Company wants to steal my brand and domain. What do to?

[under_siege]

Posted about this earlier but it was flagged, not sure why. Made some changes. I'll gladly edit to comply with rules.

I've been doing business under a brand and have owned the corresponding domain since the early '90's. Yes, I've been doing business under this brand since before the Internet went public and got the domain as soon as it was possible.

The brand was used in commerce prominently until about 2005 (manufacturing and selling product as well as consulting). I had a C corporation under the same name.

Around 2005 I shutdown the C corp and focused mainly on consulting with a few clients a couple of times a year. I operated as a "dBA" under this brand.

Because of the nature of this brand it has, over the last few years become very relevant to a market segment that is growing significantly world wide. I've been waiting for the right opportunity to get back into the game (design and manufacturing product) to take advantage of the new opportunities.

A few months ago individuals contacted me about buying the domain from me. It turns out they just started a company in another country using this root name. They offered me a paltry sum (a few hundred bucks). I told them I had zero interest in this.

Well, fast forward to today. They are now attempting to obtain a trademark in the US (I have a common law trademark spanning nearly 30 years of continuous use). If they are granted such a trademark I am sure it is their full intent to put as much pressure on me as possible to effectively steal my domain and trademark away.

These people have tens of millions of dollars available to them and have already stated they have no problem burning cash. While I don't have the financial horsepower to fight them long term, I have sought legal advise and will take a initial steps to mount a defense.

I'm sure there's someone on HN who's walked a similar road before. I'd appreciate any thoughts you might be able to offer.

[hwhatwhatwhat]

This reminds me of the shady tactics Dropbox used to acquire the dropbox.com domain. Before that, they only had getdropbox.com.

I suppose if you have VCs bankrolling you, you can do whatever you want.

[schappim]

What were the tactics?

[fapjacks]

Even though this sucks, I want to remind you of the story of nissan.com, which is at least one point of data showing that the name oversight organization (I forget their acronym just now) will not bow to pressure, even from enormous, multinational, moneyed corporations with huge brand recognition. I also want to reiterate what the other commenter said about suing. You can't let them operate under your brand name, or that can be used as granting a kind of defacto permission to use the name. I hope things work out for you.

Also, even if you remember the story, visit nissan.com for possibly some useful information for your situation. Good luck!

[under_siege]

I did not know about this. Frankly, it's terrifying. It almost makes me want to cry. The prospect of walking into a situation where I have to chose between utter financial ruin and just handing over something I've owned for nearly thirty years is unsettling.

Is there any financial help for these kinds of cases? I can't possibly spend hundreds of thousands of dollars defending this.

I mean, the only way to even begin to approach it is to sell everything we own and have my wife and three kids live out of a van. And that might not even be enough.

[charlesdm]

Have you considered just selling it? Sometimes the hassle isn't worth the effort required to win. Even if you could.

You stated in a previous post it'd have to be a 7 figure amount. It's unlikely you'll get that amount. I'm not saying you have to sell if for cheap, but be reasonable if you're serious about selling. A good deal is one where both parties are somewhat unhappy at the end (i.e. one feels they significantly "overpaid", and the other feels they sold something too cheaply).

[fapjacks]

Sorry, IANAL, so maybe this advice is useless. I just spent a little bit doing some research and discovered that EasyDNS has a history of defending their customers from similar sorts of thuggery[0]. It may be worth your while to research an option like this, i.e. switching your DNS service (and domain registration, if they offer it) to EasyDNS or someone that would be willing to help you defend against sociopaths bent on stealing your domain and brand. It seems like now would be the time to research a more defense-oriented domain registrar and DNS provider that won't simply hand your domain over to the person with the most pull, as No-ip.com learned when Microsoft stole their domain. I can't really help you in this regard, but you will definitely want to transfer your domain to a registrar that doesn't have a history of caving to the first lawyer letter they get, which is probably most of them. Perhaps you may find both a name registrar and a DNS provider that will help you. Good luck!

[0] http://blog.easydns.org/2014/08/22/we-are-being-sued-for-ref...

[under_siege]

That's interesting. I'll research. Thanks.

[devnonymous]

Where's the value? Of course the brand and domain have value but that is not intrinsic. If you can see early on that fighting for the brand and domain is going to 'cost' you more than you can afford (in time, money and effort) you may want to instead invest a fraction of that cost into a rebranding effort as long as you still have control over the brand.

IOW, choose your battles.

[under_siege]

Agreed. This might ultimately become my reality by force.

[nroach]

IF the mark hasn't registered an opposition might be an option. http://www.inta.org/TrademarkBasics/FactSheets/Pages/Opposin...

