Not long ago, I received a very blunt email from a prospective buyer, as they didn’t like the price I quoted them in response to their enquiry.
The domain in question is a generic term that describes a type of business, similar to examples such as: ‘Smokehouse.com.au’, WhiskyBar.com.au’ or ‘SEOFirm.com.au’. I won’t be revealing the domain or the individual that I was corresponding with, as I don’t wish to encourage any further communications from them.
In a nutshell, the individual’s email response stated that they have a trademark which relates to the domain name.
Some of you may recall my article on due diligence and so won’t be surprised to hear that I’m a careful buyer. I steer well clear of domains that are obvious trademark infringements and I also undertake due diligence before I buy domains. So I was sceptical of their claim to say the least.
It didn’t take me very long at all to confirm that this was a groundless trademark threat. I did some search queries in the IP Australia database and then put together a brief time line using the results of my searches, details of the domain in question, and my records of correspondence with this individual. I’ve included my response below, as I thought it might be a useful for others as a ‘starting point’ template.
I have provided some points below for your consideration.
- We purchased [domain].com.au (the domain) on [day] [month] [year].
- You approached us with an offer to buy the domain on [day] [month] [year]. I responded with a price on [day] [month] [year].
- Having checked the IP Australia database, I can see that you submitted two trademark applications on [day] [month] [year], which have been approved for indexing and are currently in the opposition period. They include a composite trademark for your logo and a word-based trademark for ‘the[term]’.
- It is important to note that these trademark applications were submitted over [number] months after we purchased the domain, so it is impossible that the domain was purchased with any intention of infringing those pending trademarks, as the applications did not exist. As a trademark holder myself, I am very familiar with intellectual property protection.
- .au Domain Administration (auDA) policies allow for the purchase of .au domains for the purposes of monetisation. auDA policies also allow registrants to sell .au domains. If you would like further details on these policies, please refer to the auDA website here (Section 11) and here (Section 3). As a registered auDA member, I have a thorough understanding of these policies and would be happy to provide further explanation if you wish.
[details of previous correspondence]
I would be happy to discuss this matter with you and can be reached by phone on [phone number] during business hours. Often a quick chat can make all the difference, as it is easy to jump to conclusions without all the facts. Otherwise, I wish you all the best with your business endeavours.
I try to respond in situations like this without being driven by emotions, so even though their email was a thinly veiled threat, I was still courteous in my response. I’ve learnt from experience that it’s far more effective in the long run to remain professional and friendly.
I haven’t had any further correspondence from them since, and I think it’s unlikely that I’ll hear from them again.
It’s important that domainers are aware of their rights and are prepared to protect their investments. I won’t be threatened or bullied out of a domain name that I’m entitled to hold, and I hope that this article will help others faced by a similar situation.
The fine print
The contents of this article do not constitute legal advice. The article is provided for general information purposes only.
For legal matters you should consult a legal professional.