Unfair claim on domains....

[Demografix]

Hi
I will not mention any domain names or any of the particular companies involved. Or should I?
I registered an AU domain for a US penny auction site as the .com.au and started negotiations with them regarding investigating a partnership between my company and theirs. I wanted to become some part of an Australian operation and felt I had the background and experience to add value to the deal.
From a direct positive conversation, including registering global domains, with their Chief Marketing Officer, she informed me that she would take my proposals to the CEO. While awaiting the CEO's response I registered many top level country domains for their site. To my amazement, they had not registered any and I felt that the domains should be secured asap as an act of good faith. At all times I indicated to them that I was happy to pass the domains on at my costs.
Then, I get an accidental email sent from their CFO to their CTO saying "No we will not negotiate with terrorists". Well our soldiers are dying with the yanks and this set me off. I gave them a what for and changed the cost price to $50k in protest to this slander. They followed this up with claims I was cybersquatting and demanding them for nothing, or else.... I am not cybersquatting.

Well now I have a adrforum.com claim under way, or at least it appears so and I am to defend my rights.
1. I did not register the domains in bad faith and it was done with full support of tppinternet.com.au and with the knowledge of xxxbids

Can anyone offer some advice as to the response required to get the claim dismissed?
I got sent an email as aCC to the claimant wanting to change a few minor details.

Thanks
Paul

These are the domains I have. Are all under a Uniform policy?
xxxxxxx.ae
xxxxxxx.asia
xxxxxxx.biz
xxxxxxx.ch
xxxxxxx.com.cn
xxxxxxx.com.hk
xxxxxxx.com.sg
xxxxxxx.com.tw
xxxxxxx.hk
xxxxxxx.info
xxxxxxx.jp
xxxxxxx.mobi
xxxxxxx.ru
xxxxxxx.sg
xxxxxxx.ws

 

[Lucas]

Are the domain name/s a registered trademark? (search here - www.ipaustralia.gov.au/trademarks/search_index.shtml)

 

[DomainNames]

wait till the file a dispute. In the mean time make sure you do something with the name that does not infringe on them. When they file the dispute come back and post it here and Im sure some might offer some advice.

They might not file a dispute so in the mean time dont talk anymore to them and do your own thing with it.

If you registered it know its their brand etc then I would not put too much effort into trying to keep it but dont give it to them until you are forced to by the regulatory body or court.

it would be a mistake to register something like ebay.com.au and approach ebay.com saying you wanted to help them in australia etc etc.. please tell me you didnt try something similar and the name you chose is a generic?

 

[Demografix]

It is not a generic name.

 

[Demografix]

Are the domain name/s a registered trademark? (search here - www.ipaustralia.gov.au/trademarks/search_index.shtml)

Not in Australia, no. They are in the US.

 

[snoopy]

Hi
I registered an AU domain for a US penny auction site as the .com.au and started negotiations with them regarding investigating a partnership between my company and theirs. I wanted to become some part of an Australian operation and felt I had the background and experience to add value to the deal.
From a direct positive conversation with their Chief Marketing Officer, she informed me that she would take my proposals to the CEO. While awaiting the CEO's response I registered many top level country domains for their site.

Just because one person at the company reacts positively does not mean they approve of anything nor does it mean their lawyers won't say "start a dispute" as soon as they hear what is going on. Registering the name and then trying to negotiate is a really bad move assuming the name is a brand name.

*If* they are really about to file a dispute and you want to avoid a dispute your only real option here is to offer to transfer in my view. Likely they'll need to file a whole lot of disputes to get them all given they are in various cctlds/gtlds etc. If this is a big company I'd be really careful here. Asking for an apology is likely to antagonise.

 

[Lucas]

Hmmm - I'm not too sure then. If they had an international trademark then you would not have a leg to stand on if you were to put up a penny auction site.

There are lots of ins and out which I will not go into, but my only bit of advice would be don't let them bully you into handing over the domains just because they say you should. Read up and see what your rights are. If you find you really dont have any rights cop it on the chin and handover the domains because as Snoopy pointed out if they have deep pockets you need to be really careful as the alternatives could be ALOT more expensive than the rego fee on the handful of domains you registered.

 

[Demografix]

Hmmm - I'm not too sure then. If they had an international trademark then you would not have a leg to stand on if you were to put up a penny auction site.

There are lots of ins and out which I will not go into, but my only bit of advice would be don't let them bully you into handing over the domains just because they say you should. Read up and see what your rights are. If you find you really dont have any rights cop it on the chin and handover the domains because as Snoopy pointed out if they have deep pockets you need to be really careful as the alternatives could be ALOT more expensive than the rego fee on the handful of domains you registered.

I have a peeny auction site and it is not conflicting with their trademark.
I was also in discussions with another international player in swoopo at the same time.
Will it cost me anything to defend the claims if I do the responses?

 

[Demografix]

Just because one person at the company reacts positively does not mean they approve of anything nor does it mean their lawyers won't say "start a dispute" as soon as they hear what is going on. Registering the name and then trying to negotiate is a really bad move assuming the name is a brand name.

*If* they are really about to file a dispute and you want to avoid a dispute your only real option here is to offer to transfer in my view. Likely they'll need to file a whole lot of disputes to get them all given they are in various cctlds/gtlds etc. If this is a big company I'd be really careful here. Asking for an apology is likely to antagonise.

