UDRP help - LLL.com

[cyberlaw]

You are definitely not in the strongest position, but it doesn't sound like you've necessarily dug yourself an impossible hole, either. This seems pretty fact specific, with all the TM apps, certain offers being made, etc. The fact that the company contacted you first is definitely a benefit. Don't lose those phone records!

 

[Domagon]

My suggestion is leave the "under construction" page up until you have a very clear plan how you're going to develop it (consider getting legal assistance before doing so) - while that may seem counter-intuitive, less in this instance is likely better...

On a related note, blindly asserting TM rights for an acronym may work against you in the longrun in a UDRP defense, and possibly limit future development / lower resale value, if it's not well thought through beforehand.

The company (or could be a scammer scaring you into selling cheap) approached you - be sure to keep all email correspondence, phone records, etc regarding their intention of purchase...

If they contact you again, and assuming you choose to reply back, do not acknowledge their TM or any other details; ignore extraneous questions (rude, but reason is they'll use your answers against you later! Again less is often better) - stick to discussing price only.

A UDRP is not the end of the world ... best to get professional legal assistance, if you believe an UDRP filing is imminent or occurs - there are some important details (that most respondents ignore / don't know about) that can make a huge difference when responding to a UDRP - often the difference between winning and losing.

Ron

 

[Dloganesq]

Chappy:
A couple of other considerations not discussed and a quick comments under constraint of time. Did you register the domain name prior to the time they obtained a trademark in Canada? Were you aware of this other company when you registered the trademark? According to other cases decided on the issue, their US TM application gives them no protectable rights. I have a case now pending on behalf of a party who has had a UDRP filed against them by someone who claims rights based on pending and state TM registrations. Our state TM issue could go either way but there are plenty of cases out there that say an application for a mark is not per se sufficient to establish rights in a trademark

Also, as for an offer to sell, a couple of people have talked about making the offer without prejudice. Something to keep in mind in the future- an offer conveyed through an attorney will typically not be considered evidence of bad faith under certain circumstances, particularly if the offer is in the context of settlement negotiations after having been threatened with a UDRP or other legal action.
________________________________________
Deborah A. Logan, Esq.
Intellectual Property, Internet & Technology Law
LIPTON, WEINBERGER & HUSICK
Email: [email protected]
www.DomainLegalCounsel.com

 

[Chappy]

Thanks for the info.
I didn't register this name - I acquired it from its previous owner. This was after they already had the Canadian TM but I never knew about it.

To me, all I've done is acquire a name which I planned to develop. It had no connection with them other than the name itself being an acroynm of their business/product name. They contacted me, asked if we could come to an arrangement to transfer ownership and got upset when I gave a price more than they hoped. So now they send a mail showing their CA TM and their pending US TM and stating they will be reviewing the ICANN rules and discussing with their IP lawyer about "next steps".

 

[Domagon]

What kind of a price did you give them?

If that's not something you want to mention, I understand...

The reason for asking that is if the price you gave was like $10K or less, it's likely in their best interest to buy it from you; fair market value, at minimum, for many non-word LLLs is mid/high 4-figures to low 5-figures.

Offering it at fair market pricing (based on DNJournal, NameBio, Afternic, Sedo, etc publicly listed sales) could, as crazy as it seems, potentially help you in an UDRP defense to further support the domain was obtained / being utilized in good faith.

Ron

 

[HuntingMoon]

sounds like you were open-minded to offer them an opportunity to buy the LLL.com at any price.

 

[Michael]

If they approached you first, you haven't parked the domain, and their TM is still pending in the US, I don't think they have a very strong case for bad faith. They were probably just trying to scare you. Good luck, keep us posted.

 

[Dloganesq]

With the facts you've related, I don't think things are as bad as you think. Of course, we don't know who the company is, what the mark is, their market and just about anything can happen it seems in UDRP cases. However, one of the definite things they have to prove is that they have rights in a trademark. I'd say that there's a good argument to be made that their Canadian trademark only protects their rights (and provides constructive notice) in Canada. Their US trademark application doesn't prove a TM right here in the US. What's left is for them to prove that they've established common law rights in the mark by demonstrating that the mark has aquired secondary meaning.

