Ask HN: Domain Dispute

https://news.ycombinator.com/item?id=12553045

by nikolay • 10 years ago

19 22 10 years ago

news.ycombinator.com

I have a domain since 2005 with solid plans to use for a venture. But, like most of us, we have day jobs, families, and many ideas; not just one.

Suddenly, one loan shark registered `${name}capital.com` domain, the `${name} Capital` trademark, and, also, the pretty broad term of `${name}` as a trademark as well, and I missed the deadline to appeal the trademark as, obviously, I don't actively monitor the USPTO publishing, nor I pay dearly for trademark monitoring services and the like.

Before applying for the trademark, he asked me if I have the domain for sale, but I did not reply. He later texted me asking if I'd take $200 bucks for it, and I replied that I have plans for the domain.

Today, he's sending threats that he'll file a UDRP against me.

Can you, please, advice?

Edit: The trademark is registered for financial services and I have no plans to use the domain for that.

Edit 2: According to the responses so far, the advice is: Don't buy any domain you're not having a trademark on. And I can't agree with it! We all have many domains we want to use for future ventures.

nprescott• 10 years ago

You'll have to talk to a lawyer for legal advice; You could do it preemptively or just wait. To properly pursue a UDRP they'll have to file a complaint in court, at which point you'll need a lawyer anyhow.

Personal opinion - is it really worth the hassle? You've not launched anything in 11 years, why not just set a fair price and re-brand your un-launched venture?

nikolay4• 10 years ago

What this guy does is not right. Yes, we can let crooks and sharks get what they want, but should we?

This is a daylight robbery. A trademark != domain name. You know the Dove trademark being used for both confectionery, and cosmetics, and there's no confusion in the marketplace even with such widely popular brand - how can there be an issue with som awkward loan shark company?

nikolay4• 10 years ago

On a side note: I talked to ICANN and, to my surprise, they really answer the phone now, and try to provide help. A couple of years ago I reported a domain registrar that didn't offer any mean to pay for a domain renewal, and they told me that they don't deal with customer support issues.

wmf• 10 years ago

It is possible to win a UDRP case but I don't know if it's worth it. The following cases come to mind:

http://domainnamewire.com/2007/02/07/mgm-loses-bid-for-warga...

http://www.finnegan.com/publications/updatenewsletters/pubde...

nikolay4• 10 years ago

Yes, it is possible, but the above are slightly different cases. And, yes, it's not going to be easy, but should we let the crooks win? Because this is not about somebody liking a domain name and willing to buy it - this is about someone liking the name and feeling entitled to get it for free. I am surprised that now two hackers are advising just to give up.

notahacker• 10 years ago

See it the other way round. It costs him $1.5k plus lawyers' fees to bring it to court, and the burden of proof is on him to prove you registered it in bad faith or are using it in a manner likely to benefit from confusion with his trademark. He probably wouldn't win even against a letter drafted by you that simply states that you registered the domain prior on $DATE prior to his registering the trademark, your development plans for the domain involve are in $INDUSTRY and there is no realistic expectation of confusion with his newly registered service mark. So you can probably interpret the threat as a bluff, and if he actually did follow through with it, it would cost him a lot more than the $200 he's offered so far.

That said there's probably little reason for you to turn down a less insubstantial offer for a name which generates you no revenue and presumably isn't integral to your development idea if you ever choose to pursue it.

I'd have thought that calling his bluff was the right response, along the lines of "I registered the domain X years prior to your decision to adopt a variant of that name for your own purposes. My development plans for this domain in $industry do not involve financial services in any way and thus no possibility of confusion with your financial services firm exists. Any move on your part to pursue this via UDRP would therefore almost certainly be a waste of your money and time. I have invested my own money and time in the domain and my development project for it, and have no intention of changing my business plans unless it is financially worthwhile for me to do so."

ankitaggarwal• 10 years ago

The domain in question is sitting unused for past 11 years. Although, trademark is recent and you are holding the domain from very long time law should favour you. But because it is just sitting there without any use will make things complicated.

What I can understand from the facts you posted is they made a fair offer. They are is need of domain name and you are not using it at all. 11 years is a very long time and you are, willingly or unwillingly, blocking it for others. It will be good you not take this this to court and negotiate on a fair price.

