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Backorder Auction Domain -I Own TradeMark -Protocol?
Best practice -you own trademark to domain put up for auction
twohawks




msg:4320855
 3:53 am on Jun 2, 2011 (gmt 0)

Hi all,

I own the trademark to a name specified in a dotcom going up for auction, and being made available for backorder at NameJet, and I don't quite understand the typical/appropriate protocol for walking this problem down.

Example, the name is <ourtrademarkname>, and the domain being held by the registrar and being released for auction is <ourtrademarkname>.com

How would you approach this (best approach toward successfully obtaining the name)?

Btw, just to mention, I have been reading a lot of (horror) stories of how people have been taken advantage by some of the name-drop registrar "players", like filing for backorder, and then even after winning auction having a name withheld and/or re-auctioned, or having the deal nullified and then having to negotiate a large fee to buy it from the registrar - kinds of things. Not just a handful of people are reporting suspicious practices either (as I would suspect is no surprise to anyone).

So then also, from what I have been able to gather, I am of the opinion that at a registrar that doesn't keep backorder registration private (like NameJet for instance) it is probably best not to backorder until and unless you reach a "strategic moment" (so to speak) that may warrant doing so.

I am not a drop-catch player, I am just a business person trying to obtain the name that is our trademark since it has become released.

Your reflections?
Cheers,
TwoHawks

 

twohawks




msg:4320859
 4:20 am on Jun 2, 2011 (gmt 0)

Hmm, adjusted my search (believe or not I searched for sometime and did not find this) and turned up a post from sp2010..
[webmasterworld.com...]

...which essentially indicates how "the registrar is under no obligation" to accomodate the trademark holder, i.e., there would be no sensible or viable recourse in taking it up with the registrar, so that would seem to leave it with the tradmark holder to simply try and get the name.

So then I imagine if we lose the backorder/auction process that the next logical step would be to approach the new registrant with an explanation and an offer to buy it from them.

Further, I would think that if they are a US-based entity that they would have enough impetus to not presume to jack the price up "unreasonably" because its not lawful.

I imagine there would be nothing stopping an unscrupulous party from "ganging" into an auction so as to cause the initial sale to be a fairly large sum - to one of their own, so that when we come a-knocking they can demand a larger sum, but then what kind of greater profit could they hope to net from that anyway?

Is this just meaningless musing, or are these reasonable notions to consider?

incrediBILL




msg:4320863
 4:46 am on Jun 2, 2011 (gmt 0)

No need to second guess the process, there is a policy on ICANN domain trademark disputes clearly laid out:
[icann.org...]

Webwork




msg:4321049
 1:28 pm on Jun 2, 2011 (gmt 0)

You might forward competent proof of your trademark to NameJet with a demand that they cease and desist in trafficking in and profiting off the sale of your lawful trademark.

Of course, depending on the domain (generic, descriptive, broad application), the strength of the trademark claim, the national legal system supporting the claim, etc. - and on whether NameJet has access to their own legal counsel (I assume they do) - NameJet may simply ignore your demands and protests.

incrediBILL




msg:4321054
 1:38 pm on Jun 2, 2011 (gmt 0)

NameJet may simply ignore your demands and protests.


Wouldn't be smart because once they know there's a legal demand on the name and they sell it to someone that immediately becomes a target to a lawsuit, doesn't that put some culpability back on NameJet by the new owner?

Webwork




msg:4321072
 2:05 pm on Jun 2, 2011 (gmt 0)

iBILL, sometimes a lawyer (in this case possibly NameJet's lawyer) advises a client that a claim is utterly lacking in merit, unfounded, unsupportable, etc. and advises the client to "simply ignore it". Why? Because sometimes the very act of responding to an utter BS claim only serves to fuel the actor, i.e., a troll.

All depends. Will a lawyer/solicitor be sending the C&D letter? Will it be well reasoned and supported by evidence of a bona fide claim?

Whether to ignore "a claim" (Ex., a letter by a crank/wacko/fool/overly confident whatever/seriously misinformed over-reacher) is a judgment call. I've made them and lived to tell. ;)

In theory NameJet is "on notice of" a potential claim in probably dozens if not 100s of their auctions each year. I suspect this "possibility" is covered in the terms of service, so filing a lawsuit against NameJet - based upon a claim being filed against an auctioned domain - could well result in a summary judgment (based on TOS) dismissing the claim (for contribution, indemnification, losses, etc) AND an award of counsel fees.

Like I said: "All depends". Which is legalspeak for "I'm not being paid enough to collect all the facts and apply the law, predicates to me giving an actual, actionable legal opinion." :P

twohawks




msg:4321170
 5:23 pm on Jun 2, 2011 (gmt 0)

Excellent input, JL, thank you so much for posting.

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