How to Respond to a Domain Threat
Tuesday, June 9th, 2009
What to do when you receive a domain threat.
I rarely receive legal threats about my domain names. I’ve never received a UDRP, and can remember only a couple times someone took the time to e-mail me suggesting that they had rights to my domains. (None of those people followed up, by the way.)
But this morning I got “one of those” calls. My cell phone rang at 7:40 this morning, and the person on the other end said, “I see that you own thisdomain.com. I’m sure you’re aware that there’s a trademark for ‘this term’.”
“I’m not aware of that, but I can look it up,” I said. I jumped onto USPTO.gov and searched for the two word term. Indeed, there is a trademark, but it’s for a design plus words, not the word.
“Oh, this is a design patent,” I said.
“So What? That doesn’t matter,” the caller replied.
“Well, your trademark registration specifically says NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “THIS TERM” APART FROM THE MARK AS SHOWN,” I said.
Had the person tried to trademark the generic term, he likely would have failed.
I told him he was welcome to contact me about the domain, at which point he said he had a lawyer. I said great, why don’t you send me an email so I have your contact information. I’m sure we can handle this in an amicable manner.
After I got off the phone I researched the domain some more. The ads on the domain had nothing to do with the topic, it was registered prior to the trademark, and the so-called trademark owner is no where to be seen on the first page of Google (but a number of generic users are). Of course, I grabbed screenshots.
Will he follow up? I don’t know. I suspect his lawyer will suggest he does, thereby generating more fees. The sad thing is, I really think we could come to an amicable solution. As long as he doesn’t rub me the wrong way.
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Tell him to F off.
Now that they have expressed their interest, you should give them a very high price.
Let them file a udrp. It’s a win/win for you.
If you win the case you get a story. If you loose the case you get a story.
I would document all their contact and start the story (if you haven’t already).
Then post the domain and the company here to be an example for all the other over eager jerks out there.
Good luck.
Rob – sad thing is if I posted the company, you would have never heard of it and probably not be able to find it. I don’t think you can even find it on the internet. In fact, state records show the company has been inactive since 2004 for failing to file its annual notice to the state.
The last time I had this happen it was a similarly esoteric company. I still don’t understand why people don’t reach out cordially at first.
Two words: entitlement mentality.
1. Make sure to get digital timestamps of all your screen shots. Digistamp is a good service for this (http://www.digistamp.com/timestamp.htm). Otherwise they would mean nothing in court.
2. Never underestimate what this sort of entity is willing to do. If they need it for their branding they wouldn’t hesitate to file UDRP. There’s no real penalty for them not to. Then there’s always Federal court if they really feel that “entitled”.
@ Rob, amen bro
This is the perfect example of why every domainer needs to be aware of his rights — had this guy pulled this same stunt on a new domainer, he might very well have pulled it off.
@K Thank you for the Digistamp link — will certainly come in handy some time in the future I’m sure.
Messing with the wrong guy! I love it.
My response is simple to such corporate bullying.
I explain to the party 1.) that we do not infringe on anyones intellectual properties, and instead go out of our way to ensure we do not by never parking or creating any revenue from any domain that might be in question to IP and 2.) that I have not solicited their email, and under CAN Spam Act of 2003, any additional unsolicited emails to our company is subject to the $50,000 per incident fine under the act per incident clause and that they have been notified we do not wish to receive anymore unsolicited email, phone calls or mail.
Also, that any additional contact with our company and/or our personnel will be deemed an attempt to intimidate and harass our staff. Should our attorney need to become involved in an attempt of frivolous harassment or an attempt to reverse hijack our assets we will file countersuit for damages including relief of our legal fees which are currently at $275 an hour per attorney. Obviously, I copy our attorney.
Guess what? I never hear back from them!
Works for me every time.
He lucked out that he got nice guy Andrew… If he woulda contacted Howard Neu or John Berryhill regarding one of their domains — oh boy..
If the situation gets nastier, let’s go have lunch to talk about it. I remember when I defended the UDRP filed against my company. I didn’t even get a phone call. I just received cold-hearted certified letters and emails. I would have sold it for much less than what it cost to file an UDRP. But in the end I won. Victory was sweet!
@ Ramiro – Appreciate the offer. Hopefully I won’t have to take you up on it, but we nee do lunch sometime before the special session anyway.