Having closed yet another successful sale via the Domain Name Sales platform, I can safely ‘vent out‘ – now that Escrow.com has disbursed the funds.
Humans are far from being perfect, and sometimes childish fibs are involved in an otherwise professional transaction. The ability to contain these obvious “white lies” can make or break a domain transaction.
In this particular transaction, I was approached by a buyer whose contact information pointed me to the direction of a small business owner and trademark holder.
As soon as I determined that their trademark was recently granted, my price expectation for the domain remained unchanged; having acquired the domain name in 2009, it predated any use of the mark by the buyer – by almost three years.
And so, a game of cat and mouse began.
My buyer, nonchalantly expressed interest in the domain, dropping the notion that he’s looking into alternative, “5 letter .com domains”. Obviously, being aware of the exact trademark match to my .com, gave me confidence with my pricing scheme.
I gave the buyer plenty of breathing space after my initial quote; his offer was 50% lower, a price that I wasn’t willing to negotiate dramatically.
When knowing the buyer’s exact identity, domain assets and other such information – which Domain Name Sales provides in a remarkably easy to utilize format – you have a great advantage.
In order to succeed in the domain investing game, research is fundamental, but negotiating skills complete the job.
One has to remain firm when needed, and let go of the line when necessary; just like when fishing for big fish in the open sea.
The buyer ended up taking my asking price right before Christmas, and the sale is yet another reminder that even when a domain buyer owns a trademark, they can still pay a fair price for a domain you acquired before their mark’s registration.
Happy end of the year wishes to all.
Well done, It often surprises me that the TM owner ignores or forgets his registration in (more often then not) one category of many. The domain registrant often has a plethora of existing use channels to claim his own TM credentials on.
Thanks for sharing. I have noticed on a few of my domains trademarks registered after my domain registration. Question – in such cases is the only potential buyer the trademark registrant or does your pre-trademark registration allow other buyers?
Jonathan – Similar trademarks can co-exist in different classes. In the case of domains that are developed, parked or simply “for sale”, other factors weigh in.
Leonard – This is a very interesting subject, and it clearly requires the feedback of a legal expert, which I am not. Generally speaking, if a tm holder initiates contact for a domain predating their mark, it’s a matter of agreeing on a price. The reverse, might not yield the same results.
From what I’ve seen in several UDRP decisions, the exact use of a domain that is generally “available” for sale, can be a deciding factor, should the case take a legal avenue. In other words, if you hold a domain that predates a mark of which you become aware of, you should ensure the use of the domain does not infringe the mark by acting upon the same class of products or services.
Leonard a change in ownership is considered as a new registration as far as UDRP is concerned. So if you buy such a domain then your domain registration will postdate the trademark.
In any case, like Theo said, usage is key to not having any trademark troubles.
Acro – The TM factors are clear when one is aware of a USPTO application or TM registration. I am not aware of a one stop international TM version of Whois for search queries, the current system is fragmented, the TM journal is a vehicle that transfers risk to burgeoning e-commerce system. Anyone aware of an international one stop TM search. love to register on it ?
Kosta – While there are UDRP cases that used that approach on behalf of the Complainant, the notion that a new registrant e.g. via a sale is somehow a valid reason to grant a domain to the Complainant via UDRP is incorrect; other factors are equally weighed in.
Jonathan – To display awareness of a mark’s registration, one needs to do so publicly, e.g. via communication with the tm holder that asserts rights to the mark. Otherwise, there are hundreds of tm’s registered daily, one cannot be aware of all of them even if they willingly did so. I agree, the tm research system is fragmented, but there is the USPTO for US trademarks, and another one for European marks.
Theo I simply stated what is a UDRP fact.
I was very careful with what I said. I didn’t make any mention of a “decision” or a “transfer” or anything similar.
This is true no matter what the case is or the domain name is:
“A change in ownership is considered as a new registration as far as UDRP is concerned. So if you buy such a domain then your domain registration will postdate the trademark.”
Kosta – There is no ‘cast in stone’ white paper that supports that exact statement. Some panelists – albeit, the ones with an agenda towards supporting tm holders without a case by case distinction – have used this approach when delivering a decision. But it’s not a fixed element, merely an argument that can also be countered.
Simple.apply for a trademark for your name as that will give you first use you only have to apply for future use and not actually need to use it for at least two years.
No Theo, it’s not an argument.
This is UDRP “law”: “A change in ownership is considered as a new registration as far as UDRP is concerned.”
There is not a single panelist and not even a single (serious) respondent that has ever claimed otherwise.
The only exception is if you transfer the domain to maybe some other member of your family or if a company changes names etc.
So there is no UDRP advantage in buying aged domains if a trademark already exists.
One can & should be aware of TM’s ; Whois deals with millions of changing registrations. The TM’s bite your veins globally, North America – Europe = USTPO & WIPO small % of what’s evolving. The game is about transferring risk, the TM system will simply refer to the TM journal and or your right to legal recourse. Not good enough.
Kosta – Glad to see you placed “law” in quotes, because no such thing exists. The UDRP process seeks to satisfy three elements, in order to transfer a domain to the Complainant, none of which employ a “law” but rather, depend on prior decisions. That being said, *some* panelists have chosen to consider a change of ownership as a fundamental point that works against the Respondent; however, this is merely a choice of direction as adopted by a – rather small – number of panelists and by no means the norm. In fact, old, aged domains do change hands daily, without any repercussion from existing marks, particularly when the new owners utilize these domains to roll out products or services in classes remote from those of tm holders.
Bottom line: when hit with a UDRP, one should utilize the services of a qualified IP attorney to effectively fight any notions that they are slated to lose the domain to a suitor armed with a trademark.
Happy new year.