Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
I have owned a .com for 7+ years, a new company who has only been around for <2 years registered the .net 2 years ago and now threaten for me to handover my .com or they will sue
I have received a cease and desist letter from a law firm via email.
They claim as they client registered a trademark two years ago for the name, I must handover my .com domain to them for free, otherwise they will sue me.
For them not to sue me, because they have now registered trademark (even though I had the .com domain and was using it 7+ years before them)
They state from their solicitor that I must do all the following (long letter they sent me but here is the title/headings):
1. Cessation of Use of the Mark.
2. Abandonment of Rights
3. Future Trademark Applications
4. Transfer of Domain Names
5. Acknowledgement of Ownership and No Challenge
6. Mutual Release
7. Covenant Not to Sue
8. No Outstanding or Known Future Claims/Causes of Action
9. Acknowledgment of Settlement
10. Confidentiality of Agreement
11. Non-Disparagement
12. Agreement is Legally Binding
13. Entire Agreement
14. New or Different Facts: No Effect
15. Interpretation
16. Governing Law and Submission to Jurisdiction
17. Equitable Relief
18. Reliance on Own Counsel
19. Counterparts
20. Authority to Execute Agreement
"[Company Name] further demands that you provide, by no later than the close of business Pacific Standard Time on December 15, 2021, written confirmation that you will comply with these demands. You are specifically advised that any failure or delay in complying with these demands will likely compound the damages for which you may be liable. If [Company Name] does not receive a satisfactory and timely response, [Company Name] is prepared to take all steps necessary to protect [Company Name]'s valuable intellectual property rights, without further notice to you.
The above is not an exhaustive statement of all the relevant facts and law.
[Company Name] expressly reserves all of its legal and equitable rights and remedies, including the right to seek injunctive relief and recover monetary damages."
If anything I would have thought they should be the ones changing their name, as I was using the name 7+ years before them with a similar product You need to speak with a qualified domain name attorney, not just any attorney or solicitor. As Director of a domain name protection company (and not an attorney) I can offer this: If you registered the domain name before the other party files for a trademark, then there is no way you would have known that they would file for the mark. So, in most cases you probably don’t have to give up the domain name. It comes down to whether or. Or you registered the domain “in bad faith” or not. And again, how would you know they would start their business and get a trademark? You wouldn’t. Are you in the same industry and compete with each other? If so, there might be an issue, but I’d your site offers different products and there would be no confusion between companies or websites, then there may not be an issue. The best way to handle this is to get a domain name attorney to respond to their letter to you, essentially telling them to go away, and that you plan on keeping the domain name. If you cannot afford an attorney, look for a company that offers domain name insurance or a domain name warranty, if you have an issue like this with your domain name, your legal fees to defend the domain are covered. As you have described the situation here, you bought the domain before they filed for their trademark, and you’re not pretending to be them. So you should be able to keep the domain. They are just trying to “ strong arm” the domain away from you with a threatening letter. If they do sue you or file a udrp, defend yourself with the help of a good domain name attorney. >Are you in the same industry and compete with each other? If so, there might be an issue ... > as I was using the name 7+ years before them with a similar product Sounds like they are, but that the issue is in the reverse, they are trying to steal the authors market and product directly by using their name. This is very aggressive, not to mention wrong. There's really no way to say that with the limited amount of info in the post. There can be two legit businesses in the same space with similar names. This is incredibly common in tech. Hope to read a follow up post one day about how the end result of this letter is the company who sent the letter loses their trademark and domains. > the company who sent the letter loses their trademark and domains. That may not be punishment enough to prevent them from becoming a repeat offender. In an ideal world the result would cost the directors the right to start a business for a long period of time. I don't see that as too severe in any light - This is pretty close to fraud: trying to undercut market forces by dishonestly claiming rights to the name of a business with 7 years more history. Their only defence to malicious intent would be ignorance of the author's business existence prior to theirs - which is completely unbelievable considering that's the first and most obvious fact that will be used to settle the issue. Their lawyers would have to claim complete incompetence. Its unlikely that their lawyers are completely incompetent. For example King trademarked candy then sent a CaD letter to the makers of the original candy game that they had ripped off - and got away with it. Unless there are more to the story i think the op can just ignore the letter. And step up the SEO so that the other business will have a hard time competing. There will always be people that try shortcuts to success by committing fraud. And there will always be suckers that will get fooled. The tactic is often to scare - don't fall for it. It's really too bad it's so expensive to pursue issues like this. If the .net company has more money than the OP they could even end up with the .com even though no one would consider it fair. I think it would cost a lot of money to invalidate a trademark, especially if the company that owns it has deep pockets and even a UDRP complaint can cost in the range of $5k from what I've read. I think that's why so many mediocre .coms sell in the $2-4k range. It's cheaper to pay the domain/trademark squatters for the guarantee of getting what you want than it is to (maybe) prove their registration was in bad faith. To defend a UDRP it’s about $10,000 plus filings fees. Typical filing fee is $1500. That’s why I recommend getting domain name protection ahead of time for all your domain names. $10-20 a month can save you from having to pay big legal fees. > If anything I would have thought they should be the ones changing their name, ... No doubt that they did think of that. Instead they decided on intimidation as an opening strategy. > ... as I was using the name 7+ years before them with a similar product So they are guilty of what they are accusing you of. You could:
1) threaten to counter sue and settle for a price, or
