Is it worth going against a big brand Dispute?? Opinions Please

[crvek]

Hi Everyone.

Firstly, thank you if you read this email and shoot some suggestions and responses.

As this might turn to be a big post, my final question will be: is it worth going into Federal Court or auDA Proceedings for a domain name and Who pays the legal fees in case I loose.?

The story goes. I’ve been a Sole Trader Web Developer for few years, and have started doing SEO about a year and a half, which lead to buying domain names from auDA’s drop list that I have a hunch might have a good Page Rank, or have good Search Volume.

Now, some time ago I purchased a domain name that I checked and had many backlinks, so I assumed it will have a great value, and it did (Has Page Rank 5), let’s call the domain name DomainName.com.au

Now, this domain name, as I discovered later on had belong to a Massive Corporation before it went on the drop list, which I'm not sure why they allowed it to drop anyways.

I can't say the domain name as I got a letter Private and Confidential for breaching tones of things, so don't want to get in more trouble than I might be .

Now, this is a massive brand and from DomainName.com.au they hold a trademark on the Domain Part, but I don't think they have it on the Full Phrase.

At the moment, there is only a Website Under Maintenance Page, and my intention is to Sell Online a product that is connected with the name in a way as the second word Name and another word (subcategory) of the second word after.

And thus being a page rank 5 domain name, will definitely help me grow faster as an online shop.

The product is in no way related to the actual service/business of the original company that wants it back.

I already sell the product on a different website (mine again), but because of the closeness of the name and the potential of the product (hand made) it has a great potential to sell here.

So, there is no content on the website that says in any way that I'm related, affiliated or anything of such with the original company,m It's a Under Maintenance page with timer, and a subscribe for re-launch form.

Now, I'm being charged of the following:
1. Passing Off Trade Mark Infringement - The trademark is on the first part of the domain, not the full name

2. Misleading and deceptive content - The domain name implies that you have a connection to the company etc. But, content NOW is under maintenance, and once I'm done with the website (if I decide to do it) it will have no connection again with the company), although the domain name might imply that. However there are tones of wesites "domain*.com.au" available on the internet, and they don't seem to be infringing their trademark.

3. Bad Faith - The domain not connected to my business (there is nothing on the website yet) so how can they judge it is not connected to my business? and it's bought for the purpose of selling the domain name - (I've explained the reasons above, Page Rank, give my product a boost) great value with the name.

4. Breach of registrant Agreement - "Registering the domain name without any connection to the name " - This is true, as I'm registering the domain as Sole Trader through my Website Development ABN (Names have no connection), but I have another 100+ domains registered like this for my clients and for my self, and there are probably more than 50% of the domains on the internet registered like this.

5. Breach of auDA Dispute Resolution Policy - This is I suppose questionable, as I've not put anything to infringe them or bad mouth or similar. It is a similarity of domain name with trademark.

Second Part

Now, I've been given 5 days (2 of them business days) to surrender the domain name (which seems rather unfair, as I can't even get a legal advise on this in that short - I'm just a web developer, don't have 200 lawyers rounded with me to be able to get advice - so I'm trying to get a free advice on what I should do).,

What scares me the most
In the letter it says that if I don't surrender the domain name (which I don't really want to - Page Rank 5 ), they will commence Federal Court or auDA Proceedings and it is inevitable that they will be successful and I'll be ultimately liable for Their & Mine Legal FEES

Now, them being a huge company, me being a person that makes for rent and living, you can see why I am a bit scared of this, they can probably hire someone that costs $1000 of dollars an hour, and if they win, which is the worst case scenario for me, what happens ???? I'll be gone broke in 2 minutes of those fees.

Can you guys advise this - in case I go at court or auDA proceedings, and loose the case? Do I pay for their legal fees and if so any ideas what they might be.

Is it worth doing this?

Again, thanks for reading this, any feedback on this will be much, much appreciated

 

[snoopy]

Should I surrender the domain name
Yes
No
You will pay the fees if you lose
They will pay the fees even in case of lost

C'mon man, you have even said what the name is. It could be one that should be dropped in a heartbeat or it could be a name to fight for.

 

[crvek]

Hi snoopy,

Thanks for the reply, I can't say the name, as I am scared of the "Private and Confidential" clause on the letter - I'm not familiar with the laws, and as I said, it's massive company worldwide so don't want to mess with them publicly either.

It is a Page Rank 5 domain name (first one in my portfolio), so it is definitely worth fighting for.

 

[acheeva]

Fight or Flee@!

Don't be intimidated; the only thing that is bigger is probably their cheque book

Legal advice from a specialist should give you guidance and a sense of direction in less than 1/2 hour (pretty cheap for peace of mind)

 

[crvek]

Hi Acheeva,

Thanks for the reply and for the positive feedback :.

Their cheque book does scare me, but I'm trying to get legal advice (contacted few IT Lawyers) after I got their email, still no reply, and I need to give these guys response in literally 3 business days.

I tried to make it better, I've added a disclaimer that I'm not connected in any ways with them, and if necessary I'll put the website down, until I finish the website.

I will post an update though of what happens :

 

[FirstPageResults]

Is the first part of the name a generic word or a brand?

 

[crvek]

Is the first part of the name a generic word or a brand?

The first part is a brand (trademarked as well).

The full domain name is a known brand (or a variation of it) but it is not trademarked.

 

[soj]

No one here can give you any advice unless we know the name.

"They" chose to make their correspondence to you "private and confidential" - that doesn't mean that you are obligated to do the same. You're entitled to take advice from whatever sources you wish.

