Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

409 points by brogrammer2018 4 years ago | 275 comments

I have owned a .com for 7+ years, a new company who has only been around for <2 years registered the .net 2 years ago and now threaten for me to handover my .com or they will sue

I have received a cease and desist letter from a law firm via email.

They claim as they client registered a trademark two years ago for the name, I must handover my .com domain to them for free, otherwise they will sue me.

For them not to sue me, because they have now registered trademark (even though I had the .com domain and was using it 7+ years before them)

They state from their solicitor that I must do all the following (long letter they sent me but here is the title/headings):

  1. Cessation of Use of the Mark.
  2. Abandonment of Rights
  3. Future Trademark Applications
  4. Transfer of Domain Names
  5. Acknowledgement of Ownership and No Challenge
  6. Mutual Release
  7. Covenant Not to Sue
  8. No Outstanding or Known Future Claims/Causes of Action
  9. Acknowledgment of Settlement
  10. Confidentiality of Agreement
  11. Non-Disparagement
  12. Agreement is Legally Binding
  13. Entire Agreement
  14. New or Different Facts: No Effect
  15. Interpretation
  16. Governing Law and Submission to Jurisdiction
  17. Equitable Relief
  18. Reliance on Own Counsel
  19. Counterparts
  20. Authority to Execute Agreement

They sent this just email today, but state that I must do all of this within 3 days.

  "[Company Name] further demands that you provide, by no later than the close of business Pacific Standard Time on December 15, 2021, written confirmation that you will comply with these demands. You are specifically advised that any failure or delay in complying with these demands will likely compound the damages for which you may be liable. If [Company Name] does not receive a satisfactory and timely response, [Company Name] is prepared to take all steps necessary to protect [Company Name]'s valuable intellectual property rights, without further notice to you.

  The above is not an exhaustive statement of all the relevant facts and law.

  [Company Name] expressly reserves all of its legal and equitable rights and remedies, including the right to seek injunctive relief and recover monetary damages."

Is this correct? Sounds ridiculous to me.

If anything I would have thought they should be the ones changing their name, as I was using the name 7+ years before them with a similar product

bhartzer 4 years ago |

You need to speak with a qualified domain name attorney, not just any attorney or solicitor.

As Director of a domain name protection company (and not an attorney) I can offer this:

If you registered the domain name before the other party files for a trademark, then there is no way you would have known that they would file for the mark. So, in most cases you probably don’t have to give up the domain name. It comes down to whether or. Or you registered the domain “in bad faith” or not. And again, how would you know they would start their business and get a trademark? You wouldn’t.

Are you in the same industry and compete with each other? If so, there might be an issue, but I’d your site offers different products and there would be no confusion between companies or websites, then there may not be an issue.

The best way to handle this is to get a domain name attorney to respond to their letter to you, essentially telling them to go away, and that you plan on keeping the domain name.

If you cannot afford an attorney, look for a company that offers domain name insurance or a domain name warranty, if you have an issue like this with your domain name, your legal fees to defend the domain are covered.

As you have described the situation here, you bought the domain before they filed for their trademark, and you’re not pretending to be them. So you should be able to keep the domain. They are just trying to “ strong arm” the domain away from you with a threatening letter. If they do sue you or file a udrp, defend yourself with the help of a good domain name attorney.

tomxor 4 years ago | |

>Are you in the same industry and compete with each other? If so, there might be an issue

...

> as I was using the name 7+ years before them with a similar product

Sounds like they are, but that the issue is in the reverse, they are trying to steal the authors market and product directly by using their name. This is very aggressive, not to mention wrong.

paxys 4 years ago | | |

There's really no way to say that with the limited amount of info in the post. There can be two legit businesses in the same space with similar names. This is incredibly common in tech.

Buttons840 4 years ago | | |

Hope to read a follow up post one day about how the end result of this letter is the company who sent the letter loses their trademark and domains.

grammarnazzzi 4 years ago | | |

> If anything I would have thought they should be the ones changing their name, ...

No doubt that they did think of that. Instead they decided on intimidation as an opening strategy.

> ... as I was using the name 7+ years before them with a similar product

So they are guilty of what they are accusing you of. You could: 1) threaten to counter sue and settle for a price, or 2) sell them your .com

They've no doubt anticipated these responses as well and are prepared to negotiate. They simply decided to open the negotiations at $0

gnu8 4 years ago | |

> They are just trying to “ strong arm” the domain away from you with a threatening letter.

This isn't ok and making them go away isn't good enough. They need to pay for having made that long list of demands and threats, ideally by having their whole business taken away and given to OP.

bhartzer 4 years ago | | |

Agreed, it’s not okay. Some companies are found guilty of reverse domain hijacking after filing a udrp.

Someone 4 years ago | |

> If you cannot afford an attorney, look for a company that offers domain name insurance or a domain name warranty, if you have an issue like this with your domain name, your legal fees to defend the domain are covered.

I would think it’s too late for that. Insurers typically (and most of the time rightfully, exceptions being cases were law requires them to do so, as is the case with health insurance in some countries) do not cover cases known before the insurance started.

If they covered past issues, nobody would take insurance before they knew they needed it.

bhartzer 4 years ago | | |

The OP only received a letter, and hasn’t been sued. It’s not too late to set up domain protection.

Business insurance and cyber liability insurance doesn’t cover domain names. You have to get a domain name protection company to cover the domain.

donmcronald 4 years ago | |

I've never heard of that before and all I can find trying to search are sites about the `.insurance` TLD.

Anyone got any links to some examples?

bhartzer 4 years ago | | |

DNProtect offers domain name protection plans for exactly this reason. If the OP had domain name protection all the legal fees of defending the name would be covered.

musesum 4 years ago |

I had a 4 letter domain name. A stock photo company trademarked the name and then threatened to sue to force transfer. However, I registered the domain before they registered the trademark. I looked up the ICANN rules and saw I had priority. Pointed out the ICANN rule and told to go away. They did.

