Expired Domain Trademark Issue Lawyer Contacted Me To Transfer the domain to owner

linkking · Feb 7, 2015

I won a domain through back ordering service. Created a different website and currently using it as a PBN. About a week ago the lawyer representing the previous owner contacted me. Below is the email

Our client is the owner of the French trademark ........, registered since 200x under number xxxxx and has acquired common law rights in the trademark ... from its longstanding use of the trademark.

Our client has recently been informed of your registration of the domain name ...... and believes your registration and use of same infringes on its trademark rights. We, therefore, demand that you transfer said domain name to our client forthwith.

I have over 100 domains in my PBN, this is the 1st time I have been contacted. What are my options Thanks for your help. Advice from people who have been in this situation would be appreciated.

wizard04 · Feb 7, 2015

You have acquire the domain legally, so they can bite you ass.
You can try to sell them the domain, if they are desperate you can get good $ of it.

The other option is probably they are scamers that are using this technique to scam the people out of there good domains.

linkking · Feb 7, 2015

It is not scam, I checked the law firm and it is legit. I was also thinking of selling the domain back to them but wanted to know what the law says about it.

wisdomkid · Feb 7, 2015

Try selling them the domain nicely, then wait and see their reaction.

Even if they're threatening brimestones, just wait and see what next step they'll take.

But since you're using it for PBN, don't waste your time, money and energy going to court.

prospect7 · Feb 7, 2015

personally I would take down the content, then just hold the domain and offer to sell it back for a price.

neverquitting · Feb 7, 2015

Not a lawyer, but when they let that domain expire and essentially allowed someone else to buy it, they failed to defend their trademark. Sounds like lawyer is trying to talk a big game, but he/she may not have a lot of ground here (again, I could be way off). Probably the best bet is to just come to a settlement though. No legal mess for you, they get their domain, you get a tidy profit.

bartosimpsonio · Feb 7, 2015

Check the legislation for "fair use" in France.

In the States you can mention a trademark if it's used for reviews and for the broader public interest.

theRevolt · Feb 7, 2015

Is it a .fr domain? If not is their trademark global (unlikely for smaller business given the cost)?

Atomic76 · Feb 7, 2015

Is the domain a really generic word or phrase? I used to work for a company had a domain name that was too generic and we couldn't trademark it. I believe they drop off the ".com" or whatever TLD when you try to trademark a name, and if what you're left with is too basic (ie. "pets.com" becomes "pets") then you're kind of screwed. It's also a pain in the butt when it comes to stuff like Google AdWords, because you cannot stop others from bidding on your domain name as a keyword, since you don't technically have it trademarked.

It sounds like they are trying to spook you and bully you into handing it over, I would consult with an attorney first if you can. Why give it back to them if you can make some money off it instead, it was their own fault and incompetence that they lost it.

rjlarke · Feb 7, 2015

the_demon · Feb 7, 2015

If your not using the domain and it doesn't contain any references to their trademark then they can't do anything about it. Also, if your not in France then you probably have nothing to worry about.

spider7 · Feb 14, 2015

Bhahaahaa....
*(they get a Lawyer to send you a nasty letter???)
Fock Them...

A Domain Name is a Registered Trademark? I call Bull Chit!
I think you just made some $.

I've been involved in SEVERAL LAWSUITS (not for domain names, but lots of others---and not by choice).

First of all, put that Domain name into a "separate corporate Name---like an "domainname.com LLC." This way, that domain name is limited in liability to the cost of the LLC (can't be more than a couple of hundred $). Once you have played this hand, they will realize they are in a bad position. You've got nothing to loose, except the cost of the LLC and the Domain name cost, etc. No personal assets will at stake.

NEXT, Tell them you have a bidding war up for the site...and they can send you their offers. CALL THEM, AND TELL THEM, If they harass you again, you will be file a case against them for harassment. If they sue, ---counter-sue (assuming you have $).

Otherwise, just show up at court and play dumb. Let them spend some $ pursuing this venture. They will figure out that it will be cheaper to buy that name than to pursue you in court.
(I'm assuming you are in the States?)

.

amithbhawani · Feb 14, 2015

dont even reply to that mail,have allibi it gone on spam folder

peepin2me · Feb 14, 2015

These things happen.Don't worry. I once registered a PR 4 expired domain which apparently belonged to a Christian missionary. The previous owner sent me a mail threatening me that Jesus will punish me if I don't return the domain back to him

howard_hughes · Feb 14, 2015

Not really, if the domain carries their trademark, they can file a URDP and take the domain away.

OP, your best bet would be to tell them that you've bought the domain for a client and already spent $$$ on it, so if they reimburse your "Costs" then you'll gladly transfer the domain to them.

Write the mail in a manner, where you Dont sound like you're trying to profit..

OR,

If you have the $$ to pursure legal options, then go ahead

wizard04 said:
You have acquire the domain legally, so they can bite you ass.
You can try to sell them the domain, if they are desperate you can get good $ of it.

The other option is probably they are scamers that are using this technique to scam the people out of there good domains.

RuthSam · Feb 14, 2015

That sounds to me to be your best options here. If you have money you will even want to ask a lawyer before your do anything rather than using BHW for legal advice

howard_hughes said:
Not really, if the domain carries their trademark, they can file a URDP and take the domain away.

OP, your best bet would be to tell them that you've bought the domain for a client and already spent $$$ on it, so if they reimburse your "Costs" then you'll gladly transfer the domain to them.

Write the mail in a manner, where you Dont sound like you're trying to profit..

OR,

If you have the $$ to pursure legal options, then go ahead

mic88 · Feb 14, 2015

I have had similar situation about 4 years ago. Domain was blocked by registrar and whois protection has been unlocked.

The problem was that layer haven't contacted with me before. Just send a application to the court.

It was stupid for me becouse they wasted few hundreds euros but.... this company is very rich (global company with thousands of patents).

I was ready to delete this domain (it was what they wanted) without court but they preffered to do it by court.

Check if they have regisred trademark and it is live. _Only_ _then_ I suggest do what they want.

mic88 · Feb 14, 2015

But since you're using it for PBN, don't waste your time, money and energy going to court.

It is not standard court. It was electronic court for me. I am living in EU so they send to Czech Arbitration Court.

The most strange for me was that registrar suspended domain without judgment. Just after sending application.
In the application was something about method of using a domain. They said that it is commercial becouse there was affilate links. If it site is not commercial and is just about a product then it is legal and they can't delete it or transfer.

turbopugsleylx · Feb 15, 2015

This was taken from Wikipedia...the lawyer may have a leg to stand on...

"Unless the original registrant holds a trademark or other legal entitlement to the name, they are often left without any form of recourse in getting their domain name back. It is incumbent on registrants to be proactive in managing their name registrations and to be good stewards of their domain names. By law there are no perpetual rights to domain names after payment of registration fees lapses, aside from trademark rights granted by common law or statute."

cottonwolf · Feb 15, 2015

Talk to a couple of lawyers and see if they offer free initial consultations of 30-60 minutes. Not likely, but perhaps they can give you some knowledge. But they surely won't tell you everything in a free consultation, if in your area this applies, they will use it as an opportunity to make you a client, obviously.

As to the trademark holder, it's his fault he lost it. As others mentioned above, try to seek legal advice or settle outside courts. Lawyers can waste a lot of your time. And their letters will make you stress, too.

Expired Domain Trademark Issue Lawyer Contacted Me To Transfer the domain to owner

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