2) sell them your .com They've no doubt anticipated these responses as well and are prepared to negotiate. They simply decided to open the negotiations at $0 Imagine the conversation they had 2 years ago when they registered their .net domain. Maybe 2 years ago, they were deciding on their corporate identity: maybe ABC, DEF, or GHI, ... They decided on ABC even though they knew ABC.com wasn't available. THEY KNEW IT, so they took ABC.net instead. They could have made you an offer at that time, but maybe they weren't ready because their business wasn't profitable yet. No point in putting money into something isn't proven valuable yet, right? So they kicked that can down the road; delayed that decision to buy your domain. So, now they want it, and they're engaging you now. They know they have no more claim on it than they did 2 years go. > They are just trying to “ strong arm” the domain away from you with a threatening letter. This isn't ok and making them go away isn't good enough. They need to pay for having made that long list of demands and threats, ideally by having their whole business taken away and given to OP. Agreed, it’s not okay. Some companies are found guilty of reverse domain hijacking after filing a udrp. > If you cannot afford an attorney, look for a company that offers domain name insurance or a domain name warranty, if you have an issue like this with your domain name, your legal fees to defend the domain are covered. I would think it’s too late for that. Insurers typically (and most of the time rightfully, exceptions being cases were law requires them to do so, as is the case with health insurance in some countries) do not cover cases known before the insurance started. If they covered past issues, nobody would take insurance before they knew they needed it. The OP only received a letter, and hasn’t been sued. It’s not too late to set up domain protection. Business insurance and cyber liability insurance doesn’t cover domain names. You have to get a domain name protection company to cover the domain. Surely the insurer would become suspicious if the OP was then sued soon after, and then refuse to pay? My experience with insurance companies is that they will go to the ends of the earth to avoid paying anything. > If you cannot afford an attorney, look for a company that offers domain name insurance or a domain name warranty, if you have an issue like this with your domain name, your legal fees to defend the domain are covered. I've never heard of that before and all I can find trying to search are sites about the `.insurance` TLD. Anyone got any links to some examples? DNProtect offers domain name protection plans for exactly this reason. If the OP had domain name protection all the legal fees of defending the name would be covered. I had a 4 letter domain name. A stock photo company trademarked the name and then threatened to sue to force transfer. However, I registered the domain before they registered the trademark. I looked up the ICANN rules and saw I had priority. Pointed out the ICANN rule and told to go away. They did. IANAL; this is not legal advice. Also IANAL but these demands make even less sense due to trademarks being categorised in classes, that you own Douche® registered in rubber products doesn't mean someone else can't have Douche® furnitures, and both have a reasonable and compatible claim to the name (for instance there are at least 5 different companies or organisations called "Apple" with presence in the US). Furthermore, the USPTO allows multiple trademarks with the same name in the same class, because trademarks must be distinctive and unless the name is completely made up and demonstrably novel (e.g. Blu-Ray, Kodak) it's not distinctive and does not inherently constitute a trademark (though generic trademarks can acquire distinctiveness through use e.g. "apple" would probably be considered distinctive). > for instance there are at least 5 different companies or organisations called "Apple" with presence in the US An interesting trivia is that Apple Computer got in trouble with Apple, the record label, when they introduced the Apple IIgs, because it had a musical instrument synthesiser chip built in. But the further detail on that is the reason for this is that Apple Records and Apple Computer had previously signed a settlement agreement where Apple Records promised not to get into the computer business and Apple Computer promised not to get into the music business. Obviously, subsequent court cases and agreements allowed Apple Computer to get into music. Lots of details on Wikipedia: https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer I thought the issue happened when they launched iTunes. Perhaps it happened both times. It happened a couple times. > Douche® furnitures Somehow that does have the cadence and sound of a ‘premium’ brand, or at least faux-premium. The ‘registered’ symbol really sells it, though. In these post-ironic times, I can easily see this name being used. Rhymes with Touché. Right. OP could register the trademark for his domain in another class right now and then see what happens... Milk.com FAQ: Occasionally, our adoring public has a salient question. Here are the most frequently asked, along with clear, concise answers. Please only send mail if your question has not already been answered on this page. History of bud.com: Right. Had the same issue years ago. Did the same and worked the same. Just point them to https://www.icann.org/resources/pages/help/dndr/udrp-en While this is definitely a bunch a hot air, unfortunately they could frivolous sue you to simply win on financial grounds alone (in particular they could sue you in a location where the cost of travel would be expensive and if you ignored it they get a default judgement, or sue you in both state & federal courts for slightly different things and drown you in legal costs). I'd evaluate what your endgame is. If your endgame is to keep the domain then I'd get a lawyer in order to make it clear that you will respond to legal challenges (and, yes, the bill is going to run up). If you were willing to sell, for a price, then you should try to figure out how much a legal challenge would cost them and set a price a bit higher than that. Is it fair? Absolutely not, but the US legal system is set up so that those with the deepest pockets often win. It isn't a fair fight for normal citizens, and even having the law on your side is often not enough because it is a financial battle more than a legal one. Either way may be wise to lawyer up today, either for a better selling price, cause them to back off entirely, or move it into the "bury you with costs" phase of bullying. Not a lawyer, but... If OP has first use in commerce that predates theirs they could start, or threaten to start, the paperwork to have the trademark tossed. If they see you are asking questions that aren't a response to bullying, but that would precede a legal an attack their trademark directly, they might find themselves on a different footing. Regardless, the possibility, I would think puts you in a better negotiating position if you're looking for an offer, or just want to make them go away. Seeing a lawyer is likely the way to go. Also, I notice you use the term "solicitor" which makes me think any US law-based answers are less likely to be grounded in reality for you, so add more than your usual pinch of salt to anything you see