IANAL; this is not legal advice.

masklinn 4 years ago | |

Also IANAL but these demands make even less sense due to trademarks being categorised in classes, that you own Douche® registered in rubber products doesn't mean someone else can't have Douche® furnitures, and both have a reasonable and compatible claim to the name (for instance there are at least 5 different companies or organisations called "Apple" with presence in the US).

Furthermore, the USPTO allows multiple trademarks with the same name in the same class, because trademarks must be distinctive and unless the name is completely made up and demonstrably novel (e.g. Blu-Ray, Kodak) it's not distinctive and does not inherently constitute a trademark (though generic trademarks can acquire distinctiveness through use e.g. "apple" would probably be considered distinctive).

rbanffy 4 years ago | | |

> for instance there are at least 5 different companies or organisations called "Apple" with presence in the US

An interesting trivia is that Apple Computer got in trouble with Apple, the record label, when they introduced the Apple IIgs, because it had a musical instrument synthesiser chip built in.

Someone1234 4 years ago |

While this is definitely a bunch a hot air, unfortunately they could frivolous sue you to simply win on financial grounds alone (in particular they could sue you in a location where the cost of travel would be expensive and if you ignored it they get a default judgement, or sue you in both state & federal courts for slightly different things and drown you in legal costs).

I'd evaluate what your endgame is. If your endgame is to keep the domain then I'd get a lawyer in order to make it clear that you will respond to legal challenges (and, yes, the bill is going to run up). If you were willing to sell, for a price, then you should try to figure out how much a legal challenge would cost them and set a price a bit higher than that.

Is it fair? Absolutely not, but the US legal system is set up so that those with the deepest pockets often win. It isn't a fair fight for normal citizens, and even having the law on your side is often not enough because it is a financial battle more than a legal one.

Either way may be wise to lawyer up today, either for a better selling price, cause them to back off entirely, or move it into the "bury you with costs" phase of bullying.

paxys 4 years ago |

Disclaimer: I'm not a lawyer and this isn't legal advice.

Assuming both parties are in the US, this is the key legislation around domain squatting: https://cyber.harvard.edu/property00/domain/legislation.html.

You haven't told us anything about what you do with the domain, but since you registered it quite a bit of time ago I'm assuming it has nothing to do with the company in question that sent you the letter.

Looking at the clauses in the link, it seems pretty clear they they have no real case. Everyone's advice of getting a lawyer is obviously apt, but I'd say you can just save yourself the money and ignore this letter completely. There's a 99% chance that you will not hear back from them. If they do decide to actually escalate it, you can always get a lawyer at that point.

A general piece of advice about the legal system - nothing ever happens within 3 days. They are creating a false sense of urgency in order to scare/bully you.

(As a side note, I get very annoyed when a random question on the internet is met with a hundred responses of "get a lawyer". I'm sure the person who posted it already knows that lawyers exist. What they are looking for is some free advice, not legal representation from HN.)

hn_throwaway_69 4 years ago |

I take the view that there needs to be a penalty for people who send out these letters but fail in their ultimate claim.

If you send cease and desist letters without merit you should be forced to indemnify the respondent for the entirety of their attorney's fees and pay exemplary damages.

This would require lawyers to make a careful assessment about prospects of success, rather than hoping to scare the other side into capitulation.

These heavy handed tactics are just dreadful and shouldn't be accepted in any rational legal system.

To avoid doubt, I'm not saying that their claim doesn't have merit. Unfortunately you will need to pay a lawyer to find out.

chrischen 4 years ago |

Basically this exact same thing happened to my business with an individual (some guy who’s main business appeared to be acquiring and selling domains) who setup a very similar trademark, registered the domain (very similar), setup a dummy business on the domain, and then sent us a cease and desist trying to extort (we did a call with them where they basically told us they knew it’d cost us a lot of money to litigate and it cost them almost nothing to keep their dummy business up) us for six figures.

We ended up litigating and canceling their registered trademark with the USPTO by proving our business and website were setup before theirs. If you have over 7+ years of business and public records this should be a pretty open and close case. The bad news is however even if that is the case it can take 2-3 years (probably due to pandemic)and a lot of money. In our case it cost less than $10k, so the guy’s extortion made no sense.

It also didn’t help their case that the guy lifted verbatim copy from my website, including my TOS with my address! I’m not sure if the judge even looked at this though.

codingdave 4 years ago |

Opening a dialogue about this would have been the professional approach. Blasting you with a long list of demands means they are trying to bully you. Cease and desist letters are just a way of trying to scare you into doing what they want so they don't need to do things the hard way. I'd recommend asking a lawyer if they have a case to make against you, just to be safe. But if they don't, this letter means nothing.

dylan604 4 years ago | |

And their 3 day demand is total horseshit of a play as well. You have done the research, and feel they do not have in-house representation. It is done on a Friday, so 2 of the 3 days is weekend. Finding a lawyer in 3 days is not simple, and doing it with 2 of the 3 being a weekend when a lawyer is impossible to find is just bullying 101.

Fuck people like this. I feel bad for the Op, but sadly, I am jaded by the BS games that bullies play and win. I wish karma 1000x upon people that do this kind of bullshit.

We've all seen how part of the responsibilities of a brand is to protect it, but as someone else posted, there are ways of not being an asshole when protecting one's brand. Ultimate face saving for the company in question would be to realize what is ocurring and fire the legal team they have hired for this role, apologize for their behavior to the Op, and then amicially work out a resolution. However, I realize that this is such a low chance of ever happening to be laughable.

technothrasher 4 years ago | | |

> there are ways of not being an asshole

Yep, when somebody else started using my trademark in a slightly related business, I called my lawyer and discussed. We decided to offer that they license the trademark for $1 and agree to discuss with me before using it in any new way. That way my trademark is protected and I don’t need to be an asshole.

