Macysbucks.com legal issue... threatened with lawsuit

Alright, my dad has been into regestering domain names, he has never really done anything with them as he has no design experience or anything.

A while back he registered a bunch of domain names for major retailors ie Searsbucks.com, walmartbucks.com, costcobucks.com with the idea that he could sell them to someone who would want to create a coupon system for use at the places in question where they could see current coupons, print them and take them in...something to that effect I think..

well one of them he has registered is Macysbucks.com, apparently they must have tried to register it in the last few weeks because he was contacted by a lawyer and threatened with a lawsuit, Im not sure of the whole story as he didnt tell me the nitty gritty details, but he said something about they were threatening to sue him for 100 K or something like that..

Now my question is, can they even do that?

He has not I REPEAT has not developed the site, its just a parked domain. Likewise for all of the other ones. My advice to him thus far is that they are pretty much trying to strong arm him into turning a valuable domain over to them. I told him instead of being submissive, pose a counter offer to them, tell them hey, you throw me $20,000 for the domain and its yours...Im sure it will cost you more in legal fees to try to sue me etc.. (and he has a team of lawyers as he is an entrepreneur so hes not a newbie in the lawsuit front, hes been sued before for other things, but no one has one a case yet except small claims slip and fall type stuff which is pretty much going to happen at some point when you run a few businesses)


was my advice valid?

what should I tell him to do?

Thanks!

 

You gave your dad very bad advice.

The registration of the domains of famous trademarks is cybersquatting, and yes, the $100K per domain is a valid amount. He could also be subject to a lawsuit and asking for any type of payment from the trademark holder helps them prove "bad faith". Many deep pockets will spend a hundreds of thousands of dollars before paying out a penny. You are dealing with federally registered trademarks - when they win (and you have no real defense), they are eligible for treble their attorney fees. You are talking about six figures your dad would owe, before any damages.

The domains are not valuable - they are worthless because of the trademarks and legal issues.

Turn over the domains immediately and take a minor loss of registration fees. If they sued you, you would be looking at vast sums of money to defend yourself in court.

 

These may be of interest to you and your dad:

http://www.chillingeffects.org/domain/faq.cgi#QID224

http://www.keytlaw.com/urls/udrp.htm#What is the Surest Way

 

Why would you give him advice if you have to ask others whether it was right? Isn't that a bit irresponsible?

Like the other posters have said, it is trademark violation and your dad is really already liable for it. The trademark owner is being nice by offering him the ability to just turn the name over to the owner. He should also avoid renewing the other domains he has which violate other companies' trademarks.

Of course, before taking any of these steps, your dad should immediately contact a lawyer skilled in intellectual property law to see if they are able to work out a settlement agreement that protects the rightful owner of the trademark from suing him anyway, and to give him any other relevant legal advice.

 

Alright sweet... I mean the advice I gave him was open-ended... We both left the convo like "alright let me check with my peoples to see what we should do about this" so it wasnt like he was taking my advice as the end-all etc...Just getting my opinion, initially he wanted to know whether I had developed any of the domains (which I didnt due to that "uh-oh" feeling when I was offered...)

Alright thank you very much for your feedback, I will definitely call him right away...

Thank you!!

 

It is the offer to sell it to them that is the very bad idea. Do not offer to sell it to them for a high price - that is evidence of bad faith.

 

I just called him, hes under the mentality of just calling up networks solutions and having them unregister it or something, I dont know if thats even possible but he is working on it this afternoon to see what the best course of action will be...

Yeah that was my bad on the selling it thing (I was misinformed...new to this whole shebang)

 

If the domain name's been registered for more than five days, your dad won't
get his money back. If anything, Network Solutions can at least delete it.

 

I'd walk away from the domain .... and, especially for 'investment' domains, start registering/renewing your other domains at a cheaper $10 registrar instead of NetworkSolutions @ $35 each.

 

Yeah thats probably what he will do I think he has had some of them registered for YEARS

 

I think my dad is on some premium account where they are $8 each for however many he registers... I agree though.. thats why I went with Hostgator... I think its since he has been with them since they were a startup they have always given him good pricing

 

Ok, well I do not want to disagree with anyone here, You can not try to say I want $XXXX for it, but Like ive done many times, is you offer the lawyer something like a finders fee for transfer of domain ownership in the amount of say $500 is a fair amount they should pay and there will be no issues what so ever, Your not buying the domain and trying to get a crazy amount, Ive had more then 5 major retail chains that are in forbes, that there law firms contacted me in the same way. So just send an email with stating you were going to make a blog with the domain. They do not own the name right of MacysBucks, And there is many girls names out there named MACY, so it would be very hard for them to prove much of anything, And it would not even go that far,

Just try to get a few hundred from them for your time, But dont ask for anything above hundreds,

 

True that... My Dad may have had it deleted already, but we shall see..

 

Where does the trademark come in? macysbucks.com. Ok my name is Macy and last name is Bucks? They registered MACY, not MACYBUCKS! Can they really take this domain? That is like saying Im going to take your domain because it has the word forum in it and my company name is forum. Is the world really coming to crazy stuff like this?

 

Im no expert in internet law, but if my dad has not deleted it already I will pose this new information on him and see what he wants to do. I think the best thing would be to take it to his lawyers and see what they can do, they know the law better than either of use does.

 

Tell your dad to tell them Macybucks is his online persona and it has nothing to do with Macy the store.

 

yeah but still then, what would he do with the domain having intended to make it for macys coupons?

 

Well if the site doesn't say its for macy coupons then you will most likely be ok. I would just put a wordpress blog up about being "macy bucks" and tell macy to piss off. Then just let the domain die or give it up. But I would make them work for it. So let it drop!

 

lol I like this.. being of celtic blood I was born a warrior

 

So I guess we should contact all the "Mac" and "Apple" forums & Sites out there, like MacRumors, MacMall, Mac-Forums, InsanelyMac, etc since Apple (who is lawsuit happy) can sue them and take away the domains.

The Macy domain would come into play based upon the INTENT of it's use. If you want to put up a site to talk about puppy dogs and use the name, then its your right to use it and Macys has no case against it.

If you are using the domain to point to Macys, be an affiliate of Macys, pretend to be Macys, or anything similar then they WOULD have a case against your father.

These lawyers just threaten to sue knowing it will scare you into giving the domain up for nothing. It works. However, there have been many cases of people (who had money to defend) defending their rights to use the names.

He could have simple stated he was going to use the domain to setup a forum about deer hunting, and if they were interested in it to make an reasonable offer.

Here is a fine example:

http://nissan.com/

Nissan sued this guy years ago. They STILL don't have the domain and he still owns it. You can't get any clearer than the exact name of the company.

Most affiliate programs have in their TOS you can't use trademarked names, but that doesn't make it a law.