If they do go to Court (unlikely); or auDA or auDRP (likely), then the domain name will be in the public realm anyway.

So if you want advice from this forum, you need to be forthcoming.

Or contact Erhan Karabardak of Cooper Mills (on this forum), and make an appointment (even if it's an initial phone consultation). Money well spent.

The threat of Court proceedings etc is Litigation 101. It's designed to scare you into submission. Imho, they aren't going to spend money on Court proceedings without going through auDA first (fee free), or auDRP (small cost to them). If they go the auDA or auDRP route, there is no cost to you if you defend it yourself. Even if you lose.

 

[Joel]

Cooper Mills Lawyers is the first name that comes to mind as they sponsor this forum!

I think its just www.coopermills.com.au

 

[crvek]

Thanks for your replies guys, much appreciated.

I'll speak to Cooper Mills and the replies actually give me peace of mind.

Cheers to All

 

[GGroup]

... belong to a Massive Corporation before it went on the drop list, which I'm not sure why they allowed it to drop anyways.

There are probably more names unintentionally dropped by large corp's than smaller organisations. The larger the company the more internal red tape + cubicle drones = more cracks for things to slip through.
The only things that get fast tracked are marketing and litigation - as you've found out

Don't be intimidated; the only thing that is bigger is probably their cheque book

Legal advice from a specialist should give you guidance and a sense of direction in less than 1/2 hour (pretty cheap for peace of mind)

+1 They always love to tell you how you're going to be left shirtless for your crime against humanity, right from the outset.

If you are at all considering digging your heals in, as Acheeva says, get that upfront guidance. Better to spend a couple/few hundred dollars than to roll the dice on your car/house/savings/etc.

Or contact Erhan Karabardak of Cooper Mills (on this forum), and make an appointment (even if it's an initial phone consultation). Money well spent.

+1 Without doubt.

The first part is a brand (trademarked as well).
The full domain name is a known brand (or a variation of it) but it is not trademarked.

Don't like your chances... and even if surmountable, is it energy better spent on other things? But, as Snoopy says, is all supposition without all the facts.

 

[Billy01]

There is a guy in Brisbane who is brilliant

Just because someone "sponsors Something" doesn't mean they are the be all and end all in my point of view.

Just my 2 cents worth

 

[Joel]

Just because someone "sponsors Something" doesn't mean they are the be all and end all in my point of view.

Just my 2 cents worth

Of course not, they are merely an easy first option.

 

[GGroup]

Just because someone "sponsors Something" doesn't mean they are the be all and end all in my point of view.

Just my 2 cents worth

Worth more than 2 cents if you are able to share your Brisbane contact with us?

 

[DavidL]

To my knowledge, nobody has ever been successfully sued for infringing on a TM in Australia.

Remember to make a claim they have to prove real financial loss by you having the domain AND that you were using the domain in bad faith.

They would also have to spend $20K+++ on a lawsuit instead of paying $2K on a auDRP so it just doesn;t make commercial or practical sense.

They are just trying to intimidate you. If I had capitulated in response to every letter like that I got (not in regard to domains particularly), my business would be severely damaged (this is in automotive and car companies are always having a pop at us).

Forget about the size of the business sending the letter but instead consider the value of the domain to you and how defendable it is and whether you feel, that you are 100% in the right.

Reminded me of a snotty email I got about a domain I owned someone claiming infringement of some sort. I thought their case was very dubious and I would have had an easy time defending it... in any case the name was hardly worth renewing to me so I ignored the email.

Then they came again threatening so I gave them a call and said I really couldn't care less about the name, I didn't want any money for it and they could have it no worries...

on one condition...

that they apologise in writing to me for being rude. The lawyer I spoke to was completely taken aback. I insisted that I wasn't going to comment on their allegation but if they simply said sorry I would transfer the domain to them instead of going through a lengthy and expensive auDRP with no certainty of winning by any means.

They squirmed and wrestled with the idea before eventually saying 'sorry for being rude'. Was funny to see a lawyer almost prepared to spend months of time and thousands of dollars rather than utter the 's' word.

Best $20 domain I ever gave up...

 

[acheeva]

Best $20 domain I ever gave up...

I hope you spent a few bucks on the frame so you can hang a copy in your office@!

 

[Billy01]

David is right

My advice is if you could afford a solicitor make sure they don't have a conflict of interest and telll you rubbish. Other than that his comments above are spot on. Solicitors intimidation letters are fun

 

[findtim]

Been here , done that, i actaully posted it somewhere else but forgive me i will say it again for .

i got rolled over by packer on a domain but now i know better.

this is bullying with a cheque book, the "passing off" bit is really their only hold on their cause, what you do is forget about the product you want to sell and just start a porn site, they can't get you for "passing off" but want to get rid of you, so instead of paying lawyers you end up with a payout and a lesson.

OHHHH i can hear the cringes now, seriously THEY didn't have the foresight to register the name and now they are trying to muscle you out of it, its sooooo wrong.

eg: if they own ballaratnewspaper.com.au and now you own ballaratnewspaperS.com then they will come at you, but if your site is a site that sells newspapers for compost then they have NOTHING they can do. what will happen is you will stop the threats and legal fees and they may just decide to buy it off you, PM me for my personal version of my experience.


anyway thats my rant

hope it helps?

tim

 

[findtim]

i thought this was an interesting part to this story

microsoft didn't renew a domain !!!!!!!!!!!!!!!!!!!!!!

http://www.theregister.co.uk/2003/11/06/microsoft_forgets_to_renew_hotmail/