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Accusations of IP infringment as a negotiating tactic?

Discussion in 'Domain Name Disputes' started by keys, Dec 2, 2016.

  1. keys United Kingdom

    keys Well-Known Member Full Member

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    I have a short genric uk domain, worth £x,xxx or more on a good day. Lawyers for a US TM holder politely asked for a price, and I replied with a reasonable (low) figure assuming a straightforward transaction.

    I find it annoying that they now use spurious allegations of IP infringement as a negotiating tool. This is not about the merits of a possible dispute, I am happy to respond to any formal action. They allege cybersquatting, but it is almost certainly the reverse.

    If I had quoted a high price then I would say fair enough, but in this situation I am inclined to end discussions. What would you do?
     
  2. Domain Forum

    Acorn Domains Elite Member

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    articles.co.uk
     
  3. lazarus

    lazarus Active Member Exclusive Member

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    I would send one final letter with a price and link to your payment page.
     
  4. martin-s United Kingdom

    martin-s Well-Known Member

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    I would cancel negotiations - forcing any future price up.
     
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  5. atlas Canada

    atlas Well-Known Member

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    Difficult to say without knowing the details of the conversation, but I'd make them work for it - ask for details of their claim, proof of use, trademark details, etc. Point out any weaknesses in their claim. Put them on the defensive.
     
  6. Edwin

    Edwin Well-Known Member Exclusive Member

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    Don't get trapped into playing their game. It's quite possible they have a valid trademark even if the domain is generic - trademarks are limited to one or more classes, and don't normally preclude use in other classes. Also, you normally can't trademark a generic in the class to which it applies. So for example "lawnmower" could be trademarked in the stationery class but not in the class that covers devices for mowing lawns.

    By asking for proof or even talking about their trademark, you're opening the door wider to a possible claim because you're acknowledging the possibility that they are right in their assertion.

    If the term is genuinely 100% generic then their trademark should be irrelevant as long as you use the domain in a non-infringing way.

    Of course, if the content visible at the domain name infringes on their trademark class (or if it's not really generic) then all bets are off.
     
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  7. timter51

    timter51 Well-Known Member Exclusive Member

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    I had a similar situation recently... polite enquiry on price, I got back with what I believed was a fair price (low £xxxx) to negotiate around, the first email I get back was threating a DRS. It's a 100% generic term and they don't own a registered trademark, their threat was solely based on the fact they've been trading under the name for 25 years, and they had been advised they had a "very good chance" of obtaining the domain "through official channels". I didn't even dignify that email with a response...
     
  8. Skinner

    Skinner Well-Known Member

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    In situations like this, where I'm on 100% solid ground, I politely inform them, I can no longer converse with them, and will await any further contact from their counsel or representative which will be handled appropriately.

    It also adds 33% extra on to my asking price when they come back. .
     
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  9. max_rk

    max_rk Active Member

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    I have seen many tricks, can't say all but certainly few of those. As far as DRS goes, if they make an offer to purchase domain from you prior DRS they are acknowledging that you have rights associated to domain name, beyond rights of domain registration. This simple argument can turn DRS case on its head. It worked for me.

    My suggestion never fear, never acknowledge their rights (registered or gained) and fight your corner with initial price you have set.

    Putting price higher or lower can be taken against you, because you have made this decision based on information provided by them. You implying that you partly agree with them or trying to use the newly found information for your gain.
     
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    Last edited: Aug 2, 2017