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UDRP claim: Do I have a good case?

Discussion in 'Domain Names' started by Adrian Simmons, Sep 11, 2016.

  1. #1
    So here is the case:

    - I incorporated a startup back in May (Delaware Corp)
    - The name is not in the English dictionary (8 characters long) and not descriptive or common at all.
    - There were no trademarks of any kind (in any category) associated with the name.
    - We have been using the name for more than 6 months in interstate commerce, so we have common-law trademark and recently filed the paperwork for federal protection (very likely we will get it)

    The problem is, the .com extension of the domain was taken (we have all other major extensions) and I thought I could buy it from the guy for a reasonable price. Turns out he is some low-level domain shark in St. Korea (with about 100 domains to his name) and after contacting him, he wants an unreasonable sum of money to transfer it!

    Here is my question - Do we have a good case to make a UDRP claim given that we satisfy the 3 criteria below?
    1. We have common-law trademark (and will soon be federally registered) on the name
    2. The other guy has no legitimate use for the domain as he is not using it to sell any goods or services. The webpage just says the domain is for sale and has a referral email.
    3. There is evidence of bad faith in both registration and use. Although he has the domain registered 1yr before our trademark, the only purpose seems to be to sell it on for orders of magnitude larger than his "out of pocket expenses". We approached him for a quote and countered his ridiculous offer with a good chunk of money to which he just replied "no thanks".
    Should we file a UDRP claim? Should we do it right away or wait until we have the registration for the trademark? What else can we do otherwise?
    Adrian Simmons, Sep 11, 2016 IP
  2. sweetpea69

    sweetpea69 Active Member

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    Let me play devil's advocate here, so you can look at this from the outside/another perspective.

    Frankly, don't expect any sort of educated guess/answer, without providing the particular domain in question. While it's smart you didn't, it's a disservice to an educated answer.

    "You thought you could buy it"

    There's your problem. You "thought". You came up with a creative name you liked, registered all the extensions, went on building your business, and assumed the .com will be around for when you decide to pursue it. 9 out of 10 times, (online) business owners make this mistake. A costly one.

    A word of warning, don't ever bad mouth someone publicly (deserving or not), on a forum that's indexed, especially when it comes to digital goods. Because information will be compiled from any pertinent material found online. From the sounds of it, you have no idea why he/she registered the domain. A "sense of entitlement" is character killing. And 100 domains, while a lot to some (and can be incriminating in itself), is a drop in the bucket to others (portfolios of 10's of 1000's). I always say you should be happy a private owner has it, opposed to a corporation, because you'll never get your damn hands on it otherwise.

    So the owner is currently parking the domain. Are there any advertisements on it? If you use adblock, turn it off, and clear your cookies. What's being advertised?

    Is his/her use of the domain, really damning to your business? I'm talking right in-line with accumulating value from the sweat of your hard work?

    Did you let the owner know you have a business built on another extension? As in, now he holds the cards so you'll need to ante up. Equates to more traffic, clicks, etc., to the domain. Value has now gone up.

    I'm assuming your offer was greater than/equal to to the forecast-ed expenses of taking legal action? $X,XXX. As at this point in the game, that'd be the fair offer to start mitigate the uphill battle.

    "Out of pocket expenses" - is frankly BS. What most fail to understand, is that buying a domain can actually take a great deal of time, and resources beyond just the $ costs. Just because the owner paid $xx, doesn't necessarily mean the market values it at that cost. While that can be hearsay, it's something to consider when making a "fair" offer.

    I've been on both sides of this in the past, and most have been in the same situation as yourself albeit; most not contemplating/pursuing legal action.

    There's such a thing as "Reverse Domain Hijacking". A term/instance you should familiarize yourself with.

    I'd take a step back, and evaluate the situation for what it is. You're working your butt off, going through all the legal hoops to build out a full fledged business, but somebody got in your way first. And now you feel entitled to what they have and frustrated they're unwilling to sell.

    Don't stir the bucket. Collect more info on the owner in question. Online business? Other domains? Their uses?, etc. and then decide. Because this sounds like a classic case of reverse domain hijacking or more lightly, a sense of entitlement, granted, there's so many unknowns and gray areas in this, udrp decisions (that aren't so "uniform"), etc., that who's to really know.

    One last bit of advice. Don't cloud your judgement, per the domain. Maybe you'll never get your hands on that particular .com domain, but can you brainstorm any shorter domains that would work?

    For instance, DelawareCorp.com. Well the .com may not be available to purchase, but maybe DelCorp.com. Which imo, would be the better of the 2. Migrate your site over, issue resolved (for the time being).
    sweetpea69, Sep 12, 2016 IP
    Arick unirow likes this.