Keep in mind it will cost them a MINIMUM of $1500 just to file a UDRP at WIPO..
Combined with your predated registration minus the faux pas of trying to sell it to them in the first place...
Thing is... for a UDRP to be successful, they have to prove the third element... that you registered the name in bad faith... even though you tried to sell it to them, your registration does predate their TM by 2 yrs. You *could* have a shot at beating the odds there.... but slim, since you solicited them without doing your homework first.
Stick to your mid xxx price and remind them how much WIPO will cost them.
Don't bargain. Don't haggle. Your price is your price. If they want to pay 3x that (at least) to TRY to take it from you, tell them "good luck".
They will threaten. They will bully. But unless they are stupid, they will take the least expensive route to get it - and that means meet your price.
Your price IS being amicable in that light.
Thanks for your advice! rep +.
Does the predated registration is the main thing in that case? Logically, yes. But I've never had such problems, so don't know how it looks in practice.
And do you know what if they start WIPO and will win it - what could I lose?..
Since you're not really the original registrant, the original registration date won't carry the day in a UDRP, since all you get is the domain through NameJet...
You can lose the domain through WIPO. nothing else. ok, maybe some pride... but no $$ damages..
They could make a court case out of it... but that's way more expensive than filing a UDRP so it still won't make sense to them to not pay your small xxx price...
Thank you again. Very useful information for me.
Ok and what about generics. For me it's like WhiteApple, Blue Peach, BrownCherry etc. The color + fruit isn't it generic?..
It's not smart contacting an end user to sell them their own TM.
How has the domain been used ? Suppose it's been parked with sponsored links that compete with their products/services, or even their own... bad faith is established, even if the domain has been registered before they even came into existence. Also, their TM rights may predate the actual TM registration date..
They mentioned WIPO, which means they are familiar with the process or have done some research.
Try to have an educated conversation with the other party. Mention that the domain has been registered since 2004, don't tell you're not the first owner..
Something like: "the domain name has been registered since 2004, yet your trademark was registered in 2006, so there was no way of knowing it might infringe on your brand".
Even generic names can be TM within certain limits. If I owned apple.net and had the name parked with computer-related ads I would be in trouble...
Thanks for your comment. I know that was stupid thing not to check TM"s. It's my first time.
I'll try to speak with them. We'll see how it will be...
Checking TM registrations at the USPTO is no guarantee, though often is good enough.
There is no central list of TMs anywhere. TMs are geographical - most every country maintains a TM database, plus even within a country, there can be multiple TM databases; ie. many U.S. states have their own DBs too!.
Another pitfall to watch for are TMs that are similar - it's easy to miss those when searching the USPTO unless has done some research beforehand on the name they're checking.
On a related note, Abandoned / Canceled TMs refer to registration status, not the actual TM itself - don't assume it's all clear, because it may not be. The TM may be registered in other TM databases (or not registered anywhere, but is a common law mark - they're important to be aware of, but typically less of threat than registered TMs in regards to UDRP) and/or registered elsewhere in the USPTO database - yes, that can happen ... so it's important when one sees "abandoned", "canceled", etc to check every single entry and related entries, such as related foreign marks.
Again, to reiterate, abandoned, canceled, etc refer to the status only NOT the actual TM. It's possible for a TM to have multiple database entries ... ie. one being canceled and the other active, etc.
I'd suggest, in addition to USPTO searches, also googling / binging (bing could be the next google ) to see if it's a "strong" TM in another country ... and to find, if any, variations that seem related, but are spelled slightly differently; ie. singular, hyphanated, part of a longer name, etc.
Pink is generic.
Olive is generic.
But have you ever seen a Pink Olive?.
Neither have I.
I've seen a Pink Elephant...but that was in my drinking days...
Combining 2 generic words that don't normally go together makes it NOT generic.
If the domain was either GreenOlive or BlackOlive then it would be a different story...
You will lose in WIPO or a URDP. Contacting the owner and furnishing a price was not smart. The loss of the name could be the least of your worries, you could be prosecued under the federal anti-cybersquatting law, big fines and all.
If it were me I would reply with a little hardball myself. Get this guy to be serious. "I was disappointed to hear your reply to my last communication. I was not only unaware of nature of your TM, also understand this name to be registered years (2) in advance of your TM registration, therefore immune from a "bad faith" registration. If you would like the name, please accept my previous offer of "$XXX" for the transfer so we can both more forward. I am willing to accept these various forms of payment and can initiate the transfer very quickly upon receiving funds. Thank you...
Just to be safe if you end up selling the domain to TM holder, it wouldn't be bad idea.
Have him/her sign domain sales contract which mention buyer will not harm you in.
Any way after the sale.
I sold one domain to TM holder for $750 although I could of gotten twice that...
Set up a site for your band "Pinko Live". (joking).
By calling you a "cybersquatter", the other party has made a serious accusation. With that, I would not communicate further with them, and let any additional messages be relayed via my attorney...
Which only forces them to file a UDRP or worse...
Why do you want to put the OP in the poor-house? He can't win if it goes to WIPO or worse, to a real judge. The only upside he has is that he wants less for the name than any of the legal avenues will cost to file.