[under_siege]

Yes, that's the likely outcome I've been told. What sucks is that you have to wait until the publication period.

I've been wondering if there's a way to appeal to those funding this venture. I don't know much about top-level VC's (which is where their funding comes from) but I would hope ethical business is a part of their code of conduct.

I could see the startup acting without the express knowledge and consent of the VC's backing them. It would be interesting to hear from anyone on HN who has a better understanding of VC's.

[sharemywin]

I think you have to sue them. My understanding is if you don't defend it you lose it.

[under_siege]

I hope it doesn't come to that. Having that discussion next week with counsel.

[sharemywin]

I doubt they just go away so whats your business worth? Next question what is it worth to defend it?

[jason_slack]

Do you have any interest in selling the domain and trademark to them? Perhaps you could give them a high number and they might say yes instead of a long legal battle.

This is moot, however, if you don't have any interest in selling to them.

[vincent_s]

This could backfire because it's a strong argument that you're not really interested in using the domain yourself. If you argue that this domain is important for you because of your brand you shouldn't put it up for sale at the same time.

[under_siege]

I think there are a couple of ways to look at this. Businesses are bought and sold every day on the principle of a mutually agreed upon valuation that is win-win. There's nothing whatsoever wrong with saying "No, what I have is worth a lot more than $200" and communicating a value you might be comfortable with.

In my case I selling my property was never even on my radar until these guys started to hound me. I'm still not interested with the exception of, as I said in another post, the kinds of offers that you just have to consider.

I would imagine a lot of folks on HN have domains registered with the expectation to use them for various projects. If someone came along and offered you $200 for a domain you've owned for a few years you'd probably say no and move on. Maybe you are using the domain to sell ebooks or something and make some money with it every month. If, on the other hand, the offer was for a few tens or hundreds of thousands, it might be a situation that would warrant (or should) consideration. This depends on your circumstances, of course.

In my case the "offer you can't refuse" would have to be in the seven figures range. Because it would be bad business not to consider such an offer. Anything below that is of no interest to me at all. I make over mid six figures a year with my engineering services.

That's very different from a well-funded corporation effectively bullying you and inflicting financial pain to take your domain or property away from you. One is a business transaction where everyone can walk away happy. The other is using force and brutality to, effectively, steal what isn't yours.

[devnonymous]

I don't get it, by your own admission the time isn't right to monetize on the domain and yet you expect a 7 figure value for it, what will they be paying for then? In another post you say something about selling your house and the responsibilities of wife and kids.. Are you really willing to put all of that at stake just to retain control over some 'perceived' value. Like I said, I don't get it.

[under_siege]

I would be lying to you if I said that my thoughts are entirely coherent at this point. I am certainly creating a more organized framework in my mind as a result of interaction and conversation with various people, including HN, as well as my own research.

Here's what I know so far (hopefully a coherent set of thoughts now):

  - Common law trademarks in the US do offer protection so long as one does not abandon usage of the mark in commerce
  - This is the case with me
  - I can show continuous usage for nearly 30 years
  - I will still have to file an opposition to their attempt to obtain a USPTO trademark
    - Have to wait three months
    - It will cost a few thousand dollars
  - They have been spamming the 'net with press releases in an attempt (successful so far) to drown out the few pages of search results that associated my name to the brand
      Q: Is there a "waybackmachine" for search
         In other words, is there a way to show what search results looked like for a certain terms on a specific date?
  - Whether or not they succeed at obtaining a trademark they can resort to suing me in order to snatch away the domain
  - Two theories here
      - Dilution: They take their 20 pages of search results and claim my possession of the domain damages "their" brand
      - Financial Intimidation: If I don't defend they can claim abandonment and own the brand
  - The law regarding domains does protect me 100%, yet it does not protect me from having to spend tons of money to defend it
      - Much like patents, they are a right to defend yourself and, if you don't have the money to do so they could be worthless
  - Per nissan.com, it could cost hundreds of thousands of dollars to defend yourself
      - Even if the other party has no merit whatsoever
      - Hence my comment about having to sell everything and end-up on the street if I want to defend
      - Our legal system seems to be setup to favor those with deep pockets by allowing them to inflict such pain that the other party caves and gives in
          - The merit of the case does not matter when one party has to risk losing it all to mount a defense
          - Have not found a way around this (free qualified legal help, or some other equalizer of sorts)
      - Without further data it seems that someone with tens of millions of dollars can force someone without a huge bankroll to give up their brand
      - If this is my reality I will almost have no choice but to give-up on my dreams and on a brand I've owned for nearly thirty years

That, I think, is the context under which I said some of the things I've been saying. Regarding the 7 figures thing. I probably did a horrible job of communicating the intent. Not sure I can do better, but I'll try.

