
Ask HN: Domain Dispute - nikolay
I have a domain since 2005 with solid plans to use for a venture. But, like most of us, we have day jobs, families, and many ideas; not just one.<p>Suddenly, one loan shark registered `${name}capital.com` domain, the `${name} Capital` trademark, and, also, the pretty broad term of `${name}` as a trademark as well, and I missed the deadline to appeal the trademark as, obviously, I don&#x27;t actively monitor the USPTO publishing, nor I pay dearly for trademark monitoring services and the like.<p>Before applying for the trademark, he asked me if I have the domain for sale, but I did not reply. He later texted me asking if I&#x27;d take $200 bucks for it, and I replied that I have plans for the domain.<p>Today, he&#x27;s sending threats that he&#x27;ll file a UDRP against me.<p>Can you, please, advice?<p>Edit: The trademark is registered for financial services and I have no plans to use the domain for that.<p>Edit 2: According to the responses so far, the advice is: Don&#x27;t buy any domain you&#x27;re not having a trademark on. And I can&#x27;t agree with it! We all have many domains we want to use for future ventures.
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ankitaggarwal
The domain in question is sitting unused for past 11 years. Although,
trademark is recent and you are holding the domain from very long time law
should favour you. But because it is just sitting there without any use will
make things complicated.

What I can understand from the facts you posted is they made a fair offer.
They are is need of domain name and you are not using it at all. 11 years is a
very long time and you are, willingly or unwillingly, blocking it for others.
It will be good you not take this this to court and negotiate on a fair price.

Another alternative is, register the trademark in another category. In my
country, there are 40 trademark categories. So making registration in any
valid category should give you shield to protect the name.

~~~
tmaly
Do you know of any cases where a person was using a domain and someone grabbed
the trademark and tried to take the domain?

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Gustomaximus
1) If he's only willing to offer $200 I'd seriously doubt he'd lawyer up. Any
rational person would offer the lawyer/time cost first if they were serious to
try and avoid it.

2) Could you transfer the name to another holder/company if they apply?
According to ICANN " disputes must be resolved by agreement, court action, or
arbitration before a registrar will cancel, suspend, or transfer a domain
name." If they lodge a complaint sell it to a friend/company structure for $1
and suddenly they are chasing the wrong person. You can tell them you dont own
it and to stop harassing you. Rinse, repeat.

3) u/ankitaggarwal had what seemed the good suggestion of registering a
trademark in another category.

4) Tell him your price. Consider a new domain/name if price is met.

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wmf
It is possible to win a UDRP case but I don't know if it's worth it. The
following cases come to mind:

[http://domainnamewire.com/2007/02/07/mgm-loses-bid-for-
warga...](http://domainnamewire.com/2007/02/07/mgm-loses-bid-for-wargamescom/)

[http://www.finnegan.com/publications/updatenewsletters/pubde...](http://www.finnegan.com/publications/updatenewsletters/pubdetail.aspx?pub=08588bc7-bcdf-4512-a443-9885be95eabd)

~~~
nikolay
Yes, it is possible, but the above are slightly different cases. And, yes,
it's not going to be easy, but should we let the crooks win? Because this is
not about somebody liking a domain name and willing to buy it - this is about
someone liking the name and feeling entitled to get it for free. I am
surprised that now two hackers are advising just to give up.

~~~
notahacker
See it the other way round. It costs him $1.5k plus lawyers' fees to bring it
to court, and the burden of proof is on him to prove you registered it in bad
faith or are using it in a manner likely to benefit from confusion with his
trademark. He probably wouldn't win even against a letter drafted by you that
simply states that you registered the domain prior on $DATE prior to his
registering the trademark, your development plans for the domain involve are
in $INDUSTRY and there is no realistic expectation of confusion with his newly
registered service mark. So you can probably interpret the threat as a bluff,
and if he actually did follow through with it, it would cost him a lot more
than the $200 he's offered so far.

That said there's probably little reason for you to turn down a less
insubstantial offer for a name which generates you no revenue and presumably
isn't integral to your development idea if you ever choose to pursue it.

I'd have thought that calling his bluff was the right response, along the
lines of "I registered the domain X years prior to your decision to adopt a
variant of that name for your own purposes. My development plans for this
domain in $industry do not involve financial services in any way and thus no
possibility of confusion with your financial services firm exists. Any move on
your part to pursue this via UDRP would therefore almost certainly be a waste
of your money and time. I have invested my own money and time in the domain
and my development project for it, and have no intention of changing my
business plans unless it is financially worthwhile for me to do so."

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nedwin
Setup a site on the domain name and start using it (static site, some content,
a contact detail, explanation of the service you're providing that doesn't
relate to financial institution). Sit back and watch this guys head explode.

If it's not confusing with whatever service he's got you should be safe but
IANAL.

Finally I rarely worry when someone threatens me. Serious people don't
threaten - they act.

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nprescott
You'll have to talk to a lawyer for legal advice; You could do it preemptively
or just wait. To properly pursue a UDRP they'll have to file a complaint in
court, at which point you'll need a lawyer anyhow.

Personal opinion - is it really worth the hassle? You've not launched anything
in 11 years, why not just set a fair price and re-brand your un-launched
venture?

