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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

#231

Post by WORMS_EAT_WORMS »

notahacker wrote: post #213
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...

Yes. Exactly (step 0). Anything will be used against you

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

#232

Post by chrischen »

Basically this exact same thing happened to my business with an individual (some guy who’s main business appeared to be acquiring and selling domains) who setup a very similar trademark, registered the domain (very similar), setup a dummy business on the domain, and then sent us a cease and desist trying to extort (we did a call with them where they basically told us they knew it’d cost us a lot of money to litigate and it cost them almost nothing to keep their dummy business up) us for six figures.

We ended up litigating and canceling their registered trademark with the USPTO by proving our business and website were setup before theirs. If you have over 7+ years of business and public records this should be a pretty open and close case. The bad news is however even if that is the case it can take 2-3 years (probably due to pandemic)and a lot of money. In our case it cost less than $10k, so the guy’s extortion made no sense.

It also didn’t help their case that the guy lifted verbatim copy from my website, including my TOS with my address! I’m not sure if the judge even looked at this though.

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

#234

Post by chrischen »

paxys wrote: post #228

Disclaimer: I'm not a lawyer and this isn't legal advice. Assuming both parties are in the US, this is the key legislation around domain squatting: https://cyber.harvard.edu/property00/domain/legislation.html . You haven't told us anything about what you do with the domain, but since you registered it quite a bit of time ago I'm assuming it has nothing to do with the company in question that sent you the letter. Look…

Since the OP is running a legitimate business on it I wouldn’t recommend them sitting on the trademark being owned by a competitor, even though I agree with you it sounds like the other party has no legal basis to do anything to them, even if they own the trademark. I am not a lawyer but this exact same thing happened to me and I did consult a lawyer.

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

#235

Post by scosman »

I am not a lawyer, this isn't legal advice. Definitely don't respond yourself, get a qualified lawyer in with track record in startups/domains to write back (and advise). The letterhead goes a long way here in showing you're not trivial to push around. If facts as presented here are truthful, there is a reasonable chance of never hearing from them again.

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

#236

Post by geocrasher »

oliwarner wrote: post #226

> within 3 days Well that's a scam. If they're going to sue you, let them. You literally have prior use of the term and if you have to prove that, you can with comical ease. They know this… which is why this sounds like bullies trying to scare you into giving up a domain they can't afford to pay for. Scary letters are cheap. Write one back asking they reassign their trademark to you? But seriously, probably get paid…

     don't worry about this 3 day nonsense. Nobody works that fast.
This was a red flag for me too. 3 days to take action? It takes longer than that to get anything done these days. They're trying to scare you into compliance. Three days is not enough time to get legal advice from an actual lawyer who is versed in domain name law, and respond.

If you're gonna spend any money with a lawyer, have one write up a "go away or I'll let this go to trial and you can pay my legal fees" letter to send back to them.

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

#237

Post by ThrustVectoring »

There are, roughly speaking, two categories of businesses that receive this letter and differentiate themselves based off their response:

1) "Hobbyists" and the like who are not doing anything particularly valuable with the trademark and domain name. Even if these people can prevail in a lawsuit, the other company is hoping that the owner decides they can't (or won't) risk the time, money, and stress of going through a civil lawsuit.

2) People with valuable businesses whose rights are worth defending. The other company is already pretty sure you're not in this category, since you haven't vigorously defending your naming rights to date.

Overall, you have prior use, and may be able to "win" if it gets to an actual lawsuit. The strength of your legal claim isn't the problem; if you have to spend high-five figures to keep the rights to your hobbyist website, you have already lost. Your goal is to convince these folks to leave you alone on as favorable terms as possible. If your domain name is not particularly valuable and important to you, this likely means A) hiring an attorney, B) using their services to convince the other company that you're in the second category, and then C) selling them your domain name for significantly more than it's worth to you. If your domain name is valuable to you, the only thing that changes is that you may need to pay the stochastic taxes that businesses have to pay to have access to the legal system for dispute resolution, and you might have a hilarious "thank you for informing us of your clients' violation of our trademark rights" demand letter sent back at them.

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

#238

Post by paxys »

tomxor wrote: post #185
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…

>Are you in the same industry and compete with each other? If so, there might be an issue ... > as I was using the name 7+ years before them with a similar product Sounds like they are, but that the issue is in the reverse, they are trying to steal the authors market and product directly by using their name. This is very aggressive, not to mention wrong.

There's really no way to say that with the limited amount of info in the post. There can be two legit businesses in the same space with similar names. This is incredibly common in tech.
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