Worked out well, we even threw each other business occasionally, and they went out of business after a couple years anyway.

otterley 4 years ago | | |

Three business days. The demand letter requests a response by December 15, which is a Wednesday.

gumby 4 years ago |

As you said "solicitor" I'm guessing you're not in the USA.

If you are in the USA, the law is on your side: just because they registered the mark doesn't take away your rights.

In addition, if they are doing something different from you (or perhaps you're using the domain for non-business purposes) they have no claim. You can open McDonald's garden shop (even if your name isn't McDonald) and unless you made it look like a McDonald's restaurant (trying to cause confusion) it's none of the restaurant company's business.

Best, unfortunately, is to get a lawyer. If your country has a "small claims" court you could even sue them to get back your lawyer costs, but those are likely to be small in any case.

Good luck!

ksec 4 years ago | |

>As you said "solicitor" I'm guessing you're not in the USA.

But then they use Pacific Time Zone.

phonebanshee 4 years ago | | |

Which makes it a very good bet that they're Canadian.

verve_rat 4 years ago | | |

No, the letter they got sent uses Pacific Time. The dicks couldn't even be bothered translating that into the time zone of their target, or even UTC.

oliwarner 4 years ago |

> within 3 days

Well that's a scam.

If they're going to sue you, let them. You literally have prior use of the term and if you have to prove that, you can with comical ease.

They know this… which is why this sounds like bullies trying to scare you into giving up a domain they can't afford to pay for. Scary letters are cheap. Write one back asking they reassign their trademark to you?

But seriously, probably get paid advice first, and don't worry about this 3 day nonsense. Nobody works that fast.

And remember that trademarks are classed. Rarely does somebody get exclusive use of a name in all senses. You might not be able to sell what they sell under their trademark, but they don't have rights to the word in generic senses.

Oh and probably approach a regulatory body about their solicitors. This isn't an appropriate way to conduct business.

geocrasher 4 years ago | |

     don't worry about this 3 day nonsense. Nobody works that fast.

This was a red flag for me too. 3 days to take action? It takes longer than that to get anything done these days. They're trying to scare you into compliance. Three days is not enough time to get legal advice from an actual lawyer who is versed in domain name law, and respond.

If you're gonna spend any money with a lawyer, have one write up a "go away or I'll let this go to trial and you can pay my legal fees" letter to send back to them.

WORMS_EAT_WORMS 4 years ago |

Congratulations! You just got an offer for a buy out.

This could be the best thing that has ever happened to you. Depending on the price and size here, very little chance / or unlucky for them to go nuclear option. The last thing they want to do is take this to court and then also lose. Devastating for them to lose and only expensive for you to lose.

Settle here and take the bonus.

How deep do their pockets look and how valuable is this domain to them / you?

0. Get lawyer and do everything through them and through their advice first.

1. Draft a response saying basically over your dead body, make it clear and obvious how likely it is they will lose, and tell them you are prepared to take this to courts for a legal judgment.

Tell them you are reasonable though and give them an option to make a serious offer for purchase at 10x whatever you value it at.

2a. Get offer, negotiate to a value of 0.25-4x (not 10x), accept, move on with your life.

2b. Get sued, win, re-offer sale at 20x. Sell domain at 8-12x.

2c. Get sued, lose, sucks.

notahacker 4 years ago | |

I'd check the specifics of this very carefully with a domain specialist lawyer before making a counter offer, especially one involving setting a large price.

One way to make a very weak case that an already-registered domain is being used in "bad faith" against a trademarked entity a bit stronger is to argue that the owner of the domain made an unsolicited request to the trademark holder for payment...

WORMS_EAT_WORMS 4 years ago | | |

Yes. Exactly (step 0). Anything will be used against you

harryvederci 4 years ago |

General remarks for these types of posts:

- People often mention 0 countries. Where do you operate? Where was your company founded? How about the other company? Etc. How do you know if that helpful comment doens't assume something totally different?

- Are you really going to feel confident about your legal situation after reading comments on a platform like Hacker News?

jonp888 4 years ago | |

When someone didn't feel the need to mention which country they are talking about, that's usually because they're American.

rootusrootus 4 years ago | | |

Your jump to conclusions mat is too bouncy. Americans do not call lawyers solicitors.

niij 4 years ago | | |

This is a website hosted in America by an American investment company with a primarily American user base. Not hard to understand why. Either way the OP appears to be Australian, so please hold off judgement next time.

havocsupreme 4 years ago | | |

It's mentioned in their comment history that they're Australian.

sebow 4 years ago | |

I agree about the country point.However i am curious whether having the [Company Name] registered properly [Ltd, Co., s.r.o, s.r.l, etc] is an actual argument for having the "right" to a domain name.Common sense tells me it's not,in the same country or between countries, unless obviously the person who has the company name impersonates that company.

Why would one need to legally own that domain name as a company name to keep the domain? Makes no sense to me

dominenames 4 years ago |

No, it's not correct to state that they have any right to the domain name. Anybody can sue anybody for anything, but they have no prospect of winning ownership of the domain name. Domain name conflicts like this are adjudicated by WIPO who would never grant the domain name in this situation: https://www.wipo.int/amc/en/domains/

nprateem 4 years ago | |

Yeah seems you may be right: https://www.wipo.int/amc/en/domains/search/overview3.0/#item...

paxys 4 years ago | |

Doesn't matter what WIPO thinks if a judge who has jurisdiction over both parties orders the transfer. Not saying it will happen in this case, but you can definitely be compelled to hand over your domain name or risk contempt of court.

winterplace 4 years ago | |

You are right. They are just trying to scare the owner into giving it up for free.

jawns 4 years ago |

Check this out:

https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1...

