I suspect that after all the research you've done you already know the answer and simply want somebody to disagree with you... I'm afraid it would look like squatting...
1 post wonder ... your "question" is pre-injected with so much misinformation, a real answer is not possible. Nor does it look like that is what you wanted......
@cartoonz: What do you mean by pre-injected with misinformation? I tried to summarize the facts as best I could. Mvna was right in her response that - based on my research - I do suspect that it would in fact be construed as squatting if I offered the domain to the existing business, whose trademark predates my date of registration.
Having read about the 3 part UDRP test, I posted the question in order to get some input from the experts. I would really appreciate your advice.
If I cannot approach the existing business for fear of UDRP action, the only alternative would be to "let sleeping dogs lie" and to try to sell the domain in a different industry. What should I do?..
If I followed, I wouldn't sell the domain to anyone else either because if the company decides to take action in the future the blame can travel up the chain through the original owners as well.
If you really have no interest in the domain just contact the company and give it to them, if they are nice about it they might give you something in return, most of the time it is usually the cost of transferring the domain but still. Tell them your situation and that you have "learnt" of the trademark and everything.
Also, I would probably unpark the domain as the company with the trademark can use that against you by saying you were profiting from them...
If you own the name without hyphen, then:.
-You should never park the domain..
-You should never use any Google AdSense or similar program on you website if you ever develop it..
-Do not develop it in the same or similar line of business.
-Do not directly approach the owner of hyphenated domain name to sell your version, as this may prove your bad faith. If the company is a successful business, they will approach you one day.
-If you dont have such patience then let it expire..
If you did the above then you dont need to worry at all, as owing any mark never grants anyone exclusivity. Post added at 02:08 AM Previous post was at 01:28 AM However if you are the owner of hyphenated name and you have been offered to buy the one without dash (which seems to be the case) then simply buy the name if you are interested in it. The other route is costly and proving someones bad faith is not very straightforward...
You "presume" far too many things and then claim to present them as "fact" in your post, hence the "pre-injected with misinformation" statement..
Look, the only "fact" is that you have the non hyphenated version of a domain used by a company that has been around for ~6yrs..
The rest is pure conjecture.
Where do you get this "3 part UDRP test" and decide that your answers are correct? (they may not be, some are most assuredly wrong) While there are "3 prongs" to the UDRP that must be met, you seem predetermined to lose every one of them... some might consider it that, sure. The owner of XYZ-media.com might probably think that way. That may not mean anything in a legal sense though... "Presumption" is the mother of all mistakes....yet you then go straight forward and turn your own admitted presumption into a "definite" fact... huh?Here is where you are really laying it on a bit thick....
You want us to acknowledge your above 3 points as gospel fact?.
1. "potential purchaser" may or may not have any enforceable rights to the term. Fact is that there is no registered mark... that may be for a reason. "common law by assumption" is rather thin... "secondary meaning that phonetically describes his core business" Umm....
And also one of the most common reasons the USPTO denies TM applications - as "Descriptive".
2. "Obviously", you do not have a clue but do want to validate your opinion that parking removes any "legitmate " interest. BullSh*t.
3. can therefore not invalidate any presumptions of "bad faith." WTF is that? You are writing this like a law brief but are basing it in bullsh*t.... I'm certain that if you looked under every rock in every corner of the Globe, you could find some business doing business as most any "word + media" phrase you could think of. That does not mean you are guilty of bad faith if you happen to own "word + media" .com and did not know about them... you did check the Registered TM DB and found no Registered TM... yet, according to your logic, you are determined to be indefensibly guilty of "bad faith".
Sorry, I may be off base here but from the way you've written this whole thing up it really sounds more like you are not accurately presenting the truth. It really seems more like you are coming at it from a perspective that the existing "xyz-media" people might have and are testing your slanted theories here. Might be all wrong on that part, but it sure smells that way to me. seems I'm not alone..
Thanks for all the answers. I appreciate your feedback.
As a newbie, I am a bit puzzled that some of you think that I am in fact the owner of the hyphenated domain who was offered the non-hyphenated. That's not the case. It is very interesting that such a presumption would be made:-).
@cartoonz: You are correct that I was playing Devil's Advocate with regard to the UDRP test ("While there are "3 prongs" to the UDRP that must be met, you seem predetermined to lose every one of them"). The idea was to present the potential outcome of such a UDRP test and - if applicable - have it refuted by the experts on this forum.
Given Jawed's adivise ("Do not directly approach the owner of hyphenated domain name to sell your version, as this may prove your bad faith"), my suspicions seem to have been well founded.
Bottom line seems to be that I am left with two options:.
1. Unpark the domain and wait for the business owner to approach me one day..
2. Approach the business owner and - expecting that I would lose a UDRP test - offer the domain for less than the cost of initiating UDRP proceedings, which I read is $1500...
I'm going to assume this isn't a totally generic domain, given the "XYZ" in your example...
So in other words, is acting in bad faith OK as long as it costs less for the mark owner than a UDRP or legal action? No it's not. For one thing, it's sleazy and makes the entire domaining industry look bad. And, if they decide to teach you a lesson instead (via UDRP or in court), they have ample proof of bad faith.
Option #3 - Delete the domain from your account...
I agree that my option #2 would be a sleazy and opportunistic choice. As I said in the initial post ("Help me, I'm not a squatter"), I did not register the domain in bad faith in 2008. However, I do realize that once I offer the domain for sale to a trademark owner, that distinction of intent is no longer valid.
A google search yielded a second company (in a different industry) that probably also has a common law trademark in the domain name. It's a video production company that has released about a dozen DVDs under a label identical to the domain. Since the label is printed on all the DVD covers, I would assume that this a clear case of "use in commerce." So now there is an East Coast advertising company and a West Coast video production company, both of which probably have a trademark claim to my domain. Since the domain has been parked for over two years without any inquiries, this all very surprising. Again, the domain consist of a dictionary word + media, similar to something like GlamourMedia*com or PrestigeMedia*com. Is such a "generic plus" domain not distinctive enough to be trademarked?..
Put in on the auction houses. Conceivably somebody else can use it in their business without being accused of squatting if there is no "likelihood of confusion" with the existing mark's owner.... I think "sleazy and opportunistic" is a bit harsh. Don't we all buy domains in hopes that the opportunity will come when somebody will pay us more than we paid for them?..