Trademark trouble

[gpilling]

I purchased a company foreclosure in the past year. An enormous quantity of stuff, and I have been selling it online, on ebay and wholesale. I purchased all the physical assets of the company, but not the intellectual property. The IP buyers got the tradename, the website (widget.com) and the rights to the designs of the widgets. They had not purchased the domain name widget.net, so I bought that and set up a store. It became the number two listing on Google for the tradename and then the IP owners got upset. It seems they are currently relaunching the product line and don't like my severely discounted product being right there with the new stuff.

Rather than fight a battle I would surely lose, I have agreed to give them the domain name. What I would like to do is somehow transfer the traffic and ranking to the other domain name I have selling the widgets.

Does anyone have any ideas?

[unperturbed]

As you know longer have the domain I think about the only thing you can do is to try and change any links to widgets.net to your new site, you may also want to email customers to notify them you've changed domains.

[callivert]

Rather than fight a battle I would surely lose

I hope you got legal advice on this before throwing in the towel.
It doesn't sound like a clear-cut case to me. Or I should say, it sounds like there's a case to be made that you have legitimate rights to the dot net. (again: as a layman! I'm not a lawyer)

[gpilling]

My lawyer told me that I would lose - which I suspected from the start. The lawyer is a specialist in intellectual property. I hired him because of all the other restrictions that they are trying to force on me. Fortunately, as far as keyword use goes, the disclaimer I was required to put on the bottom of each page uses the brand name four times - the brand name being the most important keyword. Lose the trademark battle, win the SEO war... or so I hope.

[HuskyPup]

My lawyer told me that I would lose

Crap lawyer then...IMHO!

[gpilling]

the trademark owners are a billion dollar per year company - or about a thousand times my size. Better to give up than fight for an 8 dollar domain.

[Jon_King]

Federal trademark lawsuits are expensive. Very expensive. Been there.

[callivert]

Federal trademark lawsuits are expensive. Very expensive. Been there.

Perhaps I've got this all wrong... but if this is just about the domain, isn't that decided by ICANN? No Federal court in sight? They lodge saying they want the domain, there is a hearing, and the committee (or whoever) makes a decision. Worst case scenario, you have to hand over the domain.
Am I missing something?

Better to give up than fight for an 8 dollar domain.

If it was really worth 8 dollars, they wouldn't be asking you for it, and we wouldn't be having this conversation.

[Webwork]

"Am I missing something?"

Yep. You are. :)

WIPO isn't the final arbiter. If you decide that the arbitrator(s) was misguided, biased or just plain wrong or wrongheaded you can file a civil action to settle the matter, which arrests the WIPO/NAF/Other decision. No turnover until the court hearing is resolved.

[timwestla]

Worst case scenario, you have to hand over the domain.

I would have done the same as gpilling. WIPO or NAF would have most likely handed the domain to the IP owner for around $1500. So it's not worth any more than that. I don't think it's worth the time and effort.

[gpilling]

Actually, we are still discussing whether or not I "damaged" their trademark. I have had to notify my general liability insurance about this potential "advertising injury" and we are currently trying to complete the satisfactory result. My lawyer tells me not to worry, and I am not. But I do still get to go through the motions of it all.

The trademarked name in question was a made up word, and had been in use for 50 years. The company owning it has a very sloppy internet department, because they still haven't even redirected it, let alone paid the bill on their main domain. The number one result for this tradename goes to a parking page. I am just glad I didn't manage to buy that domain from SEDO for a bunch of cash, only to lose it later.