Help: Domain Trademark Issues

by Maddmula

Posted: 13 years ago 17 replies

INTERNET MARKETING

Hey Warriors,

Right now I am in a position where I own a semi valuable domain that a company want's from me. To be safe, I will use a hypothetical example of my case, in hope you can share some insight on what I should do. I don't feel it is a big enough case to contact an attorney, but I am interested in what you guys have to say.

After you read the example, my question is what can I get from this domain? They said they will give me products (their products are worth over $120 and plus heaving shipping will be an extra $50) I don't want their products, but would it be reasonable/legal to ask for $150 or more? Do I have the position to do so?

Example:

There is a small established business called Dog Training. I love their products, and end up wanting to be an affiliate for them. I then buy the domain DogObedienceTraining.com because it is the second best possible domain after DogTraining.com . In the approval application, I give a very enthusiastic message on how much I love their products etc. and would like to be an affiliate for them by creating a WP website etc.

A little after I get approved, and everything's working well. 10 min. later I come back to see that I was suspended from the offer. Briefly after, I get an email from the VP of the company Dog Training.

In a summary the email read:

Hello,

We are very appreciated of your enthusiasm towards Dog Training. But we are not comfortable approving the domain DogObedienceTraining.com . We are worried that your WP website will cause confusion to consumers related to our trademark and brand.

Before you owned the domain DogObedienceTraining.com a company owned it. Our Trademark Attorneys asked to give us the domain. They declined, and supposedly it lapsed, and you ended up with the domain before we found out it was available.

We would like the domain back, will pay for the domains expenses, and give you some products.

Thanks!

#domain #issues #trademark

Gail_Curran

13 years ago

Don't be greedy. Accept the company's offer, stay on good terms with them, buy another domain to sell their products, get approved, make lots of money.

A little generosity of spirit can go a long ways.

Thanks
1 reply

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Maddmula

13 years ago

Originally Posted by Gail_Curran

Don't be greedy. Accept the company's offer, stay on good terms with them, buy another domain to sell their products, get approved, make lots of money.

A little generosity of spirit can go a long ways.

Thanks for the reply, I just thought that if the product, shipping, and time added up to over $150 - it would save them time, I would be more happy, if I just got a simple PayPal payment. I will probably end up just giving it to them, but I was interested even for the future what legal position i would be in. Thanks again!

Thanks
1 reply

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Kay King

13 years ago

If you want to know legality - talk to a lawyer.

If the domain IS a trademarked name and you are using it to sell the products of the trademark holder - take the offer and move on.

Trying to negotiate for more cash could be viewed as domain squatting - and you don't want to go there.

kay

Thanks
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Maddmula

13 years ago

Originally Posted by Kay King

Definition for Cybersquatting : registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price.

This seems close to my issue except it's a slightly different story. I bought the domain intentionally for the purpose of promoting their product NOT to automatically ask the company for money. I had no idea that it was worth something to the company until they came to me. I bought the domain a day ago, and have not used it to promote any of their products.

You might be right that my actions would fall under Cybersquatting but I feel my situation is a little bit different. Thanks

Thanks
1 reply

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Jill Carpenter 13 years ago

Originally Posted by Maddmula

I bought the domain intentionally for the purpose of promoting their product NOT to automatically ask the company for money.

Yes, but if the name is the full name they own, it makes you look like a part owner of the company in question and more than just an affiliate.

This company does not know enough about you and your possible long term intentions on the site. Should things go bad you can really hamper with that companies branding and client trust.

It's a tough situation because the words are also generic. I wanted to buy something myself recently that were just normal words, but found I would be competing with a company who owned the trademark on the words so I let it go. It's not worth the risk, and if they say no and catch you selling competing products you may have even more issues.

So, you can let it sit there and do nothing with it, or you can try to negotiate a better deal with them for the domain, or just hand it off as they want it.

Personally I wouldn't push it.

There are always more keywords - and keep in mind that having the keywords in the domain does not guarantee first page results.

Become your own generic brand that promotes their product. This way you can promote other things as well down the road (within the same niche) all with one domain.
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- Sam England 13 years ago
  
  If indeed it is true that they are who they say they are...
  
