Finally got a letter...

[PeterMan]

I have owned a domain for a while now that is a TM, the site I have up and running is sort of an "information/appreciation" mini-site about the particular service, so I was not too concerned about getting in too much trouble over this... However, I just received a letter today from someone claiming to be a representative of the owner of the TM, and they have asked me to contact them ... here is a blurb from the letter:

...our client would prefer to reach an amicable solution for this matter. We confirm that my client, or its appointed agents or representatives will cooperate fully with you in your transferring the mentioned domain names and will reimburse you for already paid ("out-of-pocket") reasonable registration fee (upon submission of written evidence thereof).

The domain in question is a .ca domain, the TM is a US TM and was actually filed after I regged the .ca domain...

Anyway, I do not want to get into anything messy, but I was just wondering if I could get some opinions on the situation before I reply...

Also, how do I determine that the person who sent me the email is legit?

Thanks!

 

[theinvestor]

I am assuming you are blatanly infringing on the TM. If so, it will be very hard to defend. Try and come to a solution and maybe make a small buck.

If you need to seek a domain lawyer. Does the email contain lawyers contact info? The serious ones usually contain details about the lawyer and who they work for.

 

[copper]

Also, how do I determine that the person who sent me the email is legit?

Thanks!

Ask them to send real letter (not email) using their letterhead?

I sold one TMed domain to TM owner while ago for high $xxx.
It was reg. fee domain.

However, I didn't deal with their lawyer.
I dealt with the enduser directly.

In your case, you are being contacted by their lawyer that means
enduser already is paying fee for it. So, I would recommend not to
ask for too much which may trigger UDRP as you are talking with lawyer.

I am not even sure you should mention how much at all to the lawyer
as lawyer can use it against you?

I used to have it parked for totally unrelated terms/industry.
I didn't have to sell it, but, I just felt they can use the domain
better than me parking it

Good Luck.

 

[Soofi]

Copper, says it right!

 

[EM @MAJ.com]

Copper, says it right!

This is one good reason not to get any related TM domain names, they are plenty of fish to catch.

 

[PeterMan]

OK, one thing about asking them to contact me... the domain is privacy protected, so the email came to me via Cira, so they do not actual know who I am... If I make contact then they do know who I am...

does that matter?

 

[copper]

OK, one thing about asking them to contact me... the domain is privacy protected, so the email came to me via Cira, so they do not actual know who I am... If I make contact then they do know who I am...

does that matter?

It has nothing to do with privacy protected.
If TM owner want to know your name, address, email, phone, your brothers'
name, your sisters' name, your parent's name, your dog's name...
They can easily find it out.

OK, that's bit too many names

I think registrar will give your contact info when request comes from TM
owner's lawyer even if you have privacy protected.

What's wrong with them having your contact info anyway :?:

 

[Theo]

Is it legal to bear arms in Canada?

 

[Soofi]

Is it legal to bear arms in Canada?

illegally, yes yes very legal!!!

 

[charlescarreon]

A UDRP can be filed naming the Privacy Protection Company, so that doesn't help you much. The fact that the registration was submitted after you registered the domain may be relevant, then again, it may not be. The fact that the TM is with the USPTO and the domain is .ca is not relevant to the cybersquatting issue. These issues vary widely. PM me.

 

[marcorandazza]

Just a little technical quibble here -- since it is a .ca domain, it will be governed by the .ca arbitration procedures, not the UDRP. .ca arbitrations are similar, but not identical, to UDRPs.

 

[charlescarreon]

Just a little technical quibble here -- since it is a .ca domain, it will be governed by the .ca arbitration procedures, not the UDRP. .ca arbitrations are similar, but not identical, to UDRPs.

Good point, Marc. Your observation caused me to look up the CIRA arbitration policy, and it looks like the grounds for the complaint are identical to those in the UDRP.

 

[marcorandazza]

Not identical! The standards seem, in most CIRA cases I have read, to be more flexibly interpreted to bring about common-sense resolutions.

The other difference is that there are some really fun provisions in the CIRA policy. For starters, as a Complainant, you need to have a Canadian recipient for the domain. So, there is a little hoop for the Complainant to jump through that can hang up a Complainant, if they have no friends in Canada.

The most fun about CIRA is that RDNH actually has some teeth!

Bad Faith of Complainant. If the Registrant is successful, and the Registrant
proves, on a balance of probabilities, that the Complaint was commenced by the
Complainant for the purpose of attempting, unfairly and without colour of right, to cancel
or obtain a transfer of any Registration which is the subject of the Proceeding, then the
Panel may order the Complainant to pay to the Provider in trust for the Registrant an
amount of up to five thousand dollars ($5000) to defray the costs incurred by the
Registrant in preparing for, and filing material in the Proceeding. The Complainant will
be ineligible to file another Complaint in respect of any Registration with any Provider
until the amount owing is paid in full to the Provider.

I love that part of the CIRA policy. It is unfortunate that the UDRP does not have a similar provision. RDNH in the UDRP context is just stupid ego swinging. I think that even asking for it is a dumb tactical move - as some panels have held that an accusation of RDNH necessitates allowing a Reply by the Complainant. So, as a respondent, by asking for RDNH, the most you can win is a little cheering on this forum. But, you could allow the Complainant an opportunity to have the last word and to pack the record in their favor.

But, under CIRA, you can win $5,000.