Domain Name advice - trademark issue

shopper150

shopper150

shopper150

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22 May 2012
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58
I have a domain name (e.g. watches2u.com) which I've help for around 10 years. I haven't really been using it, but I've have had plans to.

Approx 1 year ago, someone registered a the trademark matching the domain (e.g. watches2u) name. They have been trading from a similar domain (e.g. watches-2-u.com). They are now sending me emails asking for me to transfer the domain over to them or they will submit a claim for cybersquatting & trademark infringement.

Can anyone advise how I can deal with this situation? I would like to retain the domain.
 
Sell it to them if you want for a good amount of money if I was you. If you wish to keep it then tell them to do one
 
If I ask for money, does this not put me in a weak position in terms of Cybersquatting?

Also, they have been trading for around 8 years, but only got a trademark around 1 year ago.
 
If you owned the domain before they even started trading they have no rights to it.

Cyber squatting is only illegal if you bought the domain after they started trading in order to profit from them afaik.

If they want it they have to pay for it. Time to work out how much they're worth and set a price.

It's irritating from their perspective but sod them.
 
I would send them an email saying you will double the price for every email they send accusing you of cyber squatting.

Then they can cry when you demand a high price to sell it to them. People who don't get their facts right bug me.
 
Have you monetised the domain by advertising?

Has the domain ever carried ads for the claimant company? Inadvertantly or not.

Are you currently using the domain for anything other than parking it? Email etc.

Where is it hosted UK or USA. Registrar?

They may be able to open an action if you can be held to have used their trademark unfairly or you are just holding on to it and have no prior usage rights to the name.

Explain that you have a substantial investment in the name and are still planning to use it. The problem is that it is very usage specific 'watches to you' and using it without infringing their trademark will be difficult.

Also in my opinion, it does not have any resale value except to an enduser like them. Their trademark also makes it much more difficult to sell.
 
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Have you monetised the domain by advertising?

Has the domain ever carried ads for the claimant company? Inadvertantly or not.
No.

Are you currently using the domain for anything other than parking it? Email etc.
No.

Where is it hosted UK or USA. Registrar?
I have moved it offshore to Far East.

They may be able to open an action if you can be held to have used their trademark unfairly or you are just holding on to it and have no prior usage rights to the name.

I have not used it at all. Can I claim to have used it many years ago? How can they disprove or prove this? I have proof that they are using a slightly different name. How can I record this as proof in case I need to use this in the future as legal proof?

Explain that you have a substantial investment in the name and are still planning to use it. The problem is that it is very usage specific 'watches to you' and using it without infringing their trademark will be difficult.

What if I say that I used it before they registered their trademark?

Also in my opinion, it does not have any resale value except to an enduser like them. Their trademark also makes it much more difficult to sell.

How do I play it to try and sell it to them without looking like I am trying to blackmail them?
 
shopper150 said:
it much more difficult to sell.

How do I play it to try and sell it to them without looking like I am trying to blackmail them?
Click to expand...

it's not blackmail
http://en.wikipedia.org/wiki/List_of_most_expensive_domain_names
This is a list of some of the highest prices paid for domain names as noted in the news and media. The list is limited to domains that sold for more than $3 million.

Insurance.com $35.6 million in 2010[1]
VacationRentals.com $35 million in 2007 [2]
PrivateJet.com $30.1 million in 2012
Internet.com $18 million in 2009
Insure.com $16 million in 2009 [3]
Sex.com for $14 million in November 2010[3][4]
Hotels.com $11 million in 2001
Fund.com 2008 £9.99 million[3]
Porn.com 2007 $9.5 million[3]
Fb.com by Facebook for $8.5 million in November 2010[5]
Business.com for $7.5 million in December 1999[3]
Diamond.com 2006 $7.5 million[3]
Beer.com 2004 $7 million[3]
Click to expand...
if you had the domain name from before they started trading then tell you aren't giving them anything but you may be interested in selling it which is common practice with domain names.

it's only cyber squatting if you register a companies name with the intention of holding it for ransom

if they are a large company try and get a few K if it's a small company try and get upto 1k out of them.

there was someone on here the other week wanting to buy a domain name and I think they offered £1400
 
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In your reply you can invite them to withdraw their threat or sue them for a wrongful threat under the TMA 98. I'd have to check which section. Might be s14 or thereabouts.
 
Rest assured you are not cybersquatting. They have no right to the domain name and obviously they are trying their luck to get you to hand over the domain name to them instead of paying you for it.
Furthermore, I think sending you those e-mails could be considered a crime in itself because:
1-)It looks like they tracked you down to find out that you owned the domain and your e-mail adress and they are sending messages that feed false information and make you feel threatened and harassed. There are crimes called cyberstalking and cyberbullying.
2-)They are trying to deceive you to get something they would normally have to pay for. This could be considered a fraud.
 
Tell them that you have had the domain for x amount of years and you have the proof.

It doesn't matter if you use the domain or not. You've paid/are paying for it and it's yours. I reckon this company are just trying to scare you into giving it over.
 
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