here, including what I wrote! > (in particular they could sue you in a location where the cost of travel would be expensive and if you ignored it they get a default judgement, or sue you in both state & federal courts for slightly different things and drown you in legal costs) "This past June, the U.S. Supreme Court ruled that plaintiffs cannot sue companies in a state where they may do business, but do not have significant connections to that state." Bristol-Myers Squibb Co. v. Superior Court of California (BMS) https://www.andruswagstaff.com/blog/supreme-court-rules-plai... If I’m not mistaken the lawsuit can be filed but you can win a challenge to jurisdiction. But in order to challenge jurisdiction you need to hire a bar certified attorney in that jurisdiction… thus defeating the point Conclusion: only the lawyers ever win. Huh, you can't defend yourself? Yes, you can. But then you'd need to appear... obtw there's serious risk of trying to defend a suit yourself. Maybe the judge would take pity on you and grant a continuance for you to find counsel. So what would happen if an American company that owns the .net domain sued me, a Polish citizen, who owns a .com domain, for that domain? My contract for the domain is with a Polish provider, surely it would have to go through a Polish court, no? I'm under the impression that all .com is US jurisdiction, considering that they trivially seize them and VeriSign/the owner of the .com registry is a US company OP used the word "Solicitor" so am assuming they are not in the US. Or he could be a boy scout. "Don't solicit for your sister, that's not nice. Unless you get a good percentage of her price." -Tom Lehrer, Be Prepared He could transfer the domain to a friend who is not in the US, and then they'd have nothing to stand on :) Looks like it's the opposite. They'll sue in jurisdiction where the other guy have to appear in court. If not - they'll auto-win and Verisign will happily transfer the domain to crooks. Disclaimer: I'm not a lawyer and this isn't legal advice. Assuming both parties are in the US, this is the key legislation around domain squatting: https://cyber.harvard.edu/property00/domain/legislation.html. You haven't told us anything about what you do with the domain, but since you registered it quite a bit of time ago I'm assuming it has nothing to do with the company in question that sent you the letter. Looking at the clauses in the link, it seems pretty clear they they have no real case. Everyone's advice of getting a lawyer is obviously apt, but I'd say you can just save yourself the money and ignore this letter completely. There's a 99% chance that you will not hear back from them. If they do decide to actually escalate it, you can always get a lawyer at that point. A general piece of advice about the legal system - nothing ever happens within 3 days. They are creating a false sense of urgency in order to scare/bully you. (As a side note, I get very annoyed when a random question on the internet is met with a hundred responses of "get a lawyer". I'm sure the person who posted it already knows that lawyers exist. What they are looking for is some free advice, not legal representation from HN.) Since the OP is running a legitimate business on it I wouldn’t recommend them sitting on the trademark being owned by a competitor, even though I agree with you it sounds like the other party has no legal basis to do anything to them, even if they own the trademark. I am not a lawyer but this exact same thing happened to me and I did consult a lawyer. >I wouldn’t recommend them sitting on the trademark being owned by a competitor // This is not legal advice and in no way relates to my employment: Trademarks don't work like that. Prior use for trade is an absolute defence in most jurisdictions (though I'm not intimately familiar with USA) and is most likely a reason to invalidate the latecomer's trade mark. You're definitely not "sitting on [their] trademark" if you were using it for trade before them. If anything they're infringing your trade mark -- though that's unlikely to do anything unless there's 'passing off'. Trademarks are usually limited by geography and by Nice class (famously Apple computers promised Apple Music not to do anything in the way of music business so as not to infringe Apple Music's earlier mark) so several businesses can use the same word as a trade/service mark as long as they're not likely to be confused. The opposition period may well have expired for invalidation, I don't know how that works in USA. Them badgering you, and a trademark attorney misrepresenting the situation could be reason for a countersuit by itself. Certainly I'd discuss that if they do enlist some representation. > Trademarks don't work like that. Prior use for trade is an absolute defence in most jurisdictions (though I'm not intimately familiar with USA) and is most likely a reason to invalidate the latecomer's trade mark. I didn't say the OP doesn't have a case against the invalidation of the trademark. I'm saying that if they choose to do nothing it may erode their case for invalidating the trademark in the future, or at best their competitor will be able to keep using the infringing mark. It's why trademarks get viciously defended by companies like Facebook, even in seemingly minor infractions. " If you don't take steps to prevent others from using your marks, you could lose your trademark rights."
https://www.legalzoom.com/articles/what-are-common-law-trade... > Them badgering you, and a trademark attorney misrepresenting the situation could be reason for a countersuit by itself. Certainly I'd discuss that if they do enlist some representation. Anything to do with suing will cost in the upper tens of thousands to hundreds of thousands of US dollars. A cancellation is easily done and relatively cheap though. OP should consult a lawyer with domain expertise and should seek to invalidate the threatening company's trademark, rather than doing nothing. File a petition to cancel the trademark with the Trademark Trial and Appeal Board. From the final sentence: "I was using the name 7+ years before them with a similar product" So it seems like they aren't squatting, but genuinely using it (for a similar product, which makes sense) I take the view that there needs to be a penalty for people who send out these letters but fail in their ultimate claim. If you send cease and desist letters without merit you should be forced to indemnify the respondent for the entirety of their attorney's fees and pay exemplary damages. This would require lawyers to make a careful assessment about prospects of success, rather than hoping to scare the other side into capitulation. These heavy handed tactics are just dreadful and shouldn't be accepted in any rational legal system. To avoid doubt, I'm not saying that their claim doesn't have merit. Unfortunately you will need to pay a lawyer to find out. This is a great idea. What is particularly galling to me is how media companies trying to protect their content rights make completely meritless legal claims such as mass sending false DMCA requests to video sites saying that they own some work that is completely false, with no punishment for spamming out factually