Just like patents have a concept of "prior art," trademarks have a concept of "first use in commerce."

If you can demonstrate that you were the first to use the trademark, you have less to worry about (but nothing's guaranteed until litigated).

HOWEVER, if the party that registered the trademark can demonstrate that they used it prior to you, regardless of when they registered it, then they may have the upper hand.

This is probably not DIY territory; consult a lawyer knowledgable about trademark law to help you determine how to respond.

They may, in fact, recommend that you countersue for infringement. Might not be worth your time to pursue, but at least in theory you could claim that they're infringing on your trademark, because the U.S. follows a "first to use" rather than a "first to file" trademark system.

nprateem 4 years ago | |

I'd love to know what that means in plain English especially since the trademark has already been granted.

jeremyjh 4 years ago | | |

Acquiring a trademark just sets a floor for when you acquired the trademark, it doesn't mean someone else hasn't already acquired it - that is a question that courts have to settle.

aalex123 4 years ago |

What if I'm not an US citizen and a company from US (threaten to) sues me over a .com domain registered through an non-US registrar? Should I hire an US lawyer? Where does the trial take place: in US or in my country?

Let's say I get an email like the one OP got but I don't understand english and I take no action... Will the non-US registrar give them my domain by default?

therealmarv 4 years ago |

They cannot take away your .com away if you have it for a longer time. Trademark does not give companies a free pass to take away your domain name, especially when their company was not existing when you've registered your domain name. It's not how this works. Trademark is a kind of protection, a company name alone, registering a domain name (all without trademark) is also a kind of claim and protection. Trademarks work for the future and not into the past, especially not into a past where the company registering the trademark was not existing! I would completely ignore what they demand.

ThrustVectoring 4 years ago |

There are, roughly speaking, two categories of businesses that receive this letter and differentiate themselves based off their response:

1) "Hobbyists" and the like who are not doing anything particularly valuable with the trademark and domain name. Even if these people can prevail in a lawsuit, the other company is hoping that the owner decides they can't (or won't) risk the time, money, and stress of going through a civil lawsuit.

2) People with valuable businesses whose rights are worth defending. The other company is already pretty sure you're not in this category, since you haven't vigorously defending your naming rights to date.

Overall, you have prior use, and may be able to "win" if it gets to an actual lawsuit. The strength of your legal claim isn't the problem; if you have to spend high-five figures to keep the rights to your hobbyist website, you have already lost. Your goal is to convince these folks to leave you alone on as favorable terms as possible. If your domain name is not particularly valuable and important to you, this likely means A) hiring an attorney, B) using their services to convince the other company that you're in the second category, and then C) selling them your domain name for significantly more than it's worth to you. If your domain name is valuable to you, the only thing that changes is that you may need to pay the stochastic taxes that businesses have to pay to have access to the legal system for dispute resolution, and you might have a hilarious "thank you for informing us of your clients' violation of our trademark rights" demand letter sent back at them.

darrenwestall 4 years ago |

https://nissan.com/ Seems relevant here :)

unreal37 4 years ago | |

Poor Uzi Nissan. They should have just offered him $1 million and bought it from him. Years of stress, courts, and lawyers fees.

On the other hand, "MikeRoweSoft" clearly was playing on Microsoft and I can see why he lost that battle.

degenerate 4 years ago | |

I was hoping someone pointed this one out. Granted, they've blogged about spending tens of thousands of dollars on lawyer fees and the owner's last name is Nissan. But still, it's a good case study of the little guy winning.

Terry_Roll 4 years ago |

Dont know what country you live in but check the categories the trademark was linked to. If they are in the same line of business as you and the TM has that category that covers the line of business you are in I would be questioning the trademarks office for awarding the TM to the other entity.

TM's are cheap so its an easy trick and a lawyers letter doesn't cost much either, but its a legal game you may well be forced to play, because they might go to the domain registrar and try it on with them to get your domain.

Unfortunately these are the additional cost we can be forced into playing if someone with more money wants something from you like in this case your .com name. You could also see if your domain registrar as some sort of arbitration which could keep costs down or lower than using a lawyer. I think divorce lawyers best typifies some of them thrive on disputes. Good luck!

stevenalowe 4 years ago |

Not a lawyer. Talk to one. In your country.

In the USA, if there might be customer confusion between your two businesses then there is grounds for a cease and desist, but you have precedence. Might consider turning the tables and sending them a cease and desist :) perhaps they’d like to give you the .net domain as an apology

scrollinondubs 4 years ago |

IANAL but pretty sure trademark is based on first provable public use for commercial purposes. You should be able to contest the mark on that basis. Just screenshot the WHOIS record showing you had the domain 7yrs ago and hire a lawyer to write a cease & desist to them. Just because you hold the trademark doesn't make it necessarily defensible if it's proven that it was obtained surreptitiously. Depending on what you learn from the lawyer and how aggressive you want to play it threaten counter suit for damages and escalate.

But agree with all comments: get a lawyer before you do anything.

elmerfud 4 years ago |

Talk to a lawyer and be prepared to spend money if you want to keep it.

First use is a strong defense, but you will need to defend it. If you have similar products and can show first use, as you claim, perhaps negotiating a sale of your entire business including the domain would be something to offer them.

Usually this kind of tactic happens because they've looked at you and guessed you don't have financial capital to defend yourself. Unfortunately, because it's very difficult to prove they're acting in bad faith, there's likely no way to recover your costs of defense.

JohnHaugeland 4 years ago |

Get an attorney and push back.

All they're doing is losing their trademark here. If you were using it before them, it shouldn't have been assigned to them.

