In my domain investing career of many years, I’m proud to say that I have NEVER had a formal dispute over a domain name. By “formal dispute”, I mean an auDRP or a UDRP. For those not in the know, auDRP means .au Dispute Resolution Policy. This is where a complainant generally engages legal representation and files an application seeking transfer of the domain to them. This costs them a minimum of $2000 plus legal fees for a single member panel. You know you’ve got a serious situation if you get involved in one of these.
Next Level Down
Then there are auDA complaints. These are free to lodge; and generally get filed “anonymously” by people who don’t want to invest money in purchasing a particular domain from existing registrants. They also don’t want to spend any money in filing an auDRP. I wrote about this process here. I’m also pleased to say that I’ve never lost a domain this way either!
The Cease & Desist Letter
I’ve only had two of these over the years. When I say two, I mean “professional” ones. I’ve also had a couple of amateur ones where people have obviously “cut and paste” something they’ve taken from an online source.
The important thing about C & D letters is not to ignore them.
They are a shot across the bows, and how you initially react to them will go a long way to determining the ultimate outcome. To my mind, they also represent an opportunity.
I got one a few weeks ago from the legal department of an overseas company, so I thought I’d share the entire process.
- Received an almost overwhelming (in terms of length) C & D from a European based company. I had never heard of them before. The domain in question was a 3 letter com.au that was parked with Fabulous (I purchased it on the expired auctions almost 4 years ago).
- The complainant had the dot com and a few other extensions. Plus a trade mark for the 3 letter term.
- Unfortunately, upon investigation, I did have a potential issue in that one of the links on my parking page referred to their business. Even though I was unaware of that, it could have been a problem.
- I responded quickly and politely – but left them in no doubt that I would defend any claim they made. I’m not a lawyer, but I’ve read enough cases in my time to ensure that my response contained the “right words” i.e. not registered in bad faith; legitimate interests etc. It’s also important to remember that you are “writing for the record” (if the C & D escalates to a dispute).
- They ended up purchasing the domain from me. Win / win scenario.
Here is my response to them (identifiers removed).
Dear “Unnamed person in the Legal Department”,
We are in receipt of your template “Cease and Desist” letter.
All allegations and imputations contained therein are strenuously denied.
- Until yesterday, I had never heard of your company. Do you trade in Australia?
- Until yesterday, I was not aware that you had a registered trademark for the term “- – -”.
- Having said that, a TM does not preclude other legitimate usage of the acronym – – -.
- We purchased this domain name for a specific project, however it has been simply “parked” until other projects get completed.
- We therefore assert that we have rights or legitimate interests in respect of the domain name; and
- The domain name was NOT therefore registered in bad faith.
- We were not aware what links our parking page showed – after all it is an acronym domain.
a. By way of immediate response, and as a gesture of goodwill, we have taken immediate steps to ensure as best as possible that the parking page has no links to you (see screenshot below).
b. I have expedited work on an interim holding page for our new project – “——- ———- —–”. This should be published shortly.
c. I decline to transfer the domain name to you for reasons mentioned above.
d. Notwithstanding the above, we would consider you purchasing the domain from us for the equivalent of our “out of pocket expenses” – approximately $1260.
Should you still have concerns, please advise. We will then engage our lawyer to respond more formally.
Ned O’Meara – Director – Domain Syndicates Pty Ltd
The penultimate line regarding them purchasing the domain for my “out of pocket expenses” was the winner imho. It also contains good auDRP language.
Thus they had an easy commercial decision to make – take me on and spend a lot more money with no guarantee of success; or acquire the domain name quickly and easily.
I’m pleased to say that they purchased the domain via escrow ($USD was an added bonus); and we ended up “friends”. 🙂
Please note: All circumstances are different, and therefore you should consider seeking legal advice if you receive such a demand. Particularly if the domain is valuable to you.
Ned O’Meara – 7th July 2016