First of all I don't see a TM for the term "Secret Candle". Second the creation date of the .NET was in 2009, well after the .COM was registered.
From the information you have provided he has every right to the domain and he can do with it as he pleases.
Creation Date: 02-dec-2007.
Expiration Date: 02-dec-2010.
Creation Date: 21-feb-2009.
Expiration Date: 21-feb-2011.
I think you would be out the filing fee if you filed a dispute.
TM + WIPO is going to cost you a little under $2,000 if you handle everything yourself. Is he asking that much for the domain?..
Established how, exactly?.
You are delusional...
Is this a joke? SecretCandle.net has 2 inbound links according to alexa and ranks at 14 million in terms of popularity(what is that? 1 visitor a week!) You couldn't get the owner to respond so you filed a false report for a bad WhoIs Record? (Slimy) Aren't you the one who has sent multiple emails wanting to buy the name? Do you even know what filing a WIPO is? Better get a better handle on what constitutes bad faith. The .com PREDATES your domain! Oh, and for being all high and mighty about the TM violation, weren't you trying to sell a bunch of TM ebay names? Here.
TM issues and WIPO/UDRP cases are serious business and the decisions affect everyone who has a domain. For someone to try and use this to hijack a name really leaves a bad taste in my mouth. The domain industry could do a lot better without guys like this in it...
Not having a registered TM is going to make it an uphill climb with UDRP.
You can still likely file a UDRP action, but odds of prevailing are very small... and more to the point, face a decent risk of being accused of engaging in "reverse hijacking"...
The issue isn't that the respondent will take legal action, since few ever do in that situation, but that an allegation of "reverse hijacking" in a UDRP decision can potentially weaken your position in future domain disputes / UDRP challenges.
Tread carefully. Seems to me that you'd do better to negotiate a price in the low $x,xxx range to buy it, since that's about what it's going to cost whatever route you take.
The domain www.secretcandle.net was NOT first created in 2009, it was in 2007 when I started this business. I opened the business in 2007 online using yahoo small business with little success. I did not renew as I decided to go the brick and mortar route in 2008. Later on in 2008 I discovered Volusion and reopened online in may 2009. I have thousands in customer reciepts via paypal and my merchant accounts proving business has been going since this 2007.
Cartoonz - Business has been conducted under this name since Sep 2007. A TM name in use is just as good as a "officially" registered one.
Bmugford- Creation date DOES NOT matter anyways, but they were both registered FIRST in 2007.
DubDubDubDot- More than $2,000.
MrSpartan- I filed with ICANN because he did not respond after numerous emails! I SERIOUSLY thought it was bad/not being checked. Its an off the wall email from a domain he does not use, so I figured at best he was having it forwarded to a main email. Also, I was not the ONLY person that has done the same thing to this guy apparantly.
HE solicited me! The emails I sent were about emails I had recieved in 2007 from who I thought was his partner saying he would transfer me the domain(see email bellow). We had 5-6 emails about this domain back in 2007, this was the first or second from this peticular person.
EBAY- I was not aware of such laws and was new to the domain game and still learning OBV:-) I made mistakes with those, I recieved a few C&D letters and gave up the names, lost out on my reg fees and DID NOT sell them even when I had an offer or two to do so. I never did it again, and don't ever plan to.
Bad Faith is easy to prove IMO. Examples follow:.
*Does the domain name holder have trademark rights in the domain name?.
*Has the domain name holder offered to sell the domain name to the trademark owner (or anyone else) for financial gain without having any intent to use the mark with the sale of goods or services?.
*Has the domain name holder behaved in a pattern of registering and selling domain names without intending to use them in connection with the sale of goods or services? (ie:joomlaexposed.com).
*Has the domain name holder registered domain names of other parties trademarks?.
Pedro xxxxxxxxx Post added at 04:51 AM Previous post was at 04:42 AM I'm just trying to run a friggin' business with my woman! I dont care if the domain is worth $20,000 or $15. I don't want to hear your emotional opinions about "people like me" ruining your industry.
If you don't think I have a case then thats fine. I have never done this before and don't have any plans to ever again. But this is a forum for people to offer advice based on his/her knowledge and experieince.
So, don't be a jerk about it. This is my life and my business. As far as my irrational state of thinking; nobody else in the world should be using this name for anything, it's MY brand that I have been building for a few years now! But I can be rational and prefer rational discussions, not child-like ones...
Here are the elements of UDRP that must be proven to win.
1.) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and.
2.) no rights or legitimate interests in respect of the domain name; and.
3.) domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
1.) As far as I can tell you don't have an actual TM for the term "Secret Candle". Therefore you are a claiming a common law TM. You will need a lot of evidence to back that up. You need to prove that you have exclusive rights to the term, as well as his domain is "confusingly similar" to those rights.
2.) Registration date does matter. If your domain did not even exist at the time their domain was registered I am not sure how you are going to establish bad faith.
3.) What grounds are you planning to establish bad faith? That you contacted them about the domain and they offered to sell it to you?.
You are fighting an uphill battle here, but if you want to file a dispute it is your $1500 + legal fees.
Shame the $9.50 deal didn't work out back then. Looks like the price has gone way up!.
In my view, negotiate a low $x,xxx price and be done with it.