incorrect claims and harming people. That whole messed up system has been commented on many times in other threads. For actual legal filings, the only issue is that how a "case without merit" is defined is probably very subjective, because legislation can be very complex and lawyers can make a legal argument backed up by some statute for just about anything. There needs to be an extremely high standard for what constitutes a meritless case that should be punished in this way, because otherwise it also makes seeking restitution for wrongs risky, and that's not a good outcome either. Similarly good ideas in this vein IMO include: simplifying the language of laws, making the actual text of laws more easily accessible, and sunsetting/time-limits on old legislation so that old ideas that no longer make sense aren't kept permanent due solely to bureaucratic inertia. >> This is a great idea. Indeed, but cottage industry of ambulance chasing lawyers are heavily lobbying politicians to not let these great ideas see light of the day. I mean, if they have to take it to court I would recommend that they countersue for the trademark and the .net domain. > I take the view that there needs to be a penalty for people who send out these letters but fail in their ultimate claim. There's also a need to penalize domain squatting. While the avaricious company is in the wrong here, but own.com was showing a generic static page with links for many years, which is clearly domain squatting hoping to speculate on the three-letter domain. Both are wrong, even if the domain squatter is legally allowed to do so. How many domains is OP speculating with? I don't disagree, but I know many lawyers do. They believe it will just cause the reverse problem, that you'll be afraid to sue even when you have good cause. The rich win either way. It seems to me that there are enough cases of obvious misbehavior like this that don't get punished, but I get that it would open up a lot of risks where it would be a matter of opinion. They hate judgment calls if they can possibly avoid them. They like the law to be black and white, which means they rarely punish lawsuits that follow the rules. Even when it's clear to anyone else that the rules are being abused. I believe you can usually file in small claims court to recover your legal fees. Basically this exact same thing happened to my business with an individual (some guy who’s main business appeared to be acquiring and selling domains) who setup a very similar trademark, registered the domain (very similar), setup a dummy business on the domain, and then sent us a cease and desist trying to extort (we did a call with them where they basically told us they knew it’d cost us a lot of money to litigate and it cost them almost nothing to keep their dummy business up) us for six figures. We ended up litigating and canceling their registered trademark with the USPTO by proving our business and website were setup before theirs. If you have over 7+ years of business and public records this should be a pretty open and close case. The bad news is however even if that is the case it can take 2-3 years (probably due to pandemic)and a lot of money. In our case it cost less than $10k, so the guy’s extortion made no sense. It also didn’t help their case that the guy lifted verbatim copy from my website, including my TOS with my address! I’m not sure if the judge even looked at this though. Opening a dialogue about this would have been the professional approach. Blasting you with a long list of demands means they are trying to bully you. Cease and desist letters are just a way of trying to scare you into doing what they want so they don't need to do things the hard way. I'd recommend asking a lawyer if they have a case to make against you, just to be safe. But if they don't, this letter means nothing. And their 3 day demand is total horseshit of a play as well. You have done the research, and feel they do not have in-house representation. It is done on a Friday, so 2 of the 3 days is weekend. Finding a lawyer in 3 days is not simple, and doing it with 2 of the 3 being a weekend when a lawyer is impossible to find is just bullying 101. Fuck people like this. I feel bad for the Op, but sadly, I am jaded by the BS games that bullies play and win. I wish karma 1000x upon people that do this kind of bullshit. We've all seen how part of the responsibilities of a brand is to protect it, but as someone else posted, there are ways of not being an asshole when protecting one's brand. Ultimate face saving for the company in question would be to realize what is ocurring and fire the legal team they have hired for this role, apologize for their behavior to the Op, and then amicially work out a resolution. However, I realize that this is such a low chance of ever happening to be laughable. > there are ways of not being an asshole Yep, when somebody else started using my trademark in a slightly related business, I called my lawyer and discussed. We decided to offer that they license the trademark for $1 and agree to discuss with me before using it in any new way. That way my trademark is protected and I don’t need to be an asshole. Worked out well, we even threw each other business occasionally, and they went out of business after a couple years anyway. Three business days. The demand letter requests a response by December 15, which is a Wednesday. granted. so if the Op makes phone calls on day 1 (a Friday), how many return calls will he receive on day 2, a Monday? Doing anything on a Friday, aka take out the trash day, is just a game move to make things harder. Lawyers understand that it takes time to get counsel for yourself. My experience is that if OP says, "I am in possession of your letter. I am in the process of retaining counsel. Please provide reasonable time for me to hire one and provide a full response," then that should be adequate. It's a standard response to such letters. (Not legal advice, etc.) As you said "solicitor" I'm guessing you're not in the USA. If you are in the USA, the law is on your side: just because they registered the mark doesn't take away your rights. In addition, if they are doing something different from you (or perhaps you're using the domain for non-business purposes) they have no claim. You can open McDonald's garden shop (even if your name isn't McDonald) and unless you made it look like a McDonald's restaurant (trying to cause confusion) it's none of the restaurant company's business. Best, unfortunately, is to get a lawyer. If your country has a "small claims" court you could even sue them to get back your lawyer costs, but those are likely to be small in any case. Good luck! >As you said "solicitor" I'm guessing you're not in the USA. But then they use Pacific Time Zone. Which makes it a very good bet that they're Canadian. Not really a dead giveaway. Lawyer is the more commonly-used term in Canada too. No. It looks like they live in South Australia from a previous comment of theirs: https://news.ycombinator.com/item?id=25174647 Solicitor doesn't necessarily mean Canada. Correct, they live in Australia (it's in their comment history) No, the letter they got sent uses Pacific Time. The dicks couldn't even be bothered translating