Question re: selling a TM'd name.

[lux]

Recently, I registered a trademarked name (.org) without realizing it was a trademark. The TM holder owns both the .com and the .net. I haven't received a C&D letter yet, but I'm pretty sure I will eventually. If I were to dump the name on eBay or Yahoo, would that likely cause more problems for me? I just want to avoid any disputes and maybe get my $8 back.

 

[HOWARD]

I would not recommend putting it up for sale. That tells the TM holder that you are a cybersquatter just trying to make $$ from their TM. However, if you have a legitimate business use for the domain, set it up and protect it.

 

[mole]

Originally posted by HOWARD
However, if you have a legitimate business use for the domain, set it up and protect it.

Always.

 

[Silverwire]

Originally posted by HOWARD
I would not recommend putting it up for sale. That tells the TM holder that you are a cybersquatter just trying to make $$ from their TM. However, if you have a legitimate business use for the domain, set it up and protect it.

It's hard to argue with good legal advice, because they always advise the safest, most prudent form of protection.

IMHO, adding a business perspective to the legal one, businessmen (ok, women too) must take calculated risks. If you truly were not aware that there was a TM on the name, then it is seems likely that the name could have other legitimate uses and perhaps could not be taken away (it just depends on the name) and have value in the market (caveat emptor). On the other hand, if the name is recognized by others to be a common TM, then the name will have no value in the marketplace anyway. (The traffic scammers are a dwindling crowd).

So, it comes down to the actual name and how strong the TM case is, and how much value it might have to a buyer outside of the TM. Certainly it's not worth anywhere near the galaxy of $8 that you are hoping for in return for your effort and aggravation.

 

[jberryhill]

Howard and Silverwire both make good use of the word "business", and it is certainly a word worth reflecting on.

Other than handling domain disputes, I am a patent attorney with an academic background in electrical engineering. While handling patent matters for independent inventors and small to mid-size businesses, I am often asked, "What do you think this invention is worth?"

My standard answer is that if I could answer that type of question, I probably would be doing something else (and likely more profitable) for a living.

When you have a legal problem, then an attorney should try to provide you with a range of different strategies, potential outcomes, and costs. No attorney can guarantee an outcome, and the experience of losing a "sure thing", which has happened to every attorney, does have a humbling effect. Such experiences contribute to the attorney's own level of respect for the risks inherent in any dispute.

What I often see driving domain name disputes on the domain registrant's end is a sense of offense or wounded pride at having been accused of wrongdoing in an overheated C&D letter or UDRP complaint. I am sure that every attorney here has heard someone say to them, "If they simply would have asked nicely, I would have probably wanted to just give them the domain name."

Being economically rational can sometimes include the step of swallowing a little pride, and making the first move to demonstrate through your own behavior that one does not have to be rude or inconsiderate in order to obtain a fair result.

9 times out of 10, the attorney on the other side is simply doing their job in the only way they know how. But when shown a little humanity, it is amazing how quickly they connect with their own.

And, if you are in a position to make a $500/hr attorney with a major firm happy on someone else's dime, you'd be surprised how helpful they can be if, once you've gotten this trifle out of the way, you have some unrelated questions or a request for a referral about your taxes, your divorce, etc. etc...