Response To Email Solicitations

[clickmaster]

If you have a domain that is similar to another domain but there is no trademark on that other domain, and someone from the other domain emails you and asks you if you want to sell it, can you be liable for anything by responding to that email? Should that email be treated as a legitimate request to buy the domain or should it be seen as some sort of a trap?

[namedropper]

If there legitimately is no trademark on the other name, then there shouldn't be any way for a trap to work even if they intended it to be one. Of course one spot people fall down on is assuming that lots of things with trademarks aren't actually trademarked. Are you sure there is no trademark, and, if so, how do you know?

[furca]

You can respond, but just be careful as to "How you say" what you say

Duncan

[clickmaster]

If there legitimately is no trademark on the other name, then there shouldn't be any way for a trap to work even if they intended it to be one. Of course one spot people fall down on is assuming that lots of things with trademarks aren't actually trademarked. Are you sure there is no trademark, and, if so, how do you know?

Hi Namedropper. I am pretty sure there is no trademark. I have checked the online databases at USPTO, as well as databases in Canada, Australia, and UK. The company is not incorporated in North America, so I'm not worried that there is a state trademark I haven't seen. So, with the information provided online I could not find anything showing that there is a trademark or that there is an application for a trademark. Of course I can't check every jurisdiction on the planet but the major ones seem ok.

Now I was told that the domain can be challenged even if there isn't a trademark. This is more of what I'm worried about.

[Dave Zan]

Now I was told that the domain can be challenged even if there isn't a trademark. This is more of what I'm worried about.

If they use the UDRP, then they need to prove: a) your domain name is
identical or confusingly similar to a trademark or service mark in which the
complainant has rights, b) you have no rights or legitimate interests in
respect of the domain name, and c) your domain name has been registered
and is being used in bad faith.

And they'd better hope the respondent doesn't reply at all or mount up a good
defense.

[Steen]

Hi Namedropper. I am pretty sure there is no trademark. I have checked the online databases at USPTO, as well as databases in Canada, Australia, and UK. The company is not incorporated in North America, so I'm not worried that there is a state trademark I haven't seen. So, with the information provided online I could not find anything showing that there is a trademark or that there is an application for a trademark. Of course I can't check every jurisdiction on the planet but the major ones seem ok.

Now I was told that the domain can be challenged even if there isn't a trademark. This is more of what I'm worried about.

If I understand correctly, you are looking for a registered trademark. Perhaps they have rights to the mark without registering a trademark.

[jberryhill]

Hi Namedropper. I am pretty sure there is no trademark. I have checked the online databases at USPTO, as well as databases in Canada, Australia, and UK.

Oh boy.

Look, if I:

1. Registered flippetywidgets.com in 1996, spent nine years selling "Flippety Widgets" shoes in stores and on my website, had an annual advertising budget of a million dollars, had radio and TV commercials in your area for my "Flippety Widgets" shoes, sold 200,000 units per year in stores in your state, AND

2. if you came along in 2003, registered flipetywidgets.com for no particular reason, had it pointed to a ppc page that included "shoes", THEN"

3. Do you think it is going to make a cup of warm spit's worth of difference whether I ever obtained a trademark registration in the US, Australia, or Canada?

Now, do you see all of those hypothetical facts? They each contribute in their own special way to how my hypothetical would turn out if you offered to sell the domain name to me for $50, $500, or $5000. It is a certainty that the facts in your situation are not "exactly like" the facts in 1 and 2 above.

If, for example, my domain name was instead "LargoShoes.com" and I sold a brand of shoes I called "Largo"; and if you registered "LargeShoes.com" to advertise "large shoes"; then the picture is radically different.

[DaddyHalbucks]

I think what JB is trying to say is that you could get caught in the trap call COMMON LAW rights, that is, unregistered trademarks.

It all turns on the facts.

If you offer to sell the domain, that is one fact is against you.