that into the time zone of their target, or even UTC. > within 3 days Well that's a scam. If they're going to sue you, let them. You literally have prior use of the term and if you have to prove that, you can with comical ease. They know this… which is why this sounds like bullies trying to scare you into giving up a domain they can't afford to pay for. Scary letters are cheap. Write one back asking they reassign their trademark to you? But seriously, probably get paid advice first, and don't worry about this 3 day nonsense. Nobody works that fast. And remember that trademarks are classed. Rarely does somebody get exclusive use of a name in all senses. You might not be able to sell what they sell under their trademark, but they don't have rights to the word in generic senses. Oh and probably approach a regulatory body about their solicitors. This isn't an appropriate way to conduct business. If you're gonna spend any money with a lawyer, have one write up a "go away or I'll let this go to trial and you can pay my legal fees" letter to send back to them. Congratulations! You just got an offer for a buy out. This could be the best thing that has ever happened to you. Depending on the price and size here, very little chance / or unlucky for them to go nuclear option. The last thing they want to do is take this to court and then also lose. Devastating for them to lose and only expensive for you to lose. Settle here and take the bonus. How deep do their pockets look and how valuable is this domain to them / you? 0. Get lawyer and do everything through them and through their advice first. 1. Draft a response saying basically over your dead body, make it clear and obvious how likely it is they will lose, and tell them you are prepared to take this to courts for a legal judgment. Tell them you are reasonable though and give them an option to make a serious offer for purchase at 10x whatever you value it at. 2a. Get offer, negotiate to a value of 0.25-4x (not 10x), accept, move on with your life. 2b. Get sued, win, re-offer sale at 20x. Sell domain at 8-12x. 2c. Get sued, lose, sucks. I'd check the specifics of this very carefully with a domain specialist lawyer before making a counter offer, especially one involving setting a large price. One way to make a very weak case that an already-registered domain is being used in "bad faith" against a trademarked entity a bit stronger is to argue that the owner of the domain made an unsolicited request to the trademark holder for payment... Yes. Exactly (step 0). Anything will be used against you General remarks for these types of posts: - People often mention 0 countries. Where do you operate? Where was your company founded? How about the other company? Etc. How do you know if that helpful comment doens't assume something totally different? - Are you really going to feel confident about your legal situation after reading comments on a platform like Hacker News? When someone didn't feel the need to mention which country they are talking about, that's usually because they're American. Your jump to conclusions mat is too bouncy. Americans do not call lawyers solicitors. This is a website hosted in America by an American investment company with a primarily American user base. Not hard to understand why. Either way the OP appears to be Australian, so please hold off judgement next time. It's mentioned in their comment history that they're Australian. I agree about the country point.However i am curious whether having the [Company Name] registered properly [Ltd, Co., s.r.o, s.r.l, etc] is an actual argument for having the "right" to a domain name.Common sense tells me it's not,in the same country or between countries, unless obviously the person who has the company name impersonates that company. Why would one need to legally own that domain name as a company name to keep the domain? Makes no sense to me No, it's not correct to state that they have any right to the domain name. Anybody can sue anybody for anything, but they have no prospect of winning ownership of the domain name. Domain name conflicts like this are adjudicated by WIPO who would never grant the domain name in this situation: https://www.wipo.int/amc/en/domains/ Yeah seems you may be right: https://www.wipo.int/amc/en/domains/search/overview3.0/#item... Doesn't matter what WIPO thinks if a judge who has jurisdiction over both parties orders the transfer. Not saying it will happen in this case, but you can definitely be compelled to hand over your domain name or risk contempt of court. You are right. They are just trying to scare the owner into giving it up for free. Check this out: https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1... Just like patents have a concept of "prior art," trademarks have a concept of "first use in commerce." If you can demonstrate that you were the first to use the trademark, you have less to worry about (but nothing's guaranteed until litigated). HOWEVER, if the party that registered the trademark can demonstrate that they used it prior to you, regardless of when they registered it, then they may have the upper hand. This is probably not DIY territory; consult a lawyer knowledgable about trademark law to help you determine how to respond. They may, in fact, recommend that you countersue for infringement. Might not be worth your time to pursue, but at least in theory you could claim that they're infringing on your trademark, because the U.S. follows a "first to use" rather than a "first to file" trademark system. I'd love to know what that means in plain English especially since the trademark has already been granted. Acquiring a trademark just sets a floor for when you acquired the trademark, it doesn't mean someone else hasn't already acquired it - that is a question that courts have to settle. > it doesn't mean someone else hasn't already acquired it It goes further than that: trademarks are registered in 45 different classes and trademarks of different classes are completely independent, but the USPTO goes by > "Trademark, same name, same class” meaning more than one entity can register the same trademark name in the same class, because trademarks have a requirement of distinctiveness. What if I'm not an US citizen and a company from US (threaten to) sues me over a .com domain registered through an non-US registrar? Should I hire an US lawyer? Where does the trial take place: in US or in my country? Let's say I get an email like the one OP got but I don't understand english and I take no action... Will the non-US registrar give them my domain by default? They cannot take away your .com away if you have it for a longer time. Trademark does not give companies a free pass to take away your domain name, especially when their company was not existing when you've registered your domain name. It's not how this works. Trademark is a kind of protection, a company name alone, registering a domain name (all without trademark) is also a kind of claim and protection. Trademarks work for the future and not into the past, especially not into a past where the company registering the trademark was not existing! I would completely ignore what they demand. There are, roughly speaking, two categories of businesses that receive this letter and differentiate themselves based off their response: 1) "Hobbyists" and the like who are not doing anything particularly valuable with the trademark and domain name. Even if these people can prevail in a lawsuit, the other company is hoping that the owner decides they can't (or won't) risk the time, money, and stress of going through a civil lawsuit. 