GET AN ATTORNEY.

But to calm down, read about "stop and go" in Pittsburgh in the 90s. There was a store called that about an hour's drive outside the city. Then a gas station convenience chain merger tried to take on that name for 150 stores. About two years later the original store found out and said no. The 150 store behemoth tried to sue.

The 150 stores are now called CoGo's.

bshep 4 years ago |

Out of curiosity, I have a similar question in the same vein.

I own MY_LAST_NAME.com, me and my family use it for email, ( i.e. firname@lastnane.com ) should we register a trademark to protect ourselves from this type of bullying? Are we safe since its our own last name?

bhartzer 4 years ago | |

Personal names generally cannot be trademarked. You would most likely need to have a business or other use case of your last name in order to be granted a trademark.

bshep 4 years ago | | |

Does this apply even if I have an LLC with my name?

TBH this scares me quite a bit since we have all the family’s emails tied to the domain, not only would it be a huge pain to lose it but also a security risk. Weve had the domain for 10yrs or more at this point…

netengineer1 4 years ago |

Unless they start a UDPR claim with WIPO, they are hoping you will just hand it over.

This has happened to me. Ignore them until WIPO claim shows up. Which they probably tried and were denied. A good example is nissan.com

https://www.wipo.int/amc/en/domains/guide/

marc 4 years ago |

They might be using scare tactics hoping you'll hand over the domain name without question. But I wonder if they have a case.

My suggestion would be to either A) ignore and see if they go away, and/or B) have a domain name lawyer send a reply showing you won't roll over. That's usually enough for parties like these to back down.

If you need a lawyer recommendation send me DM me on Twitter (@marckohlbrugge). More than happy to help.

FWIW, some people might mention a procedure called 'UDRP' which is typically used by TM owners to quickly and cheaply get a TM-infringing domain name. However, one of the requirements for a successful UDRP case is that the TM needs to have been issued BEFORE the domain name was registered. Which is not the case here. So a UDRP approach would fail for them.

The other way for them would indeed be to sue and try to claim TM infringement in court. I don't have much experience with TM law, so I'm not sure what your odds of winning are. But there might even be a way to get their TM invalidated.

TL;DR: Talk to a lawyer.

P.S. If they have money for lawyers, they might also have money to buy your domain name. I wouldn't propose a purchase until you've talked to a lawyer (as it could hurt your case), but it's something to consider for later on.

chx 4 years ago | |

In particular, the UDRP rules include the following:

--------------

(ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular,

[...]

(3) why the domain name(s) should be considered as having been registered and being used in bad faith

--------------

marc 4 years ago | | |

Yes, although that criteria is somewhat subjective. Since an UDRP needs to meet all criteria, you can throw it out by just looking that the registration dates.

winterplace 4 years ago | |

Or option C) Negotiate a deal to get paid for the domain

Marc, do you have an email address?

marc 4 years ago | | |

marc(at)hey.com

Note that I'm not a lawyer, but I've dealt with similar issues before through a qualified lawyer. Happy to introduce you. Not sharing name here publicly, because that could potentially be used against me. (i.e. someone intentionally creating a conflict of interest, etc)

justinc8687 4 years ago |

On a semi-related note, I registered a trademark for my company and the .com is just domain squatting. The .com preexists my trademark however. Do I have any grounds to try and claim it or am I SOL. I know if they were actually using it for a business, it'd be one thing, but it's a generic domain-for-sale page instead.

unreal37 4 years ago | |

Just to be clear, domain squatting has a definition. The fact that a domain you want isn't currently available is not domain squatting.

"What is domain squatting? This is the practicing of buying a domain name for the sole purpose of preventing someone else from buying it. Typically, the buyer will then resell the domain name at a higher price to a buyer who is desperate to pay for the domain. The domain squatter takes a risk in trying to find a domain that someone else will be willing to pay at an up-charge to buy the domain in the future."

If the .com "preexists your trademark", it's harder to prove they bought it to prevent you from buying it. If you're a small business smaller than $80K per year in revenue, it's likely they don't even know you exist.

justinc8687 4 years ago | |

Also related, there's a "tv" domain, registered after my trademark that serves porn. Same question.

For this one, I've taken the general position that as long as they don't show up in the first 3 pages of google results for "company", I don't really care, but same question.

For context, my company is a saas booking platform for outdoor recreation businesses.

emteycz 4 years ago | |

Have you asked them to sell? Usually the price is not even that bad - especially in comparison to any legal fees this endeavor might cost you.

justinc8687 4 years ago | | |

They wanted like $80,000. My company makes that in annual revenue, so it's a nonstarter.

throwsdfsf 4 years ago |

Name and shame the Founders.

There is a huge community of domainers on Twitter. There will be blowback. You will get tons of support, and recommendations. (as well as guidance on lawyers...etc).

radley 4 years ago |

Yes, consult a lawyer. Also understand, nothing happens in 3 days. This is all a bluff to scare you into responding and signing away your rights without proper advice.

toss1 4 years ago |

First, contact an attorney who specializes in this area of business and law.

Meanwhile, also look up that law firm that sent you the letter and see what you can find out about them (e.g., are they even legit, what kind of other cases do they handle, etc).

And search for any information you can find about this other company and the people. What have they done? do they own property? What other businesses? Criminal records? etc. etc. etc.

Also gather all your own records - business formation, original site registration and registration history, logs of any marketing and advertising you have ever done, etc.. Anything that shows you actively using this trademark over time and as far back in time as you can establish.