~~~
nikolay
What this guy does is not right. Yes, we can let crooks and sharks get what
they want, but should we?

This is a daylight robbery. A trademark != domain name. You know the Dove
trademark being used for both confectionery, and cosmetics, and there's no
confusion in the marketplace even with such widely popular brand - how can
there be an issue with som awkward loan shark company?

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joshmn
You might want to post on NamePros or WebHostingTalk — there are many more
experts there who deal with this kind of stuff and see it every day.

[https://www.namepros.com/](https://www.namepros.com/)

[https://www.webhostingtalk.com/](https://www.webhostingtalk.com/)

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URSpider94
IANAL, but it sounds like his case would be very weak. You clearly had the
domain name before he filed for the trademark, you have not been actively
trying to extort money from the trademark owner (you've not responded to his
requests to buy it), and you're not trying to export customer confusion to his
name.

If you really care about this, hire a lawyer.

If you care a little bit, but not enough to pay someone, then it would make
sense to put something on the site to make it clear that you're using the
domain name for something productive that is non-competitive with the
trademark registration. As you correctly point out, trademarks are for
business domains (or geographic domains, but that seems really quaint these
days, right?) so a legit use outside his trademark domain would mean his
complaint was null and void.

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nikolay
On a side note: I talked to ICANN and, to my surprise, they really answer the
phone now, and try to provide help. A couple of years ago I reported a domain
registrar that didn't offer any mean to pay for a domain renewal, and they
told me that they don't deal with customer support issues.

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tmaly
You got me thinking. I have owned a website name since 2003, and I put up a
website a couple years back. So I have been actively using the name.

I just checked and someone registered the trademark in May 2016 for `${name}`
since I own the .com I am wondering what sort of issues I will get into.

It seems there is a board you can petition to have a trademark cancelled. I
wonder under what circumstances a trademark would be cancelled.

[http://www.uspto.gov/trademarks-application-
process/appealin...](http://www.uspto.gov/trademarks-application-
process/appealing-trademark-decisions/trademark-trial-and-appeal-board-ttab)

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Esau
OP: the guy who is trying to take your domain name needs to eat a bag of
dicks. I could, maybe, see him having a valid case if the trademark predated
your domain name but given the chain of events you related, I have no sympathy
for him.

People need to realize that having a trademark isn't a license to fuck people
over.

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GFischer
If you're not using it, I think you should sell it to him. It will be easier
on both of you.

You probably don't want to go through the hassle of a legal fight, and if he's
correctly advised, neither does he (especially since he has a nontrivial
chance of losing).

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supersan
Just setup a wordpress blog and fill it with aggregated data remotely related
to the domain name. Since you've had it from before, you have the upper hand.

Read about Nissan's domain name. If a company that powerful couldn't get their
hands on it, you shouldn't be worried.

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seanwilson
I don't understand why you want to keep it...if you haven't used it for 11
years are you realistically ever going to? Sounds like you should just sell it
to be honest and avoid the hassle.

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bbcbasic
Wot? Is the SOS emoji a new precedent for HN? Any question where you are in
trouble to be marked as SOS?

~~~
nikolay
I am not the first one using them, but they help grab the attention. I'm sure
they will be filtered out pretty soon!

~~~
sctb
We've removed it from this title.

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ddccbbaa
Maybe do something with it immediately? Something totally unrelated to the
trademark owner's business.

I think if you do some research on this i.e. read some UDRP decisions you may
find that if you have it parked and it's showing ads that relate to the
trademark owner's business then you may be at risk of losing in UDRP. But I
could be wrong.

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sssbulldog
#1 Do not entertain any offer. Flatly refuse or just don't reply.

Entertaining an offer can have consequences...just don't.

#2 Put up a simple page "Coming soon" that is clearly nothing to do with
financial services...put up a blog...