2) People with valuable businesses whose rights are worth defending. The other company is already pretty sure you're not in this category, since you haven't vigorously defending your naming rights to date. Overall, you have prior use, and may be able to "win" if it gets to an actual lawsuit. The strength of your legal claim isn't the problem; if you have to spend high-five figures to keep the rights to your hobbyist website, you have already lost. Your goal is to convince these folks to leave you alone on as favorable terms as possible. If your domain name is not particularly valuable and important to you, this likely means A) hiring an attorney, B) using their services to convince the other company that you're in the second category, and then C) selling them your domain name for significantly more than it's worth to you. If your domain name is valuable to you, the only thing that changes is that you may need to pay the stochastic taxes that businesses have to pay to have access to the legal system for dispute resolution, and you might have a hilarious "thank you for informing us of your clients' violation of our trademark rights" demand letter sent back at them. https://nissan.com/ Seems relevant here :) Poor Uzi Nissan. They should have just offered him $1 million and bought it from him. Years of stress, courts, and lawyers fees. On the other hand, "MikeRoweSoft" clearly was playing on Microsoft and I can see why he lost that battle. I was hoping someone pointed this one out. Granted, they've blogged about spending tens of thousands of dollars on lawyer fees and the owner's last name is Nissan. But still, it's a good case study of the little guy winning. Dont know what country you live in but check the categories the trademark was linked to. If they are in the same line of business as you and the TM has that category that covers the line of business you are in I would be questioning the trademarks office for awarding the TM to the other entity. TM's are cheap so its an easy trick and a lawyers letter doesn't cost much either, but its a legal game you may well be forced to play, because they might go to the domain registrar and try it on with them to get your domain. Unfortunately these are the additional cost we can be forced into playing if someone with more money wants something from you like in this case your .com name. You could also see if your domain registrar as some sort of arbitration which could keep costs down or lower than using a lawyer. I think divorce lawyers best typifies some of them thrive on disputes. Good luck! Not a lawyer. Talk to one. In your country. In the USA, if there might be customer confusion between your two businesses then there is grounds for a cease and desist, but you have precedence. Might consider turning the tables and sending them a cease and desist :) perhaps they’d like to give you the .net domain as an apology IANAL but pretty sure trademark is based on first provable public use for commercial purposes. You should be able to contest the mark on that basis. Just screenshot the WHOIS record showing you had the domain 7yrs ago and hire a lawyer to write a cease & desist to them. Just because you hold the trademark doesn't make it necessarily defensible if it's proven that it was obtained surreptitiously. Depending on what you learn from the lawyer and how aggressive you want to play it threaten counter suit for damages and escalate. But agree with all comments: get a lawyer before you do anything. Talk to a lawyer and be prepared to spend money if you want to keep it. First use is a strong defense, but you will need to defend it. If you have similar products and can show first use, as you claim, perhaps negotiating a sale of your entire business including the domain would be something to offer them. Usually this kind of tactic happens because they've looked at you and guessed you don't have financial capital to defend yourself. Unfortunately, because it's very difficult to prove they're acting in bad faith, there's likely no way to recover your costs of defense. Get an attorney and push back. All they're doing is losing their trademark here. If you were using it before them, it shouldn't have been assigned to them. GET AN ATTORNEY. But to calm down, read about "stop and go" in Pittsburgh in the 90s. There was a store called that about an hour's drive outside the city. Then a gas station convenience chain merger tried to take on that name for 150 stores. About two years later the original store found out and said no. The 150 store behemoth tried to sue. The 150 stores are now called CoGo's. Out of curiosity, I have a similar question in the same vein. I own MY_LAST_NAME.com, me and my family use it for email, ( i.e. firname@lastnane.com ) should we register a trademark to protect ourselves from this type of bullying? Are we safe since its our own last name? Personal names generally cannot be trademarked. You would most likely need to have a business or other use case of your last name in order to be granted a trademark. Does this apply even if I have an LLC with my name? TBH this scares me quite a bit since we have all the family’s emails tied to the domain, not only would it be a huge pain to lose it but also a security risk. Weve had the domain for 10yrs or more at this point… You don't have YOUR_LAST_NAME.com as a website, right? You probably don't have anything to worry about. Having a domain that does not have a business attached means you're clearly not trying to do business on someone else's name. That takes away at least one of the 9 tests for trademark infringement. Unless they start a UDPR claim with WIPO, they are hoping you will just hand it over. This has happened to me. Ignore them until WIPO claim shows up. Which they probably tried and were denied. A good example is nissan.com They might be using scare tactics hoping you'll hand over the domain name without question. But I wonder if they have a case. My suggestion would be to either A) ignore and see if they go away, and/or B) have a domain name lawyer send a reply showing you won't roll over. That's usually enough for parties like these to back down. If you need a lawyer recommendation send me DM me on Twitter (@marckohlbrugge). More than happy to help. FWIW, some people might mention a procedure called 'UDRP' which is typically used by TM owners to quickly and cheaply get a TM-infringing domain name. However, one of the requirements for a successful UDRP case is that the TM needs to have been issued BEFORE the domain name was registered. Which is not the case here. So a UDRP approach would fail for them. The other way for them would indeed be to sue and try to claim TM infringement in court. I don't have much experience with TM law, so I'm not sure what your odds of winning are. But there might even be a way to get their TM invalidated. TL;DR: Talk to a lawyer. P.S.
