Legal Question in Technology Law in California

Re: Domain name registration

Sounds like there is no harm in talking. As you characterized the facts, it would apear the NJ entity has merely an interest in your domain name. So long as that entity is not a NJ company with names such as Johnson and Johnson or Merrill Lynch, they are probably merely interested in your willingness to part with the domain name. If you give them your story behind the registration and let them make the first offer to transfer the name, you might make a little money off of your venture even before the main business gets off the ground, that is if your willing to use another name.

Be careful not say too much, let the other guys do the talking as they have approached you. Note that trademark law does not look kindly on individuals (Cyber pirates) that register domain names for the purpose of selling the domain names to trademark owners of the same name. Should you decide that selling the domain name is an option, it is important that you do nothing to appear as a cyber pirate.

If they do claim legal rights in the domain name, then you may want to review your matter with an attorney.

Regards,

Don

Re: Domain name registration

There are a number of factors determining whether or not the New Jersey company could successfully sue you for "cybersquatting". If you wish to keep the name, it is important that you consult with an attorney who is an expert on domain names in order to respond properly and give you the best chance of keeping the name.

I teach other lawyers and law school students about trademark and domain name related issues.

Re: Domain name registration

The other attorneys did not mention that you might want to seek legal assistance in selling the domain name, but I am sure they would all be happy to help with the transaction. I have represented domain name registrants on a contingency basis in sales of domain names; perhaps other attorneys would make the same deal.

One hint if you decide to call the attorney yourself: there is a Ninth Circuit opinion which states that mere registration of a domain name is not infringement, but if the registrant offers to sell the domain name to a trademark holder then it becomes infringement. The safer course for the registrant, it seems to me, is to wait for the trademark holder to make an offer to buy...

Feel free to call me if you have questions. I can be reached at (650) 842-8481.

Re: Domain name registration

The preceding answers don't leave much to say. A client of mine was threatened with suit under the federal "Anti-Cyberquatting" law. After some research and some negotiation with the prospective plaintiff, we sold them the disputed domain name for a quarter million dollars. That was in 2000; doubt they would go that high today.

Your position as a threatened domain-name registrant is MORE defensible if the following DO NOT describe the situation:

(1) The prospective plaintiff's trademark name that you may be infringing is VERY WELL KNOWN (Coca-Cola, Merck, IBM, etc.)

(2) You registered the name with no intent to use it yourself.

(3) You have knowingly used the domain to siphon business, "hits," etc. away from another company or domain.

(4) You are in the business of reselling domain names.

(5) You initiated an effort to sell this domain name.

If none of these factors describe you, you have little to fear.

Re: Domain name registration

There's no harm in calling, just be careful not to agree to anything or to admit any wrongdoing. The attorney may be offering to buy your domain name, and since you aren't using it that might be something worth pursuing. Such transactions are commonplace. If the lawyer's letter didn't say you were infringing on his client's rights, there is a good chance that this is what he has in mind.

There is a Uniform Domain Name Dispute Resolution Policy administered by an organization called ICANN, which is a quick and relatively inexpensive way to resolve domain name disputes. If the other business claims to be entitled to your domain name and if you can't work out an agreement, this is most likely where the dispute will be resolved.

If you did not select the domain name with the intent to pressure the other company into buying it from you, you probably have little to fear. Even if they can show a superior claim to the name (and I won't go into all the details of what that entails), the tribunal will only award them the right to the name and will not sanction you for an innocent mistake.

Even if they claim to be entitled to the address, it may turn out that their position is relatively weak. If that proves to be the case, they may be willing to negotiate a purchase price for the address.

If they do threaten you and if you, *then* you might want to call a lawyer. If you have no intention of using the name anyway, you can offer to give it to them in exchange for a release of all claims against you. Chances are that they will agree.