Bring this data to your new specialist attny.

xivzgrev 4 years ago |

Sounds like they always wanted your domain, and this was their attempt to get it. Their big scary letter is basically a bunch of “give up your legitimate rights for nothing”

Consult with a lawyer. Intuitively their case makes no sense, but actual law is not always intuitive

aartav 4 years ago |

IANAL, but at least according to ICANN rules you have nothing to worry about unless "your domain name has been registered and is being used in bad faith". You can see the specific definition of "bad faith" and the rules around this here https://www.icann.org/resources/pages/policy-2012-02-25-en

Its easy to prove you are not acting in bad faith because your ownership precedes the trademark. I personally own and use several domains that others hold trademarks on, but all of mine were registered before those companies established trademarks.

DaveExeter 4 years ago |

>Is this correct? Sounds ridiculous to me.

It is ridiculous, and the only reason for this is because they have no legal right to the domain name.

goatherders 4 years ago |

My experience has been that you can tell them to pound sand. They are hoping the threat of legal action will cause you to panic out of fear. I suspect if you reply "no" you will never hear from them again.

tmaly 4 years ago |

I have had a .com since 2003. A SF startup made a INC after my name and got the .org. They called me at my work and I just said I have business plans for domain. They trademark the name, but have not bothered me.

stanislavb 4 years ago |

Please, share the name of the company. Let's name and shame them. I hate this kind of law-aggressiveness.

infotogivenm 4 years ago |

Not a lawyer but been in a similar situation. I will give the simple advice I wish I had followed:

1. Do not reply to the email yourself. 2. Get yourself a lawyer and keep a full accounting of all legal expenses.

randomdata 4 years ago |

> Do not follow any "free legal advice" from HN -- and I'm speaking as an actual licensed attorney.

Not sure how to interpret this free legal advice.

dctoedt 4 years ago |

I'm an IP lawyer but not your lawyer, and I'm licensed only in Texas and California, so don't rely on this as legal advice. Back in the day I did a fair amount of trademark litigation but that was quite a few years ago; these days I do neither trademark work nor litigation.

1. A bit of Google-searching suggests that you're in Australia. I couldn't find any U.S. trademark registration for $NAME, where your .com domain is $NAME.com as listed on (what I surmise is) your Twitter header.

2. If the facts are only as you say — always a big "if" — the letter you describe would be ... let's just say, groundless, at least in the U.S.

3. If you own $NAME.com; AND: For seven-plus years you've actually been using $NAME as a trademark "in commerce" in the U.S. by shipping goods bearing the mark (or rendering services under the mark) in interstate- or foreign commerce; AND: You're being threatened with a U.S. trademark registration, AND: The registration hasn't been made "incontestable" by the passage of five unopposed years; THEN: In theory you could petition the U.S. Patent and Trademark Office (USPTO) to cancel the other company's registration, on grounds that you're the senior user. That would not be cheap, and I think this would require hiring a lawyer to represent you in the USPTO. https://www.uspto.gov/trademarks/ttab/initiating-new-proceed...

4. You might find amusing the precedents at https://www.oncontracts.com/monster-cables-picked-the-wrong-... (response to a threatening letter from Monster Cable) and https://lettersofnote.com/2011/02/14/regarding-your-stupid-c... ("some asshole is signing your name to stupid letters"). In a similar vein, one of my late former law partners reputedly had a big BULLSHIT rubber stamp that he would supposedly apply to such letters and return them to the sender. (I don't remember ever seeing the stamp so it might have been a story that "evolved" over time.)

5. The title/headings that you list are mostly gorilla dust that unsophisticated lawyers throw up to try to get opposing parties to agree. There's no way you'd want to agree to all, or even most, of that without a BIG, buyout-type payday in return.

Again, don't rely on the above as legal advice; when in doubt, consult a lawyer who's licensed in the relevant jurisdiction.

EDIT: If you want, email me (see my HN profile); if this is a U.S. matter and it's not from one of my existing clients (extremely unlikely), maybe I can write and send an "appropriate" email response for a purely-nominal fee (but I wouldn't be able to take on anything more than that).

scosman 4 years ago |

I am not a lawyer, this isn't legal advice. Definitely don't respond yourself, get a qualified lawyer in with track record in startups/domains to write back (and advise). The letterhead goes a long way here in showing you're not trivial to push around. If facts as presented here are truthful, there is a reasonable chance of never hearing from them again.

pwg 4 years ago |

Seek the advice of a lawyer.

eevilspock 4 years ago |

Whatever you do, brogrammer2018, please post a follow up story here on HN.

FigmentEngine 4 years ago |

Assume you are in Oz and they are in US so be aware that laws are different, as well as scooe of any marks granted (doubt they have an internatonal mark), as daid by others marks also cme wth limitayions on them - so see what mark they have.

check your registration rules, and reach out to them to explain what is happening, stop any end run on your registra.

benatkin 4 years ago |

> They claim as they client registered a trademark two years ago for the name, I must handover my .com domain to them for free, otherwise they will sue me.

This isn't in what you quoted. I wouldn't be surprised if they didn't demand you give them the domain but hinted that you should give it to them because you won't be able to use it for the purpose you wanted anymore.

You can most likely keep the domain, even if the trademark holds water - in that case you just can't use it for what you're probably wanting to use it for. If you were actively using the domain, the trademark might not hold water, but from the way you describe it, it seems like pretty passive use of the domain. It's also bad to let them register a trademark you wanted. I don't know too much about it, but presumably there's a way to get something like a Google Alert if your brand is going to be trademarked, and you can oppose it if you know about it in time: https://www.gerbenlaw.com/blog/filing-a-notice-of-opposition...

If they did demand the domain, see nissan.com. I don't think it necessarily hurts them to demand the domain. Nissan hasn't gotten the domain but they haven't got in trouble for demanding it either. No lawyer has been disbarred over it. ICANN stops short of transferring domains because of trademarks alone, but it isn't with prejudice.

A trademark isn't a domain, but a domain also isn't a trademark. If it were, a lot of YC brands would have been squatted, because plenty of had to settle on not having the .com at first, and many have ended up getting them later.