I'd just hang tight. Good luck to you, Chappy. I see you are in San Francisco- I moved from the Bay area a few years ago after living there for a dozen. What a great place to live!
________________________________________
Deborah A. Logan, Esq.
Intellectual Property, Internet & Technology Law
LIPTON, WEINBERGER & HUSICK
Email: [email protected]
www.DomainLegalCounsel.com

 

[Chappy]

Thanks all. I will report back on the outcome.

 

[denny007]

He already said he offered it.

He also said later they actually called him and thats exactly what I was asking. DUH !

 

[Yum]

I am afraid u'll have to trade mark ur names.

 

[denny007]

I had similar case and lost it based only on a fact I offered it for sale:
http://domains.adrforum.com/domains/decisions/1042478.htm

It was some mid-eastern person living in the USA (with terrible english BTW). He had some shop with clothing, nobody ever heard of him and he reeged TM for "vievie" in 2007. I got this from drops as a GENERIC domain. I backordered it because it sounds cute and also it had some expired traffic from previous porcelain shop. I RENEWED the original pages from webarchive, so it was porcelain pages, smoething very different than clothing.

Well anyway - for $60 I got huge (I spent several hours on the response) lesson - NEVE EVER answer emails about any of my domain because whatever you write WILL BE used AGAINST you...

 

[copper]

I had similar case and lost it based only on a fact I offered it for sale:
http://domains.adrforum.com/domains/decisions/1042478.htm

It was some mid-eastern person living in the USA (with terrible english BTW). He had some shop with clothing, nobody ever heard of him and he reeged TM for "vievie" in 2007. I got this from drops as a GENERIC domain. I backordered it because it sounds cute and also it had some expired traffic from previous porcelain shop. I RENEWED the original pages from webarchive, so it was porcelain pages, smoething very different than clothing.

Well anyway - for $60 I got huge (I spent several hours on the response) lesson - NEVE EVER answer emails about any of my domain because whatever you write WILL BE used AGAINST you...

So, this person actually paid minimum of $1,500 instead of paying you $900.

Perhaps you lost it based on...
"Respondent admits he is in the business of buying domain names and parks and sells them".

 

[denny007]

So, this person actually paid minimum of $1,500 instead of paying you $900.

I think NAF is cheaper he was writing it by himself, his english was funny read...

Perhaps you lost it based on...
"Respondent admits he is in the business of buying domain names and parks and sells them".

That too but mostly because I was actaully responding to his stupid emails and offered for sale (under same assumption that he will rather pay less and ge the domain immediately without hassle). Anyway since then I ignore EVERY EMAIL which I get regarding any of my domains so actually this person was godsend...

 

[dwest5]

FMA lost the LH.com dispute as of Friday.

 

[katherine]

FMA lost the LH.com dispute as of Friday.

Ouch. Do you have a source ?

 

[dwest5]

Yeah, the decision is here:

http://domains.adrforum.com/domains/decisions/1153492.htm

 

[DomainsInc]

Yeah, the decision is here:

http://domains.adrforum.com/domains/decisions/1153492.htm

Pathetic. If this kind of stuff keeps up not only domaining but domains in general are in trouble. There must be hundreds of businesses who have "lh" tradmarked. Imagine domains getting taken from one person to the next over and over again, just because they can. I really don't see just because someone has a trademarked term that they automatically should be given rights to a domain.

 

[lordbyroniv]

whats the domain?

 

[Theo]

Pathetic. If this kind of stuff keeps up not only domaining but domains in general are in trouble. There must be hundreds of businesses who have "lh" tradmarked. Imagine domains getting taken from one person to the next over and over again, just because they can. I really don't see just because someone has a trademarked term that they automatically should be given rights to a domain.

They are not automatically taken away. There is a due process in place. And yes, anyone with a tm can file a claim.