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Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

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Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#211

Post by aartav »

IANAL, but at least according to ICANN rules you have nothing to worry about unless "your domain name has been registered and is being used in bad faith". You can see the specific definition of "bad faith" and the rules around this here https://www.icann.org/resources/pages/policy-2012-02-25-en

Its easy to prove you are not acting in bad faith because your ownership precedes the trademark. I personally own and use several domains that others hold trademarks on, but all of mine were registered before those companies established trademarks.

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#212

Post by donmcronald »

bhartzer wrote: post #115

You need to speak with a qualified domain name attorney, not just any attorney or solicitor. As Director of a domain name protection company (and not an attorney) I can offer this: If you registered the domain name before the other party files for a trademark, then there is no way you would have known that they would file for the mark. So, in most cases you probably don’t have to give up the domain name. It comes dow…

> If you cannot afford an attorney, look for a company that offers domain name insurance or a domain name warranty, if you have an issue like this with your domain name, your legal fees to defend the domain are covered.

I've never heard of that before and all I can find trying to search are sites about the `.insurance` TLD.

Anyone got any links to some examples?

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#213

Post by notahacker »

WORMS_EAT_WORMS wrote: post #86

Congratulations! You just got an offer for a buy out. This could be the best thing that has ever happened to you. Depending on the price and size here, very little chance / or unlucky for them to go nuclear option. The last thing they want to do is take this to court and then also lose. Devastating for them to lose and only expensive for you to lose. Settle here and take the bonus. How deep do their pockets look and…

I'd check the specifics of this very carefully with a domain specialist lawyer before making a counter offer, especially one involving setting a large price.

One way to make a very weak case that an already-registered domain is being used in "bad faith" against a trademarked entity a bit stronger is to argue that the owner of the domain made an unsolicited request to the trademark holder for payment...

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#214

Post by m3047 »

otterley wrote: post #74
reaperducer wrote: post #71

Earlier quoted context omitted.

False. C&D letters are sent via email all the time. Millions of Americans don't have e-mail. They're just on social media. What then? That's why important things are always sent by mail. Very important things by certified mail.

That's irrelevant for this issue. Domain holders have to provide working email addresses as a condition of registration, and are reminded annually to keep their addresses up to date. If an email address can't be found, the correspondence can be delivered through other means if necessary (mail, process server, etc.). But generally, there has no longer been a need to waste paper and postage to deliver notices since ema…

IANAL but I am an internet plumber. Happy to provide expert witness that e.g. Hover, owned by Tucows, has a toggle for whois in their domain admin dashboard but it does nothing: I cannot turn whois on even if I want to.

Having, or publishing, an email address does not mean I care to, choose to, or will in fact receive email sent by you; or that I will display or treat it in the fashion you desire.

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#215

Post by temp8964 »

They are just trying to scare you. Many famous companies need to buy the domains from people registered earlier. There’s no such thing as trademark automatically gives right to domain names. Tell them to use their own .net domain name and go away.

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#216

Post by marc »

winterplace wrote: post #161
marc wrote: post #9

They might be using scare tactics hoping you'll hand over the domain name without question. But I wonder if they have a case. My suggestion would be to either A) ignore and see if they go away, and/or B) have a domain name lawyer send a reply showing you won't roll over. That's usually enough for parties like these to back down. If you need a lawyer recommendation send me DM me on Twitter (@marckohlbrugge). More than…

Or option C) Negotiate a deal to get paid for the domain Marc, do you have an email address?

marc(at)hey.com

Note that I'm not a lawyer, but I've dealt with similar issues before through a qualified lawyer. Happy to introduce you. Not sharing name here publicly, because that could potentially be used against me. (i.e. someone intentionally creating a conflict of interest, etc)

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#217

Post by marc »

chx wrote: post #20
marc wrote: post #9

They might be using scare tactics hoping you'll hand over the domain name without question. But I wonder if they have a case. My suggestion would be to either A) ignore and see if they go away, and/or B) have a domain name lawyer send a reply showing you won't roll over. That's usually enough for parties like these to back down. If you need a lawyer recommendation send me DM me on Twitter (@marckohlbrugge). More than…

In particular, the UDRP rules include the following: -------------- (ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular, [...] (3) why the domain name(s) should be considered as having been registered and being used in bad faith --------------

Yes, although that criteria is somewhat subjective. Since an UDRP needs to meet all criteria, you can throw it out by just looking that the registration dates.

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#218

Post by PinguTS »

musesum wrote: post #32

I had a 4 letter domain name. A stock photo company trademarked the name and then threatened to sue to force transfer. However, I registered the domain before they registered the trademark. I looked up the ICANN rules and saw I had priority. Pointed out the ICANN rule and told to go away. They did. IANAL; this is not legal advice.

Right. Had the same issue years ago. Did the same and worked the same.

Just point them to https://www.icann.org/resources/pages/help/dndr/udrp-en

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#219

Post by fma »

philprx wrote: post #201

Send them a cease and desist and tell them you're going to sue for attempted fraud (or better term): They have no right to their claim and are using abusive language to make you do something under threat. You can get quite some money out of it I believe. IANAL and this is not a legal advice.

I hope they can turn around, sue them and take their .net domain name.

I also IANAL and this is not a legal advice.

Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

#220

Post by paxys »

dominenames wrote: post #6

No, it's not correct to state that they have any right to the domain name. Anybody can sue anybody for anything, but they have no prospect of winning ownership of the domain name. Domain name conflicts like this are adjudicated by WIPO who would never grant the domain name in this situation: https://www.wipo.int/amc/en/domains/

Doesn't matter what WIPO thinks if a judge who has jurisdiction over both parties orders the transfer. Not saying it will happen in this case, but you can definitely be compelled to hand over your domain name or risk contempt of court.
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