If they have money for lawyers, they might also have money to buy your domain name. I wouldn't propose a purchase until you've talked to a lawyer (as it could hurt your case), but it's something to consider for later on. In particular, the UDRP rules include the following: -------------- (ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular, [...] (3) why the domain name(s) should be considered as having been registered and being used in bad faith -------------- Yes, although that criteria is somewhat subjective. Since an UDRP needs to meet all criteria, you can throw it out by just looking that the registration dates. Or option C) Negotiate a deal to get paid for the domain Marc, do you have an email address? marc(at)hey.com Note that I'm not a lawyer, but I've dealt with similar issues before through a qualified lawyer. Happy to introduce you. Not sharing name here publicly, because that could potentially be used against me. (i.e. someone intentionally creating a conflict of interest, etc) On a semi-related note, I registered a trademark for my company and the .com is just domain squatting. The .com preexists my trademark however. Do I have any grounds to try and claim it or am I SOL. I know if they were actually using it for a business, it'd be one thing, but it's a generic domain-for-sale page instead. Just to be clear, domain squatting has a definition. The fact that a domain you want isn't currently available is not domain squatting. "What is domain squatting? This is the practicing of buying a domain name for the sole purpose of preventing someone else from buying it. Typically, the buyer will then resell the domain name at a higher price to a buyer who is desperate to pay for the domain. The domain squatter takes a risk in trying to find a domain that someone else will be willing to pay at an up-charge to buy the domain in the future." If the .com "preexists your trademark", it's harder to prove they bought it to prevent you from buying it. If you're a small business smaller than $80K per year in revenue, it's likely they don't even know you exist. Also related, there's a "tv" domain, registered after my trademark that serves porn. Same question. For this one, I've taken the general position that as long as they don't show up in the first 3 pages of google results for "company", I don't really care, but same question. For context, my company is a saas booking platform for outdoor recreation businesses. Have you asked them to sell? Usually the price is not even that bad - especially in comparison to any legal fees this endeavor might cost you. They wanted like $80,000. My company makes that in annual revenue, so it's a nonstarter. Try to reply you can pay $5k... Name and shame the Founders. There is a huge community of domainers on Twitter. There will be blowback. You will get tons of support, and recommendations. (as well as guidance on lawyers...etc). Yes, consult a lawyer. Also understand, nothing happens in 3 days. This is all a bluff to scare you into responding and signing away your rights without proper advice. First, contact an attorney who specializes in this area of business and law. Meanwhile, also look up that law firm that sent you the letter and see what you can find out about them (e.g., are they even legit, what kind of other cases do they handle, etc). And search for any information you can find about this other company and the people. What have they done? do they own property? What other businesses? Criminal records? etc. etc. etc. Also gather all your own records - business formation, original site registration and registration history, logs of any marketing and advertising you have ever done, etc.. Anything that shows you actively using this trademark over time and as far back in time as you can establish. Bring this data to your new specialist attny. Sounds like they always wanted your domain, and this was their attempt to get it. Their big scary letter is basically a bunch of “give up your legitimate rights for nothing” Consult with a lawyer. Intuitively their case makes no sense, but actual law is not always intuitive IANAL, but at least according to ICANN rules you have nothing to worry about unless "your domain name has been registered and is being used in bad faith". You can see the specific definition of "bad faith" and the rules around this here https://www.icann.org/resources/pages/policy-2012-02-25-en Its easy to prove you are not acting in bad faith because your ownership precedes the trademark. I personally own and use several domains that others hold trademarks on, but all of mine were registered before those companies established trademarks. >Is this correct? Sounds ridiculous to me. It is ridiculous, and the only reason for this is because they have no legal right to the domain name. My experience has been that you can tell them to pound sand. They are hoping the threat of legal action will cause you to panic out of fear. I suspect if you reply "no" you will never hear from them again. I have had a .com since 2003. A SF startup made a INC after my name and got the .org. They called me at my work and I just said I have business plans for domain. They trademark the name, but have not bothered me. Please, share the name of the company. Let's name and shame them. I hate this kind of law-aggressiveness. Not a lawyer but been in a similar situation. I will give the simple advice I wish I had followed: 1. Do not reply to the email yourself.
2. Get yourself a lawyer and keep a full accounting of all legal expenses. > Do not follow any "free legal advice" from HN -- and I'm speaking as an actual licensed attorney. Not sure how to interpret this free legal advice. I'm an IP lawyer but not your lawyer, and I'm licensed only in Texas and California, so don't rely on this as legal advice. Back in the day I did a fair amount of trademark litigation but that was quite a few years ago; these days I do neither trademark work nor litigation. 1. A bit of Google-searching suggests that you're in Australia. I couldn't find any U.S. trademark registration for $NAME, where your .com domain is $NAME.com as listed on (what I surmise is) your Twitter header. 2. If the facts are only as you say — always a big "if" — the letter you describe would be ... let's just say, groundless, at least in the U.S. 3. If you own $NAME.com; AND: For seven-plus years you've actually been using $NAME as a trademark "in commerce" in the U.S. by shipping goods bearing the mark (or rendering services under the mark) in interstate- or foreign commerce; AND: You're being threatened with a U.S. trademark registration, AND: The registration hasn't been made "incontestable" by the passage of five unopposed years; THEN: In theory you could petition the U.S. Patent and Trademark Office (USPTO) to cancel the other company's registration, on grounds that you're the senior user. That would not be cheap, and I think this would require hiring a lawyer to represent you in the USPTO. https://www.uspto.gov/trademarks/ttab/initiating-new-proceed... 4. You might find amusing the precedents at https://www.oncontracts.com/monster-cables-picked-the-wrong-... (response to a threatening letter from Monster Cable) and https://lettersofnote.com/2011/02/14/regarding-your-stupid-c... ("some asshole is signing your name to stupid letters"). In a similar vein, one of my late former law partners reputedly had a big BULLSHIT rubber stamp that he would supposedly apply to such letters and return them to the sender. (I don't remember ever seeing the stamp so it might have been a story that "evolved" over time.) 5. The title/headings that you list are mostly gorilla dust that unsophisticated lawyers throw up to try to get opposing parties to agree. There's no way you'd want to agree to all, or even most, of that without a BIG, buyout-type payday in return. Again, don't rely on the above as legal advice; when in doubt, consult a lawyer who's licensed in the relevant jurisdiction. EDIT: If you want, email me (see my HN profile); if this is a U.S. matter and it's not from one of my existing clients (extremely unlikely), maybe I can write and send an "appropriate" email response for a purely-nominal fee (but I wouldn't be able to take on anything more than that). I am not a lawyer, this isn't legal advice. Definitely don't respond yourself, get a qualified lawyer in with track record in startups/domains to write back (and advise). The letterhead goes a long way here in showing you're not trivial to push around. If facts as presented here are truthful, there is a reasonable chance of never hearing from them again. Seek the advice of a lawyer. Whatever you do, brogrammer2018, please post a follow up story here on HN. Assume you are in Oz and they are in US
