeing it does have honda in it and possibly further trouble, I think I would just give it up.

**jdk** · 08-01-2006, 01:21 PM

And they never purchased a domain name? LOL

**Ian** · 08-01-2006, 01:28 PM

IMHO you should not put up a fight with Honda because odds are that they would fight and win the case. Just give in and hand over the name. I know it would be painful but to put up a fight would drain you resources in terms of lawyer fees plus damages caused compensation should they win the case.
good luck

**namanimal** · 08-01-2006, 01:43 PM

the dealership has the domain name XXXXXXhondacars.com. the dealership is bringing up the charges, not honda directly. also am i lible for any damages? does the UDRP take place in a courtroom or just through email and they make a decision?

**Brett Lewis** · 08-01-2006, 02:14 PM

UDRP does not carry damages. The panel can transfer the domain name and in rare/bizarre cases, order it canceled. The dealership is probably licensed to use the Honda trademark in its name. If so, it may also have the right to pursue infringement claims.

Best,

Brett E. Lewis
Lewis & Hand, LLP
www.lewishand.com

**DNQuest.com** · 08-01-2006, 03:25 PM

Quote:

Originally Posted by namanimal

the dealership has the domain name XXXXXXhondacars.com. the dealership is bringing up the charges, not honda directly. also am i lible for any damages? does the UDRP take place in a courtroom or just through email and they make a decision?

In UDRP, there are no monetary damages, but the complaintant could take you to court to recover monetary damages, legal fees, punitive damages and fines of $1000,000.00 per domain.

UDRP is through correspondance, not a court room.

**NZPoint** · 08-01-2006, 03:28 PM

not sure about you, but if it was me i would standup for start as if they want to take this to court would cost them heaps in legal fees. if your happey with few grand and not so greedy, you can get it off them,, so its a win win situation.

**Domagon** · 08-01-2006, 04:08 PM

The UDRP email could have likely been sent in an automated manner by an IP protection firm, if Honda utilizes one, that scans for TM keywords and related variations.

On an aside, my policy is if a legal notice comes email only from an unknown party that I don't do business with, it probably isn't important, is bogus, etc and thus is ignored.

Ron

**namanimal** · 08-02-2006, 01:16 AM

the UDRP email is legit because i just received all of the same information at my door today, curtosy of ups. and it was emailed to me by the dealerships lawyer. its an aol address. The lawyer stated about 10 reasons why i'm in violation of everything. At least 5-7 of these reasons i can easily make a case against. They dont have the trademark but they claim that the common law tm will hold up. they sited a case where that was the case. what if i can find a case where it didnt? i wonder if that would dismiss that alligation.

**March2005** · 08-02-2006, 02:25 AM

Quote:

Originally Posted by namanimal

There is another company in canada with the exact same name.ca maybe that will help by at least saying if the udrp says they should have the domain, maybe the canadian car dealer has equal rights also.

I think this is an important point.

**Domagon** · 08-02-2006, 02:41 AM

A common law TM is basically a TM that's not registered, but can be recognized as being a TM should the issue come up, such as in a UDRP challenge, lawsuit, etc.

Don't be so quick to believe you can win on your own unless you have done much research on past UDRP cases; get very lucky.

Since you speak of receiving a C&D via postal mail by a legitimate law firm, that's not a good sign ... and worse you indicate that you own a domain with the word "Honda" in it which is very similar to that of the dealership.

The dealership likely has a very strong UDRP case ... they are presumably a licensed dealer of Honda and have rights to use Honda in their business name, marketing, etc.

Unless you are a Honda dealer or somehow have a bonafide business relationship with Honda that relates to your domain, you likely do best to delete (or transfer if you feel more comfortable doing that) the domain now.