The one person was their chief marketing officer and no just a someone. The first conversation was for one hour with her and included global domain registrations and the transfer of all domains at costs.
Calling me a terrorist was antagonizing me and they owe me that at the minimum.
So, in you opinion, regardless of good or bad faith, hand them over?

 

[snoopy]

The one person was their chief marketing officer and no just a someone. The first conversation was for one hour with her.

That doesn't mean she has any legal knowledge.

Calling me a terrorist was antagonizing me and they owe me that at the minimum.
So, in you opinion, regardless of good or bad faith, hand them over?

Didn't you say the email was sent to you by accident?

I think you need to take it on the chin that that is what they thought, the whole approach is really bad in my view and encourages this kind of thing. Because by registering a name that matches their brand name and suggesting a joint venture, from their perspective you are holding something to ransom.

 

[Demografix]

That doesn't mean she has any legal knowledge.



Didn't you say the email was sent to you by accident?

I think you need to take it on the chin that that is what they thought, the whole approach is really bad in my view and encourages this kind of thing. Because by registering a name that matches their brand name and suggesting a joint venture, from their perspective you are holding something to ransom.

Correct, she may not have any legal knowledge, however she is their chief marketing officer and public relations officer. She is an executive within the company and it was implied by her that we should pursue the opportunity to their CEO. She could have said no, and I would not have registereed any additional domains.

Yes, email by accident and slander from the CFO to the CTO, the man charged with dealing with me and covering my costs to transfer the domains. Then it went sour after the unfortunate accident.

I repeat I was prepared to give them the domains at my costs whenever they said no. This was not their initial approach and I am not holding them to ransom at all.

 

[Lucas]

Have you seen this post: http://www.dntrade.com.au/groupon-com-au-dispute-trademark-t1923.html

The case described seems to have similarities to your situation. IE they agreed to collaborate at first then things went bad:

Simon Mochkin and Eli Feiglin incorporated One Sale A Day Pty Ltd on June 30, 2008 after registering onesaleaday.com.au and 1saleaday.com.au on May 20, 2008.

In October 2008, Mochkin and Feiglin contacted Federman to establish a "1SaleADay" website in Australia. A verbal agreement was reached for them to begin a "1SaleADay" business in Australia.

According to the WIPO documents, for the next two years there was disagreements about the use of the 1SALEADAY trademark "over sale of certain goods and services" and about the non-payment by Mochkin and Feiglin of invoices supplied by Federman.

On May 12, 2010, Federman "sent a cease and desist letter" requesting that the pair no longer use the 1SALEADAY trademark. The respondents "did not respond to this letter" and "continued to operate the website".

Same source as in that other post: http://www.itnews.com.au/News/236114,wipo-shuts-down-1saleadaycomau.aspx/2

 

[snoopy]

Correct, she may not have any legal knowledge, however she is their chief marketing officer and public relations officer. She is an executive within the company and it was implied by her that we should pursue the opportunity to their CEO. She could have said no, and I would not have registereed any additional domains.

Did she tell you to register all those domains?

I repeat I was prepared to give them the domains at my costs whenever they said no. This was not their initial approach and I am not holding them to ransom at all.

If registering that name was not done to and get some type of advantage with them why did you register it in the first place?

Personally I don't think you are going to get anywhere with this, I can't imagine an arbitrator siding with you, registering a brand name then approaching them looks bad, there is no way around it. You might think you are in the right but I think the average person with legal knowledge would disagree.

If it were me I'd be transferring the names and best case scenario trying for registration fees. I wouldn't go anywhere near trying to get an apology, it is just asking for an escalation of the dispute. The last thing you want is a company claiming damages and legal costs because you have antagonised them by trying to lay the blame at their feet (regardless of how you see it). The best thing you can say to them now is as little as possible. Resolve the situation and move on, it isn't worth 5 seconds of debate.

 

[Demografix]

it isn't worth 5 seconds of debate.

Ok, advice taken and acted upon. I will email them with my direct costs for registrations & transfers etc.

thanks. I appreciate your input.

 

[Demografix]

Claim lodged.

What details of the claim can I post here?

I did not register the domains in bad faith, as I clearly stated from the first discussions, that I would transfer them at costs. I have not used the domains and the Complainant agreed to a $1500 fee and continued to bully.

Can I post my response?

 

[snoopy]

I'd say you have two choices here,

1. Let the case proceed and face the reputation damage of a loss with all the strange stuff that is going on with this case, like trying to get a job with them and asking for 50k (think about future employers who might stumble upon this).

2. Try and get them to agree to the transfer and get the whole thing to go away,

You aren't doing yourself any favours trying to defend this or holding out for any kind of payment such as costs. What I read of the above documents didn't sound good at all.

 

[hadhad]

...

 

[Rhythm]

At the end of the day they knocked backed your proposition, but you seem forward-thinking and creative enough to leave this battle behind and get to think of an idea YOU can make a reality and where YOU are in complete control of the business, not just working for a company that doesn’t appreciate your talents…

Exactly.

 

[Demografix]

update

thanks for the comments, all noted.
yes i agree i should just walk away, however I want to try at least to defend the claim, as they were not registered in bad faith at all.

 

[Demografix]

I did not register or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant whom I recognize, is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of my out of pocket costs directly related to the domain names.