If they're not willing to negotiate and/or feel you get the price lower, an approach that may work is to go half way and write up your UDRP complaint and snail mail it to the registrant explaining you're going to file it unless a resolution can be worked out by such and such date. It's a hardball tactic that sometimes works, but can backfire too.
Filing a UDRP may get results and cost less than negotiating, if the respondent doesn't respond to the complaint and/or you happen to choose the "right" panalist who will rule in favor of the complainant even on the weakest of grounds.
However, in my view, they have more of a claim to the domain than you may think. The creation date is often considered the date the registrant acquired it (which in your case will be 2009); their registration is way before yours, and your TM claim is very weak...
They may possibly claim they have a common law TM claim to it, which at most, is probably all you have.
UDRP, last I checked, has no formal rules regarding discovery, so whatever the respondent says, if it backed with documentation and/or seems plausable to the panalist(s), will be considered as fact.
Sure you can file a UDRP, but lose - and the price will likely go skyhigh; not want to sell it out of spite.
I read somewhere that there is a 5 year timespan on Tms. ie. He may have until 2012 to show his business useage for his domain name. Also you let the domain drop and reregistered it in 2009, which does not look good as far as maintaining and protecting the Tm. This is a required element in the conditions of holding a Tm. You also did not say if he has used the domain in a way that damages your business.
I think he has a good defense for any claim against the name...
One option is to get a TM for Secret Candle in the area of candle manufacturing, selling and information about candles. That would then parlyze the .com since there are no other uses for a name like that outside of actual candles. It's not exactly a backhanded thing to do either. You have been using the Secret Candle title since before the .com was registered.
Then you send a C&D and try to pressure into lowering his expectations for the domain. IMO you would win at WIPO if it came to that.
The date your .net was registered is irrelevant. First use in commerce is what matters, and you don't need any domain to use a mark in commerce, even on the internet...
Good luck with that theory in a UDRP.
You asked for an education how this works, we are giving it to you..
Not our problem if you choose to ignore what we tell you..
You'll get schooled from WIPO and it will cost you more than it would to just buy the domain... and then you'll still have to buy the domain afterwards for an inflated value because you pissed off the rightful registrant!.
Your argument of "bad faith" because he offered to sell you the domain at one time for an inflated cost of $9.50 is going to cause quite a bit of laughter from the panelist at the proceeding too....
You're the only one getting "emotional" here... we are telling you the truth.
Also, it is clear that you have absolutely no understanding of Trademark law at all, as exampled by your own "Terms and Conditions" on your site:.
All trademarks, service marks and trade names of Secret Candle used in the site are trademarks or registered trademarks of Secret Candle".
Here is your description for your "Valentines Gift Pillar Set":.
"A very unique Valentines day pillar. These candles are NOT easy to make but we do love making them. Candle come clear/white embedded with Sweethearts. You choose the scent. The small hearts come pink and are embedded with valentine candy corns.".
You do not own the TM for "Sweethearts", New England Confectionery Company in MA does..
Not showing a "tm" next to their mark is bad enough, but to claim it as yours with the blanket statement in your T&C's is egregious. You should be clearly demonstrating that you do NOT own that TM and actually show who does... This is just one example that I found, obviously there are a lot more of the same. I'm sure this was not your intent, but if you are going to start running around claiming you have exclusive rights to anything, you'd best be being respectful of the registered rights of others.
Even the main picture you are using of those same Sweethearts on your home page is ripped off from another site. In fact, you do not even bother to upload it to your own site, you are hotlinking it from another unrelated site. You do not own any copyright to that image at all... but someone else certainly does. Did you even bother to get permission?!.
Look, I get it that you are working hard to make your business thrive and you are fully invested in that endeavor... but you really do not have any superior rights to the .com version of that domain... I know you'd like to believe that the world and law works that way but it doesn't...
Look at it this way....
If this candle seller that has been doing business for a number of years and the .com owner that has parked the name for a number of years each filed for a TM at the exact same time, who would be awarded the TM?.
I very much believe that the answer to that is the same answer as to who would win at WIPO for this particular domain...
Jeez. It's appropriate to report invalid whois if the phone number is disconnected, or the email bounces. But it's perfectly legal for a registrant to ignore your emails, particularly if you're just asking to buy the domain. I ignore those kinds of emails all the time. By reporting him (falsely) to ICANN, you probably caused him some amount of hassle as he had to prove his information was correct. Maybe that's why he was grumpy when replying. I would be too!.
Anywaythe email you posted is from August 2007, but the current registration for the .com wasn't created until December of that year. So it seems like the previous owner (Pedro?) let it expire, and the current owner is someone completely unrelated who picked it up after it dropped. That might explain the perceived inconsistency in communication and price expectations...
From the above post,.
1) You did not want to buy the domain at $9.50 from the old owner in 2007.
2)You do not own a TM.
3)He is not in the same business as you with any bad faith.
If your business is successful and legitimate and he is offering to sell it to you NOW for say 3K just buy it. In 5 years from now domain names are going to go up everyday. The cost of registration goes, up, gases and food goes up -so will domain names. At that time, it might get change to someone else who will demand 15,000 to sell it.
Al the while you are are saving your $9.50 from 2007, and your 3 grand from 2010. By 2012 $15,000! or even 20,000. Or maybe the new owner will get really angry that you reported him/her and decided they rather forgo $15K and not sell it to you, make a website about a blog, and you will never get to use the domain name...