The OP only wants $xxx for the domain, so it is absurd for the TM holder not to settle for that lesser amount than they would have to spend to escalate the matter through other channels.
Refusing to communicate and forcing a certain loss through legal channels would be advantageous to the OP how, exactly? Ring up a nice legal bill? Forget about ever receiving any compensation for the domain? Piss of the other party enough to file a real lawsuit that includes penalties? Get serious.
His only way out is, oddly enough in this case, to stick with his original price and make the buyer realize that is the most expedient and fiscally prudent course of action. Getting pissy over being called a 'cybersquatter' is just dumb - in this case. Post added at 11:03 PM Previous post was at 10:33 PM Dear Douchebag,.
The domain registration predates your TM (which I had never heard of until now anyway, as it is far from famous) by a good two years. Please be advised that may pose quite a problem for you if you try to make this an adversarial process. Sure, you can go ahead and TRY to take it from me through the WIPO process but please also be aware that you will be spending, at a minimum, $1500 just to file for that process. Also, please realize that this avenue will certainly not guarantee that you will get the domain name. Purchasing it now, does.
Compared to the cost and aggravation to each of us resulting from an attempt to get the name through that sort of process, I'm sure that you'll agree that my original offer to transfer the name for $xxx is not only an amicable solution, it is actually quite financially advantageous to you.
My original plan for the site was to create an in depth educational site focusing on the clitoris, with diagrams and detailed pictures to aid users with proper technique and instruction. An "Operator's manual" if you will. Obviously, this use is certainly outside of the scope of your TM anyway, so I'm fine going back to that plan if you like. I've been researching this subject for many years and have been told that I am, indeed, quite the expert in this area. My techniques have garnered praise from many coeds and housewives across America, so it is sure to be a very popular site. I was actually in your town last Spring (I thought your name looked familiar) and met a woman with the same last name...
Also, please let me know if I can count on her testimonial for the site as well, should you choose to be a jackass and not buy it.
That's MR. Cybersquatter to you..
That should get the job done..
...might leave off the douchebag part and the last paragraph though!..
Great information I've got from you guys.
Cartoonz - it's a fantastic text.
Yesterday I've send an e-mail to them, in which I explained that it's better for both of us to solve it without WIPO.
No answer till now - we'll see.
Thansk for your help and time!.
One more question: it's doesn't matter in that case, that I'm not a resident of USA?..
Common law trademark can be argued if their first use in commerce predates the registration of the domain. especially since contacting them to sell it to them indicates bad faith. You don't NEED a formal tm to win tm disputes.
They have the tm, it's your bad for not checking. Settle this for a small amount, since they're willing to do so, and move on. Make sure your domain sales contract precludes them from filing for damages in the future.
As for generic, there are 5 types of marks - generic, descriptive, suggestive, arbitrary and fanciful. Generic and descriptive marks can't be registered, BUT ...
Olive would be generic if they were selling olives..
Pink Olive would be descriptive if they were selling pink olives*.
Either would be "arbitrary" (a very strong type of mark) for selling something completely unrelated to olives. *There's a fine line between "descriptive" and "suggestive" and if they were willing to make a case, provide supporting documentation and spend a LOT of money on their legal fees a company can sometimes push a seemingly-descriptive mark through and get it accepted...
I agree with this statement. My reason to include the 2 year prior statement was to insert a touch of doubt and force more diggin on their part i.e. More of a hassle and higher hurdle to prove. The point is to force a settlementon your terms rather than their's.
FYI, offering to sell the domain to the TM owner does not prove bad faith registration but is a factor in that AND the anti-cybersquatting law...
I fully disagree with cartoonz assessment.
The original poster has exposed himself to liabilities that would be better addressed by an attorney. Further communication, particularly if not framed appropriately, will increase those liabilities. Using an attorney for sensitive communications and transactions is not "pissy"; it is professional.
I wish the original poster good luck. I am sure this will be a learning moment for his domaining endeavors...
The guy wants less for the name than my attorney charges for an hour of his time.
Sure, under 'normal' circumstances you're correct. This one... that doesn't play.
...and doing all of this because somebody called you a 'cybersquatter' is, indeed, pissy... not 'professional'...
Many attorneys will let them brief them before charging.
For me, the term cybersquatter in this context, particularly when used with threat of a WIPO complaint, was a keyword for action under ACPA. It is different than being called a "jerk" or some other nonspecific adjective. While we can disagree on how we would each proceed, there is no doubt that the respondent provided an emotional response; I see that as portending further erratic behavior. Thus, I would use an attorney. Fortunately, since the original poster has now added the information that he is not in the United States, risk under ACPA is significantly reduced...
What you're saying is correct - and I would normally take the same position. But looking at the whole picture on this one, the numbers add up differently.
While it was incredibly daft to try to peddle the domain to the TM holder in the first place, because of this you'd expect the sort of response he got... but considering the $ values involved, there is no benefit to either party to escalate conflict which, oddly, is the only saving grace for the OP.
Good to see another member from SB.....