I don't want to sell. This was not my intent. I was actually getting ready to launch a new startup under this brand (moving away from consulting). There are only two ways I could see letting go of it. The first is if I have to face financial ruin to protect it. Not hard to understand. I have responsibilities towards my family that I cannot abdicate. The second is at the other end of the scale. This is the case where they make an offer that is so compelling that it would satisfy the idea of doing the right thing for my family and would make letting go of a brand that's been dear to my heart for nearly three decades. That offer, for me, is in the 7 figures (which, after taxes, can easily turn into 6).

I hope that clarifies where I am right now. I might not have all the angles covered but I think I understand the problem reasonably well. I am hoping to learn more as I sit down with counsel this week and explore legal realities.

Biggest take-away for others: If you own a domain you intend to use in the future and it matters to you, put up a blog and write something relevant to the brand every so often. If you just let it sit there you could be in trouble. And, yes, file for and obtain a trademark as soon as possible. Common law trademarks do work but real paper trademarks are far more powerful.

Thanks for your input.

[under_siege]

The points I was trying to make, reposted because code formatting makes them hard to read (sorry) and for some reason I can't edit them:

- Common law trademarks in the US do offer protection so long as one does not abandon usage of the mark in commerce

- This is the case with me

- I can show continuous usage for nearly 30 years

- I will still have to file an opposition to their attempt to obtain a USPTO trademark - Have to wait three months - It will cost a few thousand dollars

- They have been spamming the 'net with press releases in an attempt (successful so far) to drown out the few pages of search results that associated my name to the brand Q: Is there a "waybackmachine" for search In other words, is there a way to show what search results looked like for a certain terms on a specific date?

- Whether or not they succeed at obtaining a trademark they can resort to suing me in order to snatch away the domain

- Two theories here - Dilution: They take their 20 pages of search results and claim my possession of the domain damages "their" brand - Financial Intimidation: If I don't defend they can claim abandonment and own the brand

- The law regarding domains does protect me 100%, yet it does not protect me from having to spend tons of money to defend it - Much like patents, they are a right to defend yourself and, if you don't have the money to do so they could be worthless

- Per nissan.com, it could cost hundreds of thousands of dollars to defend yourself - Even if the other party has no merit whatsoever - Hence my comment about having to sell everything and end-up on the street if I want to defend - Our legal system seems to be setup to favor those with deep pockets by allowing them to inflict such pain that the other party caves and gives in - The merit of the case does not matter when one party has to risk losing it all to mount a defense - Have not found a way around this (free qualified legal help, or some other equalizer of sorts) - Without further data it seems that someone with tens of millions of dollars can force someone without a huge bankroll to give up their brand - If this is my reality I will almost have no choice but to give-up on my dreams and on a brand I've owned for nearly thirty years

[under_siege]

To be frank, it would have to be one of those offers you can't possibly refuse. I hinted at that and they went from a few hundred bucks to a few thousand "last offer". Given their apparent mindset I don't see them going to a point where, on my end, it would be stupid not to accept.

To be clear, I am not interested in selling. I am simply describing what I would do in a hypothetical scenario where it would simply be stupid not to consider changing my mind.

[albasha]

Do like the nissan.com dude did. You have the domain and no one will ever take it from you. Tarnish their reputation is they are unethical.

[under_siege]

That did cost him a ton of money though. From reading his explanation it sounds like it took somewhere around $250K to defend his brand.

[_audakel]

1) you left the domain in 2005 and are "waiting for the right opportunity to get back in" because it became "relevant"

2) meanwhile some other company has been working on a similar product and wants to buy your domain

3) you didn't think they offered you enough for your domain

4) now you want to sue them

5) this looks like a classic domain troll / hording. sell the domain.

[under_siege]

No, please re-read the post. I think you missed important information.

I did not leave anything in 2005. All I did was shutdown my C-corp and continued doing business under a dBA. A binder full of invoices, etc. since early 90's until today.

No, I am not intent on suing anybody. I did not say that. I have not intention to sell the domain nor was I looking for this at all.

Short version:

    - I've been using this mark and domain continuously since early '90's
    - Not interested or looking to sell it at all
    - Company trying to strong-arm me into selling
    - Not a troll/hoarder...I've been using this internationally for nearly 30 years
    - Not looking to sue anyone, just want to be left alone