TM law is very arcane and not for the faint hearted - if you are intent on challenging them, get professional assistance asap ... the dealership, if they prevail, could file suit for damages, as another poster above mentioned ... UDRP doesn't preclude separate legal action ... and that goes both ways ... that is even if you prevail in the UDRP challenge, they could still pursue the matter in court, such as claiming TM infringement ... such legal actions are often far more expensive to challenge than a UDRP ... ie. instead of $3K, you could be looking at $100K+ ... is the domain worth even spending $3K defending? ... $100K? ... ultimately that's something you'll have to decide.

Ron

**DNQuest.com** · 08-02-2006, 08:46 AM

Quote:

Originally Posted by NZPoint

not sure about you, but if it was me i would standup for start as if they want to take this to court would cost them heaps in legal fees. if your happey with few grand and not so greedy, you can get it off them,, so its a win win situation.

IF a company goes to court, they will ask for (and receive) that the defendant (that is the domain holder) pay for legal fees. SO the person owning the TMed will have to pay heaps in legal fees... not to mention forfeiting all revenue recived, punitive damages and that pesky $100,000.00 for violating the Lanham Act... (can you sense the theme here?)

Quote:

Originally Posted by Domagon

On an aside, my policy is if a legal notice comes email only from an unknown party that I don't do business with, it probably isn't important, is bogus, etc and thus is ignored.

Ron

In the eyes of the court, they will view it as communication...

**namanimal** · 08-02-2006, 10:02 AM

what if i just gave the domain away to the other car dealership? or i deleted it and made an annomous phone call to do just that? They probably could and would fight to keep it. I just really dont want to lost my house here...

**EJS** · 08-02-2006, 11:55 AM

Personally, I would call them up and try to work out a solution where you can give them the name and they will agree not to bring any further legal action and will cancel the UDRP filing. Don't offer to sell it to them because that could imply bad faith. They presumably have more rights to the name than you, and unless it is making so much money that it is worth fighting for, it wouldn't make sense to keep it. Even if it IS making a ton of money, Honda could end up taking you to court for profiting from their trademark and you could have to give up the name and all the proceeds and legal fees. Additionally, losing a UDRP decision can have an effect on subsequent UDRPs if you are unfortunate enough to receive one in the future.

Be careful listening to free advice from people who aren't in your shoes:

Quote:

but if it was me i would standup for start as if they want to take this to court would cost them heaps in legal fees. if your happey with few grand and not so greedy, you can get it off them,, so its a win win situation.

Although you did ask for advice from everyone, these people who tell you to fight for the name certainly will not help you with your own legal fees, let alone any damages that might come as a result of an angry attorney deciding to file a lawsuit. If you want "real" legal advice, contact a highly respected attorney in this field such as Brett Lewis or John Berryhill - both of whom post on this board regularly. Good luck.

I have no legal experience, but have read many posts by people who do have legal experience. Search through other postings here to see them.

**Keyword Factory** · 08-02-2006, 01:41 PM

What exactly did you expect when you registrered the domain in the first place?

**pam** · 08-02-2006, 02:10 PM

Your question is can you win and how much it will cost you in legal fees.

Contact an attorney.

**Domagon** · 08-02-2006, 05:25 PM

Quote:

Originally Posted by DNQuest.com

Quote:

Originally Posted by Domagon
On an aside, my policy is if a legal notice comes email only from an unknown party that I don't do business with, it probably isn't important, is bogus, etc and thus is ignored.

In the eyes of the court, they will view it as communication...

IF it's acknowledged ... as a policy I ignore legal notice emails unless there is related out-of-band correspondence, such as via phone, post, etc.

Email in and of itself is generally not considered bonafide legal notice unless the recipient has designated an email box for receiving legal notices, and even then it's debatable whether it's sufficient notice unless it's been acknowledged... one could certainly split hairs on what consitutes receipt, acknowledgement, etc...

In a nutshell, email is a poor substitute, due to numerous technical and social reasons, compared to traditional legal notice delivery ... ie. postal mail / in-person, etc.

Ron