I wonder what it was like when codeacademy.com got codecademy.com. Perhaps it was something like "Hey, you guys can't use codeacademy.com for much, mind selling it to us for cheap?"

andrew2984 4 years ago |

It's not correct and does sound ridiculous. I highly recommend calling a domain attorney. Most will give you a free consultation. One person who specializes in this type of dispute is John Berryhill: https://johnberryhill.com/

gostsamo 4 years ago |

Can you share who they are? Not naming them only helps in letting them hide their crime in darkness.

temp8964 4 years ago |

They are just trying to scare you. Many famous companies need to buy the domains from people registered earlier. There’s no such thing as trademark automatically gives right to domain names. Tell them to use their own .net domain name and go away.

philprx 4 years ago |

Send them a cease and desist and tell them you're going to sue for attempted fraud (or better term):

They have no right to their claim and are using abusive language to make you do something under threat.

You can get quite some money out of it I believe.

IANAL and this is not a legal advice.

fma 4 years ago | |

I hope they can turn around, sue them and take their .net domain name.

I also IANAL and this is not a legal advice.

thesuperbigfrog 4 years ago |

Perhaps you should get a lawyer to advise you of your rights and options.

dragonwriter 4 years ago |

> Is this correct?

Is it correct that they will sue you if you don't comply? Maybe, that's up to them.

Is it correct that your use of the domain name violates their trademark? Also, maybe. That depends on the market you are in, the market they are in and that the trademark is registered for, and other things.

If you aren't willing to just hand over the domain, and don't want to just roll the dice on liability, you should seek professional legal advice, and not respond in any way until you have received and considered that advice.

JohnHaugeland 4 years ago | |

I am not a lawyer.

> Is it correct that your use of the domain name violates their trademark? Also, maybe

No. As an issue of black letter law, if they can demonstrate that they were using it before the issuance, it does not violate trademark, by design.

Many trademarks are lost this way.

rolph 4 years ago |

own.net is not own.com, it looks to me like they are trying to dupe you into "voluntarily" relinquishing your domain, and will try to argue that the similarities of subdomain, are so much stronger, than the dissimilarities btween root domains that it is damaging and they deserve control over a root domain that has a similar subdomain.

thats a big hunch, and i dont see that going in a good direction at all, for anyone, if my hunch is actually fact, rather than hunch

derekpankaew 4 years ago |

Dropbox ran into a similar issue, but they were on the other side. They wanted Dropbox.com, but someone else owned it. They kept running under a similar name for a while, until Dropbox.com started advertising for their competitors. Then they threatened to sue Dropbox.com, and Dropbox.com sold the domain to them.

There's a really interesting episode on the Tim Ferris podcast, where Drew Houston shares the story.

kstrauser 4 years ago |

If you’re in the same industry, for bonus points consider filing to dissolve their trademark since they started using it long after you had been.

jacknews 4 years ago |

Surely their trademark is invalid if you were already using the name before them, and I think if you registered the domain before they registered the trademark, again their bad luck, you have priority.

Of course you need to get a lawyer if they do sue, but it sounds as though you should be the one suing, demanding they cease and decist, etc.

hugoromano 4 years ago |

Two months ago, I had a similar experience with one "lawyer", the same letter from another "lawyer" a week later. In the end, none were "lawyers"; they were domain squatters. I ignored them, and they went away. (this is not legal advice, but you have to be sure if these are lawful people or scammers).

wyldfire 4 years ago |

> If anything I would have thought they should be the ones changing their name, as I was using the name 7+ years before them with a similar product

FWIW this is the kind of protection you could get by registering your business/product's mark. I'd say it's still possible but probably slightly harder to do now.

paulschreiber 4 years ago |

The EFF has a cooperating attorneys list. They can refer you to someone who can help.

niij 4 years ago |

HN is not the place to ask for legal advice. Just because it tangentially relates to technology does not mean it belongs here.

In any case: asking for legal advice without even providing a the jurisdiction(s) or details is a waste of time.

smorgusofborg 4 years ago |

Unless they are in the porn business, a porn site is not trademark infringement..

nprateem 4 years ago |

I thought that was the point of trademarks, being able to control their use. Please post your experiences after you've had legal advice since I'd have assumed you wouldn't have a leg to stand on.

emteycz 4 years ago |

Put it into your spam folder

libertine 4 years ago | |

I always found amusing reading The Pirate Bay email responses to lawyers from Dreamworks, EA, Apple, etc.

arrty88 4 years ago |

Publish this letter on your domain and point at the evil "big co"

PaywallBuster 4 years ago |

get a crowdfunding campaign to fight the evil corp on the courts

get in touch with lawyers dealing with IP/trademarks

you can have a brief talk w/ them to discuss options before making any decision :)

iommu 4 years ago |

I'm against NFTs but seeing these posts I feel like using some blockchain with low fees that is dedicated for DNS would be actually a good idea...

ashwinipatankar 4 years ago |

isn't it a classic case, lets say there is a domain , and doing good business. I will go and book a the same name with different extension lets say domain.xyz and get a trademark. Now I will sue the original domain owner and extort money out of him without even having a business. I am really curious now what happens when we ignore such people who tries to create a hostile situation.

trentnix 4 years ago |

Went through a similar situation where I owned (company).com and someone later filed for a trademark and registered the(company).com. I hired a trademark attorney and he sent a nastygram back.

We had evidence of first use in commerce and offered not to sabotage their pursuit of a trademark. They immediately agreed, backed down, and signed a document allowing us to use the name unrestricted irrespective of whether they successfully obtained the trademark. As we expected, the trademark application was denied (the name was descriptive, not unique) and it was all behind us quickly.