Another alternative is, register the trademark in another category. In my country, there are 40 trademark categories. So making registration in any valid category should give you shield to protect the name.

tmaly2• 10 years ago

Do you know of any cases where a person was using a domain and someone grabbed the trademark and tried to take the domain?

Esau• 10 years ago

OP: the guy who is trying to take your domain name needs to eat a bag of dicks. I could, maybe, see him having a valid case if the trademark predated your domain name but given the chain of events you related, I have no sympathy for him.

People need to realize that having a trademark isn't a license to fuck people over.

bbcbasic• 10 years ago

Wot? Is the SOS emoji a new precedent for HN? Any question where you are in trouble to be marked as SOS?

nikolay4• 10 years ago

I am not the first one using them, but they help grab the attention. I'm sure they will be filtered out pretty soon!

sctb• 10 years ago

We've removed it from this title.

nedwin• 10 years ago

Setup a site on the domain name and start using it (static site, some content, a contact detail, explanation of the service you're providing that doesn't relate to financial institution). Sit back and watch this guys head explode.

If it's not confusing with whatever service he's got you should be safe but IANAL.

Finally I rarely worry when someone threatens me. Serious people don't threaten - they act.

supersan• 10 years ago

Just setup a wordpress blog and fill it with aggregated data remotely related to the domain name. Since you've had it from before, you have the upper hand.

Read about Nissan's domain name. If a company that powerful couldn't get their hands on it, you shouldn't be worried.

Gustomaximus• 10 years ago

1) If he's only willing to offer $200 I'd seriously doubt he'd lawyer up. Any rational person would offer the lawyer/time cost first if they were serious to try and avoid it.

2) Could you transfer the name to another holder/company if they apply? According to ICANN " disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name." If they lodge a complaint sell it to a friend/company structure for $1 and suddenly they are chasing the wrong person. You can tell them you dont own it and to stop harassing you. Rinse, repeat.

3) u/ankitaggarwal had what seemed the good suggestion of registering a trademark in another category.

4) Tell him your price. Consider a new domain/name if price is met.

joshmn• 10 years ago

You might want to post on NamePros or WebHostingTalk — there are many more experts there who deal with this kind of stuff and see it every day.

https://www.namepros.com/

https://www.webhostingtalk.com/

URSpider94• 10 years ago

IANAL, but it sounds like his case would be very weak. You clearly had the domain name before he filed for the trademark, you have not been actively trying to extort money from the trademark owner (you've not responded to his requests to buy it), and you're not trying to export customer confusion to his name.

If you really care about this, hire a lawyer.

If you care a little bit, but not enough to pay someone, then it would make sense to put something on the site to make it clear that you're using the domain name for something productive that is non-competitive with the trademark registration. As you correctly point out, trademarks are for business domains (or geographic domains, but that seems really quaint these days, right?) so a legit use outside his trademark domain would mean his complaint was null and void.

tmaly2• 10 years ago

You got me thinking. I have owned a website name since 2003, and I put up a website a couple years back. So I have been actively using the name.

I just checked and someone registered the trademark in May 2016 for `${name}` since I own the .com I am wondering what sort of issues I will get into.

It seems there is a board you can petition to have a trademark cancelled. I wonder under what circumstances a trademark would be cancelled.

http://www.uspto.gov/trademarks-application-process/appealin...

GFischer• 10 years ago

If you're not using it, I think you should sell it to him. It will be easier on both of you.

You probably don't want to go through the hassle of a legal fight, and if he's correctly advised, neither does he (especially since he has a nontrivial chance of losing).

ddccbbaa• 10 years ago

Maybe do something with it immediately? Something totally unrelated to the trademark owner's business.

I think if you do some research on this i.e. read some UDRP decisions you may find that if you have it parked and it's showing ads that relate to the trademark owner's business then you may be at risk of losing in UDRP. But I could be wrong.

seanwilson• 10 years ago

I don't understand why you want to keep it...if you haven't used it for 11 years are you realistically ever going to? Sounds like you should just sell it to be honest and avoid the hassle.

sssbulldog• 10 years ago

#1 Do not entertain any offer. Flatly refuse or just don't reply.

Entertaining an offer can have consequences...just don't.

#2 Put up a simple page "Coming soon" that is clearly nothing to do with financial services...put up a blog...

Ask HN: Domain Dispute

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