Do I have to hand over my domain name in response to C&D?
January 18, 2011 8:24 PM   Subscribe

I have a website that sells trademarked, but hard to find items that you can't find in stores. I just got a cease & desist letter from the manufacturer demanding I close the site and hand over the domain to them. Should I do that immediately, or do I have some other options?

The domain name actually contains their trademark in it (that was a mistake, I know, I'm a beginner to online e-commerce). I have no problems shutting it down.. and I was thinking to do the same business from a different domain name - one that doesn't contain their trademark.

But do I have to hand the domain name over to them? I put a lot of time, money and effort into this... just so they can start selling the same thing? Is it realistic to try to sell it to them? I don't have legal resources to fight their threat, but is it an option to negotiate and try to cover some of my costs?
posted by anonymous to Law & Government (6 answers total) 4 users marked this as a favorite
I think you need to talk to an actual lawyer re: handing over a domain name, though. Maybe you will get lucky and one of the Mefi legal types can comment. Where are you--can you research the laws in your country?
posted by emjaybee at 8:33 PM on January 18, 2011 [1 favorite]

I am a lawyer that works with these sort of issues. However, as you know, I am not your lawyer and this is not legal advice. Specific facts for your circumstances can change things. Generally though, do you have to hand over the domain? No ... you don't have to hand it over. Can they attempt to take it from you anyways? Yes they can. They could bring a UDRP claim to take the domain from you or they can just sue you for trademark infringement and ask the court to hand the domain over to them.

Whether these attempts to take the domain from you would be successful depend on different things. The UDRP proceeding requires showing bad faith on your part when you registered the domain, which can be difficult to prove. Taking you to court doesn't have the same bad-faith requirement. Both of these options would involve legal costs for the manufacturer.

So .... you can ask them to pay you something for it. If they have to spend money to take the domain from you, maybe they'd rather pay less directly to you than pay more to the lawyers. Do they have to pay you? No, but it never hurts to ask.

You should consult with an attorney first to discuss your options and go over the likelihood of the manufacturer being able to take the domain from you given your specific circumstances. If you need a recommendation, feel free to message me your location and I'll give you some names of people to talk to in your area if I know any.
posted by Arbac at 8:33 PM on January 18, 2011 [5 favorites]

Arbac, not to dismiss your expertise, but showing bad faith in a UDRP proceeding is actually not hard to do in the least. Something like 90+ percent of all UDRP filings result in finding for the complainant.

Asking a complainant to pay for the domain is actually a pretty good way of proving bad faith.

To OP - I work in the domain name space and I know several very well regarded attorneys with domain name experience that I'd be happy to refer you to. That being said, if their trademark is in the domain name and you've nee earning any money from the domain name through any means without their explicit permission you really are better off turning over the domain name to them. You may want to review with an attorney any document they wish for you to sign to make sure it's not overly vague though.

Memail me for more info/details.
posted by FlamingBore at 9:52 PM on January 18, 2011 [3 favorites]

FlamingBore has a point - asking to be paid can be used to show bad faith under the UDRP. You should talk to an attorney before making any decisions. Asking for expenses to move your business to another domain though is more reasonable than asking for an amount that looks like your only purpose of registering the domain was to turn around and sell it to the manufacturer/trademark owner.

Speak with an attorney. Get an hour consult. Make a decision based on their advice.
posted by Arbac at 11:36 PM on January 18, 2011 [1 favorite]

I doubt they want the domain so they can sell the same thing as you. They just don't want you selling under that domain, and there's no better way than by making sure that they own it, not you.
posted by zsazsa at 11:41 PM on January 18, 2011

It doesn't look good for you.
posted by JJ86 at 6:22 AM on January 19, 2011

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