I received a letter that I’m being taken to WIPO. I would love for anyone to give me info on where I stand.
In 2004 I left my job and opened a new business here in the US. I purchased a few domains that I could use for branding my business in 2004. Let’s pretend I was opening a shoe related business and one of the domains that I purchased was: ekix .com (“kix” as in “kicks”, ie. shoes). I paid a pretty penny (low $X,XXX range) for this domain, but I ultimately decided to use another domain to brand my business. I did use this domain to forward to my website. I kept it because it was a very tough decision on which domain to use for branding.
In 2008, I go to work for a large shoe related retailer. I can’t compete with my new employer, so I therefore take my website down and just park the all my domains so they pull up footwear related info. I keep the domains, because I may one day reopen my own business.
In 2009, a company in Europe trademarks “ekix” for an energy drink brand and set up the domain: ekixEnergyDrinks.com (ex.) As soon as I stopped forwarding the domain, I started getting offers from individuals and businesses wanting to purchase the domain. In the back of my mind I’m thinking that I may one day use these domains again, so I’m not motivated to sell them. I turned down quite a few offers in the low-to-mid $X,XXX range.
Fast forward to present day. I get a letter from the company’s lawyer and WIPO informing me of the upcoming arbitration. The letter states that: 1.) My domain is too similar and confusing to their trademark. 2.) I have no legit interest in this domain. 3.) The domain was registered and being used in bad faith.
In response to these 3 things, I would say: 1.) They applied for and received their trademark 5 years after I purchased the domain. 2.) While I’m not currently using it for an active website, I have used it in the past and I’m still employed in this field. 3.) If I decide to reopen my business and want to use this domain again, it would fit my needs perfectly, therefore if I were to sell it, I would want as much as I think it would cost to purchase a domain that I could use for similar branding purposes. In 2012 they did contact me and offered to purchase the domain for mid $XXX , but I declined and stated that if I were to sell it I would want mid-to-high $X,XXX.
What should I do next? Where do you think I stand in relations to having WIPO take my domain away?
Thanks in advance for your insights and advice.
In 2004 I left my job and opened a new business here in the US. I purchased a few domains that I could use for branding my business in 2004. Let’s pretend I was opening a shoe related business and one of the domains that I purchased was: ekix .com (“kix” as in “kicks”, ie. shoes). I paid a pretty penny (low $X,XXX range) for this domain, but I ultimately decided to use another domain to brand my business. I did use this domain to forward to my website. I kept it because it was a very tough decision on which domain to use for branding.
In 2008, I go to work for a large shoe related retailer. I can’t compete with my new employer, so I therefore take my website down and just park the all my domains so they pull up footwear related info. I keep the domains, because I may one day reopen my own business.
In 2009, a company in Europe trademarks “ekix” for an energy drink brand and set up the domain: ekixEnergyDrinks.com (ex.) As soon as I stopped forwarding the domain, I started getting offers from individuals and businesses wanting to purchase the domain. In the back of my mind I’m thinking that I may one day use these domains again, so I’m not motivated to sell them. I turned down quite a few offers in the low-to-mid $X,XXX range.
Fast forward to present day. I get a letter from the company’s lawyer and WIPO informing me of the upcoming arbitration. The letter states that: 1.) My domain is too similar and confusing to their trademark. 2.) I have no legit interest in this domain. 3.) The domain was registered and being used in bad faith.
In response to these 3 things, I would say: 1.) They applied for and received their trademark 5 years after I purchased the domain. 2.) While I’m not currently using it for an active website, I have used it in the past and I’m still employed in this field. 3.) If I decide to reopen my business and want to use this domain again, it would fit my needs perfectly, therefore if I were to sell it, I would want as much as I think it would cost to purchase a domain that I could use for similar branding purposes. In 2012 they did contact me and offered to purchase the domain for mid $XXX , but I declined and stated that if I were to sell it I would want mid-to-high $X,XXX.
What should I do next? Where do you think I stand in relations to having WIPO take my domain away?
Thanks in advance for your insights and advice.