TLDR: get a lawyer. Trademark law is weird.

And don’t be mean - the other business is now your first call if you ever decide to sell.

winterplace 4 years ago | |

Did you get them to pay you for the non-compete?

Yes the other option is to sell the domain for a profit.

Trias11 4 years ago |

I wonder if counter-suing them would be an option and lesson to teach the crooks. Plus it would be an amazing publicity

syntaxing 4 years ago |

Genuinely curious, isn’t there merit (I guess in terms of law?) for OP to do the same to the .net company?

MentallyRetired 4 years ago |

IANAL. But, your use of the domain in commerce constitutes prior art. 100% get an attorney.

firekvz 4 years ago |

You were 1st, you are all good

UDPR is your friend

sumoboy 4 years ago | |

UDPR is definitely your friend. Your domain info should have been private anyways, too late now. One question is what content do you have on the domain today and does it relate/similar to the .net domain? If your .com is being used for something beyond a parking page, the .net don't really have a chance so let them file a UDPR.

eh9 4 years ago |

Reply saying you’ll sell it to them for N and see how quickly they change their tune.

rblatz 4 years ago |

I’d talk to a lawyer about drafting a counter letter saying you were unaware of them using your brand and that they need to do all those things back to you since you have been using the name longer. Also petition the trademark office to invalidate their claim due to your prior use.

unreal37 4 years ago |

I would say "no". Or ignore it.

Don't ask for money. Being seen as "domain squatting" them will work against you in a tribunal.

danlugo92 4 years ago |

Web3 and Bitcoin fix this.

theartfuldodger 4 years ago |

This has happened to me several times, I have never taken it seriously or put much effort into responding.

I usually would go straight to the throat and very personal.

Publish their letter on the domain they seek, capture all lawyer and company details and publish to site.

Use opsec for phone numbers, call them at terrible hours ( at home) to discuss offers of payment.

They are trying to bleed you with superior resources so guerrilla tactics are best ( legal of course)

They act different when they realize they are exposed and you don't care about normal processes.

Lol, I should make my own David v Goliath service.

Depends on the size of Goliath. No one scary came for me and a few 2am calls led to crickets.

gunshai 4 years ago | |

This is the type of comment I come to HN for. I try to explain to my partner there is always alternative ways to handle matters, and going with "the process" has inevitable outcomes. Probably good they work at a bank and I well... Don't

Can you further elaborate on your story I am very curious?

amluto 4 years ago | |

> Use opsec for phone numbers, call them at terrible hours ( at home) to discuss offers of payment.

IANAL, but if your goal is to give the them additional grounds for suing you, you may be off to a good start.

np_tedious 4 years ago | | |

I think the idea is that it's plausibly someone else calling, since you made the documents containing contact info public (which is legal I hope?).

matthewfcarlson 4 years ago | |

Sounds absolutely ruthless and I quite like it. Don't think I'm bold enough to do it myself but I'm always surprised how much being persistent gets you when you're talking to companies.

brippalcharrid 4 years ago | | |

If one was short of time, one could always put out a tender so that several (hundred) different independent agents could speculatively contact them in order to conduct negotiations, then present you with offers that you could compare. If those agents were in turn having trouble establishing contact, they could farm out this effort to others who had more time and expertise in this area.

voakbasda 4 years ago | |

This. If it is legal, you should at least consider escalating as far as you are comfortable. You are now at war, whether you like it or not. Never back down, never surrender.

chrisseaton 4 years ago | |

> call them at terrible hours ( at home)

This is a really nasty idea. You’ll be bothering their family who have nothing to do with it. Sounds like you’re advocating harassment of people’s families.

mindslight 4 years ago | | |

They're already harassing you under the guise of a legal process. A clock punching attorney won't be emotionally invested in the details of a matter, but the victims of such nastygrams are - the main goal of such letters is to make you stressed and worried so you just cave - hence the corollary of hiring a professional who will handle it impersonally

Two wrongs don't make a right, and it certainly may be imprudent to escalate. But there's no moral ground for them to stand on here - they're in the same category as any other spammer. Furthermore nowhere did OP advocate deliberately expanding the scope to their family. If phone calls at inconvenient-to-them times end up bothering their family as well, it's because they didn't do the work to separate their family from their ugly business.

In general I don't buy into the idea of declaring some times as off limits for phone calls, since society has never given me the same courtesy in the early morning. I'd much rather get calls at 10PM than 10AM, and yet it's somehow acceptable for businesses to return an afternoon call at 9AM sharp and pretend they're doing their best to communicate.

fillskills 4 years ago | |

This is what worked for me a few times. It is painful for a bit but better than spending money on a lawyer. I would also suggest to try and find a lawyer in your network willing to help at below their retail price. Despite the bad rep, lawyers are humans and are very eager to help good people

otterley 4 years ago |

Every answer in this thread is wrong except for "hire an attorney and work with them to figure out what the best option for you is." Do not follow any "free legal advice" from HN -- and I'm speaking as an actual licensed attorney.

imglorp 4 years ago |

If you haven't registered the trademark, does holding the domain have any legal merit?

bryans 4 years ago | |

"In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the rule is that ownership of a mark goes to the first-to-use, not the first-to-file."

https://www.legalteamusa.net/trademark-law-first-to-use-v-fi...

pclmulqdq 4 years ago | |

If he's doing business under that domain name, he is using it as an unregistered trademark and still gets some protection from that. In some cases, including when someone new starts a similar business with the same name, it can have the same force as a registered trademark.

natch 4 years ago | |

You don’t need to have registered. You get trademark ownership automatically without any registration if you are the first to use a distinctive mark in interstate commerce. Having registered can help assert your claim though. IANAL.

masklinn 4 years ago | |

> does holding the domain have any legal merit?

There... is no relation between the two?