Hi everybody, A friend of mine, also a small time webmaster like me, just informed me that he has an open dispute with a large hotel chain in Israel for a couple of months now. The hotel chain is called Isrotel and operates in Israel. They own both isrotel.co.il as and isrotel.com The guy has been a member of their affiliate network for a while now and found that the domain isrotel.net was not registered. so he registered it and forwarded it along with his affiliate ID to the hotel's main website (isrotel.co.il) in order to take profit of it. He also spent quite some $$$ on advertisement on various sites. Basically he wasn't doing the company any harm, on the contrary, he added to it's reputation by creating campain ads and improving their sales (supposed to, but he didn't make any sale). They "caught" him a couple of weeks later and sent him a letter from their lawyer saying it was illegal and bla bla bla and that he should transfer the domain to their name. He has no problem in transfering the domain if they only paid the registration fees he paid at first as he explained to them. It's been 6 months since the incident, the domain is just sitting there, doing nothing and nobody paid him yet. I suggested that he transfers the domain to a different registrar (it's on godaddy right now) which will provide him with safeguard as to protect his anonymity and try and use it for something else (even a proxy) just to have something on it for the moment. Because as i see it right now, the domain being unsued for so long, they can claim it with any hastle, whereas if it had something on it, it would be a different game. I'm looking forward to reading your posts about it and what he can do. thx
The domain has already been used in a way that infringed upon their trademark. They could sue the owner or file a WIPO action to take the domain. He has no right to ask for any money for the domain, not even registration fees. Transferring the domain to another registrar isn't going to protect him in the end. A court order can get the ownership information. Often a TM owner just wants the infringement to stop and won't proceed further (although they could). The TM may do nothing as long as the domain isn't used in a way that infringes upon their usage. To be honest, it's rather stupid to risk being sued because the TM holder didn't want to pay a lousy $10 or whatever. The name doesn't seem to have any value without the TM association - which can't be used. Just sitting on the domain would seem like a good cause for an cybersquatting action. IMO, just turn over the domain or let it expire. Transferring it is just going to renew the registration for another year, and that might be enough to for the TM holder to start legal action.
Give the domain to the trademark owners and let it go. Given that he has infringed on their trademark for monetary gain they might bother suing you, which you obviously don't want.
i want him to keep it, but he has to return it obviously it's a matter of principle here, pay him back the reg fees. all the time they will waste and expenses, lawyers etc... will cost far more then the domain fees. Seeing he has made no profit from it nor done any damage to their TM he cannot be asked to pay anything. it would be easier and quicker for them to just pay him the reg fees. many companies prefer to pay a small amount of $ instead of being dragged to court for several times which will cost them more.
Which the trademark holder isn't required to do, especially if your friend didn't read his/her affililate agreement with them. Good luck trying to compel them to reimburse your friend's domain registration fee, but your friend really has no founded claims for that. And telling your friend to transfer it to another registrar to possibly evade any possible liability can give the trademark holder more books to throw at him or her. While they might spend money for a legal or administrative action, it's no problem for some if they're also fighting out of principle and can afford it.
He infringed upon their trademark without permission in an attempt to gain a profit. Forget about actual damages, if they sue him, he can be ordered to pay treble their legal fees. Yes, some companies will pay a nominal fee to get a domain back - others will spend vast sums of money on principal just to not pay a nickel to the person who infringed on their name. Does your friend want to take a risk of a costly lawsuit (which they will certainly lose) over $10? They should write it off as a very cheap lesson on trademark infringement.