A practical TM question here

[DomainMagnate]

Thanks everyone for the help!

[TheLegendaryJP]

First question I have is... Have you ever used this name to display clothing ads or have a lander that displayed their brand name ? ( of course after they filled a mark )

I ask because it will weigh in any decison imo as to fight or sale for less.

[dcristo]

Isn't contacting the TM holder grounds for bad faith?

[Bill Roy]

First things first here!

If you have the domain parked make sure none of the adverts on the parked pages links to their company, a company selling their products, or indeed to any of their competitors! (Same goes for adverts on a developed website if you have developed it.) It is better to be safe than sorry.

Now as far as your 2nd question goes it is up in the air (but by doing the above you increase your chances of success). It really decides on the following:

1. The word in question.
2. It's degree of ubiquity of use as a TM as regards common usage.
3. How good their lawyers are.
4. How good your lawyers are.
5. Have you a history as regards TM domains
6. The knowledge of the relevant law held by the judge or adjudicator.
7. What side of the bed the judge/adjudicator got out of.

As regards your first question it depends which route they would like to take. To go the UDRP route will cost them a $1,000 to start with, and that is without the costs involved of hiring a lawyer. To go the court route could cost them conciderably more. But at what point it becomes worthwhile them fighting you for the name is something that only they know.

It may be worth while dropping John Berryhill an email to get his take on this.

Others here may be able to flesh out more on your questions, but here is wishing you good luck and hope you get a decent price for your domain.

Edit addition.

As quickly as possible make up a site around the meaning of the word with no reference to the company or clothing.

[TheLegendaryJP]

Isn't contacting the TM holder grounds for bad faith?

Yes and no, appears to still be a coin flip BUT your use is still imo a the main factor. I have seen people lose a name and keep a name but where they kept it after contacting a potential buyer the were not abusing their mark either.

Beyond right and wrong, win lose or draw is value. Is the name even worth a fight ? So many questions to ask and without knowing the name very difficult to say.

MG has to fill us in .

[Onward]

I had a company try to bully me in this way...even when I had a trademark for the name as well (they were a much bigger fish)...and they came to me about the name...Needless to say, I won, but it cost me a good deal of lawyer fees so I may have a frame of reference.

A couple things..the attorneys they hire most likely do not have a clue about this process and will cost them 5x what some of the best in the business (who you can find on this forum) would cost.

My guess is that they would shell out a minimum of 15-20K to attorney fees (and risk the chance of not winning).

I would say the max amount I may give (if the name was not a really special name) an offer would be about 7-10k, but I would consult an attorney 1st before doing so as I would not want to further damage my case if they do hire an attornety.

I wish you the best of luck.

[DomainMagnate]

thanks

[TheLegendaryJP]

Ok, I would do this. Their legal cost will be X, you believe the value of the name is X.

Write a very nice letter back stating both these points and are HAPPY to see you are so close on a deal that avoids all the stresses and costs of doing things the hard way. Be sure to mention you are not infringing on their mark, never have never want to and they were just a potential buyer among many. Attitude I believe is important. Seeing as they will spend $XXXX at least and you would consider $7k or there about there is no logical reason a deal cannot be made. Also keep in mind even at $4k-$5k you have a quick sale and no stress or legal cost yourself. Handle it wisely and you will come out ok. Mind you regardless of attitude and pricing if they go the legal route they go the legal route. Sounds asthough you do have a chance to defend but remeber $$$$ to defend. The system is routinely unfair and so on.So be wise in the price.

[LizzeyDripping]

Hi!

The best advice I can give here is , as with any specific domain name/ trade mark matter, "it depends on the individual circumstances involved".

Consult a lawyer, privately, and IMHO John BH is the man.

BUT - I would NOT make any changes to your site without FIRST taking advice - changing your use may be taken (because of the bad reputation given to the industry by cyber/typo squatters) to be evidence that you know you are using in bad faith (even if you are not!).

ust my 2 penn'orth!