Someone's going after my generic domain

[madcamel]

Hi,

- I own a generic domain since 2006. lets call it 123.com.
- On Nov 2011 someone registered the word mark 123 and started a company by that name.
- On Dec 2011 I moved 123.com from a parking page and built a simple website for it. My move had nothing to do with his TM registration. I just built a few simple websites for my generic domains to protect them from UDRP etc.

The 123 TM owner approached me a few weeks ago about buying it, I answered that we have plans to develop but may consider selling if the right offer comes along. We had some emails exchanged, he offered a low price and it didn't go anywhere.
Today he sent me an email threatening to file a UDRP complaint and said that if I want to avoid it, I can sell them the domain at a pretty low price.

Although I'm not using the domain in bad faith (my site is not related to his 123 service), and the domain wasn't registered in bad faith (I own it long before he registered the TM), he claims that since I changed the domain content after they registered their TM, this shows bad faith infringement.

So... does he have a point?

Thanks!

 

[Cartoonz]

No, he does not. Especially since you changed it FROM parking page to content.
Price just doubled.

 

[grcorp]

Although I'm not using the domain in bad faith (my site is not related to his 123 service), and the domain wasn't registered in bad faith (I own it long before he registered the TM), he claims that since I changed the domain content after they registered their TM, this shows bad faith infringement.

So... does he have a point?

Well, he may have a point. How will you explain putting this page up?

He still has to prove that you have no legitimate interest in the name in order to win a UDRP. But how are you going to prove that your changing the site's content had nothing to do with the TM?

 

[Cartoonz]

He doesn't have to. His ownership pre-dates the TM by 5yrs.
The have to prove Bad Faith REGISTRATION to prevail in UDRP
Besides, changing it from a "parked page" to something that demonstrates any kind of "active" use (as long as it is not the same use as the TM holder) hardly shows mal intent.

 

[madcamel]

Thanks for the replies guys..
@Maxwell - I don't think I need to prove this... otherwise it means that if you have a domain and someone registers a TM for it, you are not allowed to change the domain content ever...?

 

[chipmeade]

you need to prove that the term/domain is generic, period, combining that with your early registration should cover you. Relying on panelists to uphold predated registrations as a sole reason for denial of a claim is risky and not foolproof. I would aggressively go after this person and respond harshly that you will defend your name and that your rights predate theirs. How much did they offer? It costs $1500 or so just to file so my guess is that it is an idle threat. You have to bite back.

 

[fpforum]

I'm not a lawyer in any sense of the word..But I do believe since you had the name registered 5yrs before the trademark was filed you should be free and clear. Even if he wants to file a UDRP - the judge is going to see that you owned the domain long before there was ever a trademark filed on it.

 

[chipmeade]

I'm not a lawyer in any sense of the word..But I do believe since you had the name registered 5yrs before the trademark was filed you should be free and clear. Even if he wants to file a UDRP - the judge is going to see that you owned the domain long before there was ever a trademark filed on it.

Your case is heard by an arbitrator not a judge. These panelists are free to interpret the policy any way they see fit. Let's be clear, just because you have registered a name prior to a TM filing or even usage, you are not immune from a UDRP transfer.