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This is dirty: HelpScout.net owner files lawsuit against HelpScout.com

Company formed in 2011 claims domain names registered in 2009 infringe its trademark.

Brightwurks, Inc., which owns support service Help Scout, has filed an in rem lawsuit (pdf) against the domain names HelpScout.com and Help-Scout.com.

Here’s what happened:

In 2009, Andy Eder of Germany registered the domain names.

In 2010, the plaintiff registered the domain name HelpScout.net and started building a business on it. He obviously chose the .net because the .com was taken.

In 2011, the plaintiff started using the term “Help Scout” in commerce and filed a trademark application that was registered in 2012.

Starting in 2011 the plaintiff started reaching out to Eder about buying the domain name. After not having luck reaching him, the plaintiff sent another communication and offered $5,000 for the domain:

helpscout-offer

Eder responded asking for a six figure sum.

So Brightwurks, Inc. did what any ill-minded company would do when it realized someone rightfully owned a domain name it wanted: it filed a UDRP.

The UDRP was dead on arrival because Eder registered the domain name before Brightwurks started using the Help Scout brand. Unless Eder is psychic, he didn’t register the domain name in bad faith.

Having lost the UDRP, Brightwurks decided to file an in rem lawsuit in Virginia against the domain names, claiming cybersquatting.

The suit does mention that it lost a UDRP for the name, but claims that the panel didn’t address the fact that Eder renewed the domain name in bad faith. This is the argument that if you own a domain name and someone else creates a brand around it, then the owner should for some reason relinquish the domain name rather than renew it.

Hopefully the judge will see through it, and hopefully Eder will defend his domain names.

[Update: the parties settled and Brightwurks now owns the domain name.]

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  1. Brad Mugford says

    “The suit does mention that it lost a UDRP for the name, but claims that the panel didn’t address the fact that Eder renewed the domain name in bad faith.”

    Extremely shady.

    I am dealing with an over aggressive lawyer right now in regards to the same “renewal” issue involving a generic term.

    Brad

  2. Meyer says

    Another startup that thinks they can bully a domain owner into giving up his domain for peanuts.

    Eder needs to contact a lawyer in the U.S. to fight this lawsuit. Or negotiate a settlement. Hopefully, Eder doesn’t think if he ignores it, the worse case results, he will only lose the domain.

    If he loses this lawsuit, he will lose the domain plus he will need to pay all of the cost of court fees and lawyer fees.

    If he doesn’t know who to contact, maybe he should start with
    John Berryhill or Stevan Leiberman.
    John at JohnBerryhill .com (near Wash, DC)
    Stevan at APLegal .com (in Wash, DC)

  3. John says

    Domainers should start a fund that pays for legal to defend & sue for damages against these type of idiots. These types need to get the message that there is nothing wrong with legitimate speculation and that you can’t just steal from property owners by filing lawsuits and hope one cannot defend themselves.

  4. Observer says

    The other day I commented in Rick’s blog that domainers should get united to protect their own rights and interests by establishing an institution that will help financially and legally the legitimate domain holders fighting against predators. An organization that gives “real” help to legitimate domain holders !!!

  5. Larry says

    Well in all honesty the owners of helpscout.com are being quite the hogs. As opposed to merely pigs. (You know hogs get slaughtered, pigs get fat.)

    Trying to negotiate to get $330,000 for this domain (according the pdf) is quite ridiculous. Why not just ask for 1,000,000? Why stop there?

    The people wanting the domain are betting that by the shock and awe of the lawsuit the seller will reevaluate their thinking.

    Now for all I know they might have done the same thing if the seller asked for $50,000 but at least they would have thought that was a bit more reasonable.

  6. Brad Mugford says

    Larry,

    I understand what you are saying regarding pricing, but it has no impact on the legal rights.

    You either have a legitimate interest in owning a domain or you do not. If your interest is legitimate you can ask any price you want.

    HelpScout.net decided to launch their business on a .NET. They chose the brand, they chose the domain. What they are doing now is a classic RDNH attempt and they will have to live with the negative impact it will probably bring.

    Brad

    • Larry says

      Brad – Fair enough.

      But look at it this way. If someone is going to be unreasonable in selling a domain name then the other side can also be unreasonable and use unconventional legal methods to try and get the domain name. And even use a argument that doesn’t stick. (I guess you could call this “death by legal fees”). Large companies do this quite frequently.

      Notice that I’m not saying they should give them the domain for $5000 or even $25,000.

      And you could argue that saying “not for sale at any price” is like saying “give me a million dollars” and could also upset the company that wants this domain as well.

      Clearly helpscout made a mistake by branding under that domain. But on the other hand there is exactly 1 buyer for this domain at a decent price we all know that. This is not a 2 letter domain and it’s not something that any of us would be able to sell for any high price to anyone anytime soon.

      Consequently it pays to be reasonable in your asking price in order to make the buyer feel that you are at least on the dartboard and not trying to take (to much) advantage of them. Because that (what happens here) causes them to use the nuclear option. Or to simply do something out of spite that isn’t in their best interests (and won’t get you any money).

      Let’s take this one step further. Let’s say the plaintiff loses the lawsuit. Then what? Does that mean they will part with $500,000 for the name?

      Very possible that the seller will not only be out legal fees but will walk from the deal at a certain point. Who else is going to buy this? It’s a hot potato. The lawsuit means there is really only one buyer for the domain now. It’s damaged goods.

      Lastly anyone who thinks this is an opportunity should strike a deal with the owner of the domain. Say to them “I will give you $100,000 today and also give you 50% of whatever I get if I ever sell the domain”. Keep the domain in the current owners hands but be their partner. (Go ahead and toggle the arbitrary figures I used.)

      Any takers for that? I doubt all the big talkers would take that risk.

      So passing up 100k for this domain is no trivial thing. Anytime you turn down an offer you are betting you will be able to sell for more at some point.

      Make sense?

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