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

Discussion in 'Black Hat SEO' started by linkking, Feb 7, 2015.

  1. linkking

    linkking Power Member

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    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.
     
  2. wizard04

    wizard04 Elite Member

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    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.
     
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  3. linkking

    linkking Power Member

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    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.
     
  4. wisdomkid

    wisdomkid Elite Member

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    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.
     
  5. prospect7

    prospect7 Regular Member

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

    neverquitting Regular Member

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    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.
     
  7. bartosimpsonio

    bartosimpsonio Jr. VIP Jr. VIP Premium Member

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    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.
     
  8. neu009

    neu009 Senior Member

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    Is it a .fr domain? If not is their trademark global (unlikely for smaller business given the cost)?
     
  9. Atomic76

    Atomic76 Registered Member

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    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.
     
  10. rjlarke

    rjlarke Newbie

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    Tell them that you are not violating their trade mark as you are not trading on their name and intend to use the domain name for an unrelated purpose (do so, if need be even take down your site if it's offering a related product), you simply and legitimately now legally own the domain name. (Now this bit is important) You have no intention to use the domain name "in bad faith" or use it in a way that creates an unfair advantage or is unfairly detrimental to the complainant's rights. Tell them you have plans to use your purchase for legitimate purposes but would not be opposed to selling it, if a reasonable offer that compensates you sufficiently can be agreed.

    Buying it off you is going to be their cheapest option and if they did take you to court the fact that you tried to resolve the situation amicably will go in your favour. Make a reasoned attempt to explain why this domain name is such a big part of your plans. Don't get spooked by a solicitors letter, you've done nothing wrong, unless you are trading on their name and then they could claim damages and take any profit you have made, if you are simply stop doing so. But do not give up the domain name, if they want it, they can fight for it in the courts or ICANN. But it will cost them big time. It's easier to pay you off, there's no guarantee they will win and the chances are that they are bluffing anyhow. The big mistake to make is to think this solicitor is "WORKING" on the case already, as in he's trying to find a way to get you and do all that he can. He's agreed to send a letter and given it very little thought, he'll have charged the client £100 to send a letter and then once he has your response will go back to the client and advise him on his options, they may all be negative options for the client, so at this point it's just an expensive letter. Don't be bullied, try your luck. It's a civil action and not that scary, in the UK it would be dealt with in the small claims court (if it's worth less than £10000) and the solicitor probably wouldn't even turn up to the hearing (they tend not to).
     
    Last edited: Feb 7, 2015
  11. the_demon

    the_demon Jr. Executive VIP

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    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.
     
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  12. spider7

    spider7 Regular Member

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    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?)



    .
     
    Last edited: Feb 14, 2015
  13. amithbhawani

    amithbhawani BANNED BANNED

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    dont even reply to that mail,have allibi it gone on spam folder
     
  14. peepin2me

    peepin2me Regular Member

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    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 :)
     
  15. howard_hughes

    howard_hughes Elite Member

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    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 :)

     
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    Last edited: Feb 14, 2015
  16. RuthSam

    RuthSam Jr. VIP Jr. VIP Premium Member

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    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 :)

     
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  17. mic88

    mic88 Registered Member

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    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.
     
  18. mic88

    mic88 Registered Member

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    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.
     
    Last edited: Feb 14, 2015
  19. turbopugsleylx

    turbopugsleylx Jr. VIP Jr. VIP

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    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."
     
  20. cottonwolf

    cottonwolf Regular Member

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    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.