1. This site uses cookies. By continuing to use this site, you are agreeing to our use of cookies. Learn More.

WIPO complaint - domain trademark infringement

Discussion in 'Domain Names & Parking' started by oziozi, Aug 27, 2013.

  1. oziozi

    oziozi Newbie

    Joined:
    Jun 26, 2010
    Messages:
    22
    Likes Received:
    3
    Hello all,


    I received an email from some lawyers in the the USA who have filed a WIPO complaint against my domain as it infringes on their client's trademark. It's a gaming niche domain and I had a fake beta key website setup. They have requested the domain back in which I agreed. However they have come back saying the will accept the transfer conditional on me allowing them to see all the other domains I have with the registrar. Can they do this?? I have since transferred all my other domains to another registrar just in case. I don't have any other domains in this niche or using their trademark but don't want to share this info with them.


    Has anyone faced a similar threat from lawyers? Note that the WIPO investigation is still in progress. Should I just wait for them to rule and outcome and then give the domain back when ordered to do so? The lawyers are requesting my response ASAP. I'll also point out that I don't live in the USA.


    Any tips and advice appreciated :)
     
  2. Goal Line Technology

    Goal Line Technology Senior Member

    Joined:
    Dec 30, 2011
    Messages:
    928
    Likes Received:
    2,160
    1). No, dont wait, because they will rule in their favour, and they will provide enough evidence to satisfy the 3 conditions in arbitration (so you will be in sh8t anyways :) )
    BE PROACTIVE.... Tell them you want FULL reimbursement of the registration fee (including any privacy etc) you have paid for.
    (you must get at least the out of pocket expenses, and whilst this is probably a very small amount, ask for it on principle).
    This is the terms which YOU want to have as a condition. Do not be weak, be strong.
    Ask for it as a "goodwill gesture". Be polite and show you are willing to work with them to get a satisfactory resolution.

    2). They have no right to demand you disclose any other domains at this stage , unless the new registrars demand on their behalf.
    Don't worry, you will not be annoying them, because the layers get paid on a per unit basis, more work for them,
    just do not hand it to them.

    3). Where you live is irrelevant, if you are caught infringing on their copyright claim, basically thats the International agreement of ICANN.

    4). Good Luck and please come back and update us all with your result. Cheers
     
    • Thanks Thanks x 1
  3. Mooninite

    Mooninite Junior Member

    Joined:
    Aug 4, 2013
    Messages:
    117
    Likes Received:
    6
    Occupation:
    Student
    Location:
    The Moon
    You should give them their domain, cause the will win 100% sure, more if the domain is strictly linked with their copyright.

    And about to see your other domains, i dont think they can do that.
     
  4. saber210

    saber210 Supreme Member

    Joined:
    Sep 1, 2011
    Messages:
    1,358
    Likes Received:
    501
    Location:
    -
    Are you sure the email was legit?

    Saw too many scammers using this trick.
     
  5. dirkg

    dirkg Registered Member

    Joined:
    Jan 18, 2012
    Messages:
    70
    Likes Received:
    7
    I need to use a trick like this. A company in my town owns the .com to the name of my company. Bad news for me is that the domain is citykeyword (which is my business name as registered by the state we reside), and Ive only had the business for half the amount of time they have been using the domain to fool customers who dont want to use them into calling a second number which only later turns out to be them at their door.
     
  6. Jumby

    Jumby Junior Member

    Joined:
    May 26, 2013
    Messages:
    194
    Likes Received:
    51
    Them asking to see all your domains is a red flag. Are you sure the email came from a lawyer? Considering it's a very popular method to scam people out of their domains.
     
  7. oziozi

    oziozi Newbie

    Joined:
    Jun 26, 2010
    Messages:
    22
    Likes Received:
    3
    Hi all. Thank you for the feedback. To clarify, yes I believe the email is legit. The WIPO complaint is real as I looked it up on their site. My registrar has also put a freeze on the domain and disclosed my Whois info to the lawyers as instructed by WIPO.

    The request in their WIPO complaint clearly states that all they want is the domain back which I agreed to. Now they are asking for more which is not reasonable.
     
  8. Advocate512

    Advocate512 Newbie

    Joined:
    Aug 17, 2013
    Messages:
    5
    Likes Received:
    0
    Occupation:
    MBA Student
    Location:
    Austin, TX
    Just because the WIPO complaint is real does not mean these guys are lawyers. If they are in the US, they will have no problem giving you their bar card numbers, and you can look them up on the website for the bar in the state in which they practice.

    And even if they are actual lawyers, it doesn't mean they aren't bluffing about the other domain names. They are probably fishing for other prospective trademark clients, and although that would be barrarty, who's going to complain?. Unless you get a subpoena or whatever the WIPO uses for discovery, don't talk about other domains.

    Do give them back the one they have the order over though or your registrar may react poorly.

    C.Y.A. P.S. I have a law degree but not an active license--I am in grad school getting my MBA and LLM the next couple of years-- so this is NOT, I repeat NOT, legal advice. Consider it corporate or business planning as you will.
     
  9. oziozi

    oziozi Newbie

    Joined:
    Jun 26, 2010
    Messages:
    22
    Likes Received:
    3
    Thank you for the advice guys! One final question, must I submit a response to the WIPO complaint? The notice I received from WIPO states that I must respond within 20 days. What happens if I don't respond?