Hello, I recently bought a dropped domain. The name turns out to be trademarked and the trademark owner is saying they are the rightful owner and they want the domain transferred to them. My question is "are they likely to win if this goes to tribunal"? Now I understand that you cannot give legal advice without details... I am going to give some details, and I just need an "opinion". Thank you: 1/ I am not using the website to relate in any way to the trademark; the content is not in the same niche (somehow related niches but different (totally different players)); in fact I use this domain for SEO, and not for the trademark at all. 2/ The previous owner of the domain is the owner of the trademark. In other words they neither renewed the domain nor maintained a proper website, but now that I have secured the domain, they want it back. 3/ For the record, the website is currently just one page of content in my niche (not their niche). These niches are close but different. Thanks a lot
My opinion is you are onto a loser with this one. All they need do is file with WIPO and the domain will become theirs anyway, most likely. I would offer to give it back to them so long as they cover the costs you incurred buying it with maybe a small admin fee on the top for the work involved signing it back over to them.
I thought this falls under UDRP, not WIPO. Also I thought it is a question of good or bad faith, and I explained that I acted in "good faith".
Yes, sorry, UDRP most likely. I don't think bad faith or good faith will come into it. Looks like the domain owner just forgot to renew and since they own the Trademark...
Really, so how come this is point #3 in UDRP guidelines? Really, so what kind of business is that if they do not maintain their main website? Looks like "reverse domain hijacking", don't you think?
I can only offer my opinion and that's what I think. Someone may be on later who has a different outlook on the matter.
It is going to boil down to your use of the domain name. Without knowing the domain name and your use it is hard to give a proper answer. As an example, suppose you picked up apple.com in the same way. If you are using the site to sell your orchard's apples I doubt that you would have a problem. However, if you are using the site to sell any type of electronics, you would have a problem.
Hi Andrew, My site does not sell anything. It is in a different niche, say for example children movies versus science fiction movies.
What you consider "bad faith" isn't the same as the legal definition. It sounds like your usage is similar enough to be considered trademark infringement (assuming the name can be a trademark). If they are using the domain for science fiction movies and you are using it for children movies, it's still infringement. It would appear you have already used the domain in a manner that infringes upon their usage so the damage is already done. They can file a UDRP and/or sue you in court. If they sue you, the legal fees will be huge (tens of thousands of dollars or more) and you won't recover those even if you win. If they have a registered mark and win, you could be ordered to pay treble their legal costs. If you want to keep the domain, have an IP attorney that specializes in domains review the domain name and advise you on your options. It's impossible to guess with unknown domain names.
Ok, 1/ Maybe my niche example was bad. These are REALLY DIFFERENT niches and players are NOT the same. Let's me give you a better example (this is JUST an example, not my real niche: movies versus porn movies). 2/ my site DOES NOT sell anything and does NOT make any mention to their trademark. 3/ Good faith means (for me and hopefully for the law) that I purchased this domain with no intention to refer in any way to their trademark. 4/ Can they make me pay a huge fee if my website is just one page that does refer in any way to their TM?
1/ Maybe my niche example was bad. These are REALLY DIFFERENT niches and players are NOT the same. Let's me give you a better example (this is JUST an example, not my real niche: movies versus porn movies). They both have something to do with movies - It's still infringement. 2/ my site DOES NOT sell anything and does NOT make any mention to their trademark. Can still be infringement. 3/ Good faith means (for me and hopefully for the law) that I purchased this domain with no intention to refer in any way to their trademark. Your "intention" doesn't matter. That's not what they are talking about. You started using the domain AFTER they had already established their site. It was your responsibility to check for infringement BEFORE you purchased and started using the domain. 4/ Can they make me pay a huge fee if my website is just one page that does refer in any way to their TM? It doesn't matter that it is only one page - the domain name alone (along with usage) is enough. Forget about damages, the legal fees can easily run hundreds of thousands of dollars if it goes to court. Yes, you can be ordered to pay these, but your own attorney fees alone would be huge. Even if you don't have the money to pay, judgments can follow you for life.