  The best thing would be to let them have it...
  
  I say this because I have had a few back experiences in the past with this type of stuff...warning...beware...
  
  They may have a lot more money than you do and don't give a **** about you and try to bankrupt your ass...
  
  If they are being nice to you...be nice right back...
  
  They may give back to you more than you think...
  
  Good luck...
  
  and have a fantastical weekend...
  
  ~Sam
  
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- HigherPrThanGod 13 years ago
  
  I'd take them up on the offer, since they're willing to compensate you for the domain and, any BACKLINKS you built to it?
  
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Maddmula

13 years ago

Thank you for the replies but I think there has been some confusion. I do not actually own the products domain (DogTraining.com) I own a domain that's keywords are very similar (DogObedienceTraining.com) to their product. The only difference is that I put a third keyword, and put it between their domain. I bought the domain 1 day ago, and have not built the site or started promoting their products. So I have not put any work into the site, except for the domain which I bought a day ago.

Again what I think makes me different from Cybersquatting / Domain Squatting is:

1. I did not have the intent to purposely buy their "trademark" domain but instead to simply promote them

2. I did not go to them asking for money for the domain, they came to me

3. I did not "inflate" the price, hold their domain hostage, but want to simply ask to trade the product (valued at over $150) for something more beneficial to me.

Thanks
1 reply

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Mel White

13 years ago

Originally Posted by Maddmula

3. I did not "inflate" the price, hold their domain hostage, but want to simply ask to trade the product (valued at over $150) for something more beneficial to me.

I think you should contact them and make the offer -- "I really couldn't use the products, but would be happy to sell it (cash) for the value you mentioned ($150)."

Thanks

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davezan 13 years ago

Originally Posted by Maddmula

but would it be reasonable/legal to ask for $150 or more? Do I have the position to do so?

While that might be reasonable to you, how can you show that is reasonable for
them? Unfortunately I don't see how you're in any position to do so if they have
the main domain name already, and if yours is just "complementary".

It might be easier if, say, you paid $150 to buy that domain from auction. If it is
a new $8-$10 registration, that's all it's worth.
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Andrew S 13 years ago

lucky for you

twice i have had $20/day sites just taken through the udrp process

take their offer, it is generous
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txconx 13 years ago

If they don't approve your affiliate application, you can't sell their products on this or any other website.

Correct me if I'm wrong - but doesn't that render the domain name useless for the purpose you purchased it?

I'd take the offer and pick a different domain name, then start over with them.
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sbucciarel Banned 13 years ago

Give them the domain, buy a dog and take the product they offered. Win win for everyone. Then get another domain and promote their product as planned.
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Jason Johns 13 years ago

Personally I wouldn't push it because you could find yourself ending up with nothing. ICANN have the right to remove domains that are infringing trademarks from you and hand them over to the trademark owners.

Say thank you very much for your kind offer, I'd love some of your products and then eBay them or something. Go register a non infringing domain and keep on promoting.
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Sfrew 13 years ago

I suppose if you spent a fortune on lawyers, you probably would win in several years.

Not worth it. At this point you should cut your losses, take their offer, and work at building a good relationship with some people at the company for your future benefit.

At least that is what I would do.
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SamyE

13 years ago

Call them up, tell them you are faxing an invoice for 150.00 and that as soon as the invoice is paid that you will transfer the domain. You can also drop in a line that they will re instate your affiliate account as well.

The cost for them to go through the process of retrieving the domain through either the registrar or courts system would be ten times more.

Note that they have already paid and consulted with an attorney and they were also previously unable to re gain control of the domain from the prior domain owner.

Most likely they looked into the process and found out it was two espensive to file the paperwork with the registrar or ican.... I checked once and the cost was $1500.00 just to file the papers for a three person committee and even more to go in front of the complete panel that arbitrates these claims.

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davezan

13 years ago

Originally Posted by SamyE

As an FYI, some trademark holders would actually use soliciting a price from the
domain holder as proof of bad faith. While it does cost to file a UDRP or so, some
are willing to fight for the principle, too.

Thanks

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Help: Domain Trademark Issues

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