Trademark Domain Name - they want it back. What Do I Do?

hello,

i guess i owned a domain name that a company suddenly says they own the trademark name. it was registered on godaddy and i never did anything with it and it just had the standard godaddy parked page. I don't plan on doing anything with it so i have no need for it anyways.

i wanted your suggestion on what i should do.

should i...

a. just drop the domain from my account completely (how long does it take the WHOIS to update?) and hope they leave me alone (i was served papers already)

b. talk to them to see how they want to transfer the domain to them? but the problem i came across is that i can't transfer within 60 days and that won't be for another 2 weeks or so. think they'll care?

 

Firstly, check & make sure the name is TMed, have you checked?

If it is, then you can do a free push to their account, you don't need to wait 60 days, that's for transfers to other registrars.

 

Don't panic. I've seen some people claim to own the Trademark for a domain and try to frighten a domain owner into signing the domain over to them, when in fact, they do not own any such Trademark or have merely filed a (spurious) claim for a Trademark and are unlikely to ever have it granted. So before you even consider signing it over make certain there is a legitimate Trademark in existence.

Additionally, you are under NO OBLIGATION to transfer the domain as you are not using it for any purpose, therefore, even if a Trademark is in existence you cannot possibly be infringing.

It would help to know the domain and also what Trademark they other party claims is being infringed.

 

Go to USPTO.gov and check their name, see if it's a registered trademark. click the links on the (long) menu to the left to find the search.

If it's not registered and LIVE with the US PTO then they don't have a claim against you unless you are in the same state as them, and they have it registered with your STATE.

smileydog

 

Uh...mcfox, I'm having trouble following that conclusion.

Philadelphia requires a dog to be licensed. If it's not, does that mean you cannot
possibly be bitten in the behind by it?

In case it's forgotten, trademarks don't have to be registered (although it has
more benefits if they are). If the party in question is able to demonstrate TM
rights, more so if the domain name is showing hints of infringing it, then one
can still be in hot water.

Chodomade, a pair of questions to give you a starting point:

1. Are you able to verify their trademark claims?

2. Did the domain name's parking page show ads to competing products of that
trademark, if so?

If yes to both questions, then you can either give the domain name to them,
or have it deleted but no refund. No guarantees they won't do anything after
that to you, though.

 

1. i verified their trademark. so it's legit.
2. the domain parked page is the standard godaddy parking page.

i would rather just drop the domain from my account but i don't want to piss them off b/c if i do that, they're not able to register it for like 90 days and then it goes into some kind of redemption period where it is auctioned off (that's what godaddy support says).

so i might try to contact them to see if they want me to just push it to them for free on godaddy (godaddy account is free to setup so that shouldn't be too hard for them). but can i still transfer within godaddy if the domain was registered within 60 days still (remember i read that u can't transfer for at least 60 days after you registered it).

 

Why don't you atleast ask for your registration fee? In return you will spend the time to push it to their account, otherwise tell them you will simply delete the name.

You can still push the domain to another godaddy account within the 60 day period. You just can't switch registrars. If by some chance you can't push the domain, offer to point it to their nameservers till you can.

 

thanks for the info.

i'm just a regular guy and they're a fortune500 company and i got served papers from their law firm. it's already hard enough to just get thro the daily stuff i need to do so i don't want to deal with this problem so i'd rather fix it asap than try to get a few dollars back.

i guess my other question would be...how likely would it be that after i just give them the domain, they would try to get back some kind of lawyer fee from me. cause that would probably be devastating for me.

 

Dont panic... just tell them that you didnt know that it was a trademarked word and that you had some plan to make a website relating to that term and Check if they can give you some money.. or ask for atleast the cost price and then move it to their account.

I think they would also want to finish with the process asap.

Ani

 

thanks for the info.

i did look through the paperwork and there are 3 things they want..

1. immediate transfer of domain to them - Ok!
2. removal of all changes/edits i made to the domain immediately - Ok! since i never touched it after i registered it and it was the standard godaddy page.
3. refrain from future registering of their trademark name. - OK! going to avoid them forever.

i sent them an email and hopefully everything will work out.

 

In your original post you did not mention you got served papers.

Best to just comply. Once you do, you probably won't hear from them again.

Direct the domain to a blank page if you have not done so already. Parked pages generate revenue, so one could say that you are using their brand to earn money from parking.

Good luck

 

Yes he did.

 

see it in the () thanks for pointing that out. Time to ask for a refund for these contacts.

 

How much does it cost to TM a domain name?

 

You should read this: http://thomas.loc.gov/cgi-bin/query/z?c106:S.1255.IS:

I've had a similar situation, and I wouldn't worry about legal repercussions too much. In fact I'll offer an anecdote. Last year I registered the domain name VineyardVines.net. Vineyard Vines is a clothing company that I in fact like very much! Well, after registering the name I contacted them and said, do you want this name? Almost immediately I was served papers from their attorney, and almost as immediately I dropped the name, and never heard from them again. You might be interested to know that they never even registered the name after I dropped it! In fact, GoDaddy maintained possession of the domain, and now offers it as one of their 'Premium Domains' (http://www.godaddy.com/gdshop/regis...check=vineyardvines.net&ci=10058&checkavail=1)
For $650! Funny how things work out. Best of luck,

Jorgy

 

It is not the domain name that was being trademarked but the company name itself. I think what you should do is at least ask for money, lol. They are lucky that you're the one who got the name, and you are very willing to surrender it. They should be kind to you.

You shouldn't have asked them the question and kept the domain to yourself. You made them think that you were up for the money.

 

funny thing is..they were sending me emails to an account i never check. a week before their emails started...i got 2 requests to sell the domain from people who were interested. sigh...that's what happens when you don't check your email often.

i would just like to drop the name but it'll go into godaddy's limbo status for like 90 days and don't want to piss them off if that happens and have them find ways to stick it to me.

no response yet from their lawyer. hope it didn't go into their spam folder. haha.

thanks for the advices so far.

 

That would make another paper for you, baby boy. Lmao.

 

Just ask them their price and that you wanted to make it into some personal page that has nothing to do with them. But if they become desperate, THEY WILL OFFER you something, JUST WAIT!!! or until you get served

 

I've been in the same situation... I got an email from a law firm that represented a big organization. I simply dropped the domain and moved on.