Here's the simple story. A year ago I bought a domain name of a product and started selling their products through amazon. So I was just redirecting customers to a third party. Let's say the domain name I bought was Sony. So I see that sony.com is available, I buy it and put Sony products up on the site using Amazon affiliate links. I sit a the #2 position in Google for a year with no problem. I get an email yesterday that it looks like papers have been filed claiming I've used the business name in my url 'not in good faith'. They are asking that the domain name be given to them as a result. My question is that since I wasn't trying to do anything but MAKE THEM MONEY FOR A COMMISSION. How could they be entitled to the name, just for the asking? Also, I checked on line with United Stated trademark office and the unites states copyright office and neither show a record of the name being registered in the United States. I only make about $10 per month from amazon with this site on auto pilot, but I don't want to just give it away. I should mention that this company is out of Japan and I suspect they haven't thought to copyright in the states yet. This is probably their first issue like this. They have also hired a lawyer that is emailing me the complaint papers that have been filed and I cannot afford a lawyer so I'm researching this myself. I cannot find a definitive case on file similar to mine by there are thousands. Anyone have an opinion on this?
There is nothing in the Rules for Uniform Domain Name Dispute Resolution Policy that requires that the complaining party have a U.S. registration of its trademark. The Rules only require that the "the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights". And yes, if you lose, you will just have to give the domain to them.
As Business Attorney noted, a U.S. registration of a trademark is not required and, in fact, U.S. law does not require that trademarks be registered either. Registration gives "constructive notice" of the mark being used, and also entitles you to sue for monetary damages, not just cease and desist orders. If it were me, assuming that the complaining party has a valid claim to the domain name, I would contact them and propose that they acquire the name from you for $100 in order to costly prolonged arbitration and to reimburse you for the time and effort you've put into the site. If they counter-offer $50, I would take it. Because if they can show that they are entitled to the name, you will end up giving it to them for free. I went through a similar experience two years ago and gained some familiarity with the process ... I was on the complaining end However you go, good luck.
If you offer to sell the domain to them you will be dropping yourself in it even deeper than you are in already. It will provide conclusive evidence that you are trying to profit from their name. Better to just give them the domain name and be done with. Unless of course you want to spend $xxxx's fighting it and still probably lose.
I agree that with the OP to a point... if you try to negotiate a hefty price, you will not do yourself any favors. On the other hand, if they are going the arbitration route, and not filing suit for trademark infringement, then they just want the domain name. In that case, I would ask for a trivial sum of $50 or maybe $100 just to cover the hassle of having registered the domain, having to release it, When I was on the complaining end of a domain name dispute, if they had offered to sell me the disputed domain for $100 or less, I would have paid it. If they had asked for much more than that, I would've said no and gone to arbitration. Regardless, in the end, if they have a valid claim, as the previous poster stated, you will have to give them the name anyway.
I must say, you have to be a little bit diplomatic this time. Ask more about them their claim, and just tell them what you were doing with this domain, and how it is beneficial for you and that company. and just tell them that you can understand their claims and you don't have any bad intentions with this domain name. and tell them that you are ready for a settlement if they want to do so. and wait for their reply and never jump in to any quick decisions. let's see what is their take in this. I think fixing a price from your side can be done as a last resort.
@writer3 You obviously do not get it do you? If the OP tries to sell them the domain for any amount it will provide proof that the OP is trying to profit from the company name and it will be more ammunition in the favour of the company to prove their case.
You've used a trademarked name in commerce - it really shouldn't be a surprise that this happened. It could have happened on day two of your affiliate site's life, but it took them this long to catch you.
Yes, I do get it: (a) a token administrative fee is not "profiteering"; (b) *if* the name is a valid mark, then by selling the product through Amazon for a year, he is already in such a deep hole, requesting a token amount won't make it any worse; (c) the complainant will spend at minimum $3500 in arbitration fees, plus their own labor and paperwork, and those fees won't be recovered even if they win; (d) the OP is going to lose the case anyway; (e) he will end up surrendering the name anyway; (f) admittedly, the most expedient solution is for the OP to say, "I'm dumb, I'm sorry, I meant no harm, here's your domain name, goodbye." Different solutions work for different people with different skill sets. The fact that I could carry on the required legal correspondence with finesse and would get my $50-100 does not mean that the OP would be able to do it (and considering his actions, it's safe to say he could not). So, his best course of action is the expedient one: "I'm dumb, I'm sorry, I meant no harm, here's your domain name, goodbye."
This is a very good thread as I have these questions in my mind too. I like car racing and and sometime in late 90's Formula1.com is owned by an individual who filled his website with F1 cars and F1 news. It also say on his banner that it is the Unofficial Formula 1 website. He owned the domain for a few years back then. Then out of a blue, Formula1 or F1 (the organization) dispute the domain name and asked him to give it to them. He didn't and fight them but in the end I think F1 bought the domain from him maybe for a good amount of money. Now my questions are these: If he got it first and he filled it with pics of F1 cars and F1 news and F1 articles but also say that its not the official F1 website, was he doing something illegal? Isn't domain is about getting it there first? Are we at fault that a company as big as Sony didn't register the domain Sony? What if I got to Sony.com first and make it my personal website because my nickname is Sony, can they take it away from me?
> If he got it first and he filled it with pics of F1 cars and F1 news and F1 articles but also say that its not the official F1 website, was he doing something illegal? Yes. Trademark infringement, cybersquatting, and possibly false advertising at the federal level, and depending on the state where the complaining party is located, a raft of violations on the state level as well, such as state trademark infringement, unfair competition, and unfair business practices, to name a few. > Isn't domain is about getting it there first? No. The "first to use" rule does apply to trademarks; however the first to register a website means nothing if the domain name has trademark protection. In that case, the "first to use" (if not the lawful owner of the mark) is simply the first to be sued. > Are we at fault that a company as big as Sony didn't register the domain Sony? Yes, you would be at fault. That's like asking if you can blamed for stealing a television from my livingroom because you noticed the window was open. It would be good business sense for Sony to register its own domain name, at least in the major TLDs such as .com and .net, but there is absolutely no requirement for them to do so. They can do it later, if they wish, or not at all. Regardless, no one else can lawfully register or use the name. The simple fact that they own the trademark gives them an automatic claim to every variant of that domain name, yesterday, today, and for as far into the future as they own that mark. > What if I got to Sony.com first and make it my personal website because my nickname is Sony, can they take it away from me? Yes. It is their trademark. The only possibly hope you *might* have of keeping the name is if your own last name was Sony. Even then, I have seen domains be taken away and given to the vusiness trademark owner. No.