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

They claim as they client registered a trademark two years ago for the name, I must handover my .com domain to them for free, otherwise they will sue me.

For them not to sue me, because they have now registered trademark (even though I had the .com domain and was using it 7+ years before them)

They state from their solicitor that I must do all the following (long letter they sent me but here is the title/headings):

  1. Cessation of Use of the Mark.
  2. Abandonment of Rights
  3. Future Trademark Applications
  4. Transfer of Domain Names
  5. Acknowledgement of Ownership and No Challenge
  6. Mutual Release
  7. Covenant Not to Sue
  8. No Outstanding or Known Future Claims/Causes of Action
  9. Acknowledgment of Settlement
  10. Confidentiality of Agreement
  11. Non-Disparagement
  12. Agreement is Legally Binding
  13. Entire Agreement
  14. New or Different Facts: No Effect
  15. Interpretation
  16. Governing Law and Submission to Jurisdiction
  17. Equitable Relief
  18. Reliance on Own Counsel
  19. Counterparts
  20. Authority to Execute Agreement

  "[Company Name] further demands that you provide, by no later than the close of business Pacific Standard Time on December 15, 2021, written confirmation that you will comply with these demands. You are specifically advised that any failure or delay in complying with these demands will likely compound the damages for which you may be liable. If [Company Name] does not receive a satisfactory and timely response, [Company Name] is prepared to take all steps necessary to protect [Company Name]'s valuable intellectual property rights, without further notice to you.

  The above is not an exhaustive statement of all the relevant facts and law.

  [Company Name] expressly reserves all of its legal and equitable rights and remedies, including the right to seek injunctive relief and recover monetary damages."

If anything I would have thought they should be the ones changing their name, as I was using the name 7+ years before them with a similar product

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 happy to help.

FWIW, some people might mention a procedure called 'UDRP' which is typically used by TM owners to quickly and cheaply get a TM-infringing domain name. However, one of the requirements for a successful UDRP case is that the TM needs to have been issued BEFORE the domain name was registered. Which is not the case here. So a UDRP approach would fail for them.

The other way for them would indeed be to sue and try to claim TM infringement in court. I don't have much experience with TM law, so I'm not sure what your odds of winning are. But there might even be a way to get their TM invalidated.

TL;DR: Talk to a lawyer.

P.S. If they have money for lawyers, they might also have money to buy your domain name. I wouldn't propose a purchase until you've talked to a lawyer (as it could hurt your case), but it's something to consider for later on.