so be aware that laws are different, as well as scooe of any marks granted (doubt they have an internatonal mark), as daid by others marks also cme wth limitayions on them - so see what mark they have. check your registration rules, and reach out to them to explain what is happening, stop any end run on your registra. > They claim as they client registered a trademark two years ago for the name, I must handover my .com domain to them for free, otherwise they will sue me. This isn't in what you quoted. I wouldn't be surprised if they didn't demand you give them the domain but hinted that you should give it to them because you won't be able to use it for the purpose you wanted anymore. You can most likely keep the domain, even if the trademark holds water - in that case you just can't use it for what you're probably wanting to use it for. If you were actively using the domain, the trademark might not hold water, but from the way you describe it, it seems like pretty passive use of the domain. It's also bad to let them register a trademark you wanted. I don't know too much about it, but presumably there's a way to get something like a Google Alert if your brand is going to be trademarked, and you can oppose it if you know about it in time: https://www.gerbenlaw.com/blog/filing-a-notice-of-opposition... If they did demand the domain, see nissan.com. I don't think it necessarily hurts them to demand the domain. Nissan hasn't gotten the domain but they haven't got in trouble for demanding it either. No lawyer has been disbarred over it. ICANN stops short of transferring domains because of trademarks alone, but it isn't with prejudice. A trademark isn't a domain, but a domain also isn't a trademark. If it were, a lot of YC brands would have been squatted, because plenty of had to settle on not having the .com at first, and many have ended up getting them later. I wonder what it was like when codeacademy.com got codecademy.com. Perhaps it was something like "Hey, you guys can't use codeacademy.com for much, mind selling it to us for cheap?" It's not correct and does sound ridiculous. I highly recommend calling a domain attorney. Most will give you a free consultation. One person who specializes in this type of dispute is John Berryhill: https://johnberryhill.com/ Can you share who they are? Not naming them only helps in letting them hide their crime in darkness. They are just trying to scare you. Many famous companies need to buy the domains from people registered earlier. There’s no such thing as trademark automatically gives right to domain names. Tell them to use their own .net domain name and go away. Send them a cease and desist and tell them you're going to sue for attempted fraud (or better term): They have no right to their claim and are using abusive language to make you do something under threat. You can get quite some money out of it I believe. IANAL and this is not a legal advice. I hope they can turn around, sue them and take their .net domain name. I also IANAL and this is not a legal advice. Perhaps you should get a lawyer to advise you of your rights and options. > Is this correct? Is it correct that they will sue you if you don't comply? Maybe, that's up to them. Is it correct that your use of the domain name violates their trademark? Also, maybe. That depends on the market you are in, the market they are in and that the trademark is registered for, and other things. If you aren't willing to just hand over the domain, and don't want to just roll the dice on liability, you should seek professional legal advice, and not respond in any way until you have received and considered that advice. I am not a lawyer. > Is it correct that your use of the domain name violates their trademark? Also, maybe No. As an issue of black letter law, if they can demonstrate that they were using it before the issuance, it does not violate trademark, by design. Many trademarks are lost this way. own.net is not own.com, it looks to me like they are trying to dupe you into "voluntarily" relinquishing your domain, and will try to argue that the similarities of subdomain, are so much stronger, than the dissimilarities btween root domains that it is damaging and they deserve control over a root domain that has a similar subdomain. thats a big hunch, and i dont see that going in a good direction at all, for anyone, if my hunch is actually fact, rather than hunch Dropbox ran into a similar issue, but they were on the other side. They wanted Dropbox.com, but someone else owned it. They kept running under a similar name for a while, until Dropbox.com started advertising for their competitors. Then they threatened to sue Dropbox.com, and Dropbox.com sold the domain to them. There's a really interesting episode on the Tim Ferris podcast, where Drew Houston shares the story. If you’re in the same industry, for bonus points consider filing to dissolve their trademark since they started using it long after you had been. Surely their trademark is invalid if you were already using the name before them, and I think if you registered the domain before they registered the trademark, again their bad luck, you have priority. Of course you need to get a lawyer if they do sue, but it sounds as though you should be the one suing, demanding they cease and decist, etc. Two months ago, I had a similar experience with one "lawyer", the same letter from another "lawyer" a week later. In the end, none were "lawyers"; they were domain squatters. I ignored them, and they went away. (this is not legal advice, but you have to be sure if these are lawful people or scammers). > If anything I would have thought they should be the ones changing their name, as I was using the name 7+ years before them with a similar product FWIW this is the kind of protection you could get by registering your business/product's mark. I'd say it's still possible but probably slightly harder to do now. The EFF has a cooperating attorneys list. They can refer you to someone who can help. HN is not the place to ask for legal advice. Just because it tangentially relates to technology does not mean it belongs here. In any case: asking for legal advice without even providing a the jurisdiction(s) or details is a waste of time. Unless they are in the porn business, a porn site is not trademark infringement.. I thought that was the point of trademarks, being able to control their use. Please post your experiences after you've had legal advice since I'd have assumed you wouldn't have a leg to stand on. Put it into your spam folder I always found amusing reading The Pirate Bay email responses to lawyers from Dreamworks, EA, Apple, etc. Publish this letter on your domain and point at the evil "big co" get a crowdfunding campaign to fight the evil corp on the courts get in touch with lawyers dealing with IP/trademarks you can have a brief talk w/ them to discuss options before making any decision :) I'm against NFTs but seeing these posts I feel like using some blockchain with low fees that is dedicated for DNS would be actually a good idea... isn't it a classic case, lets say there is a domain , and doing good business. I will go and book a the same name with different extension lets say domain.xyz and get a trademark. Now I will sue the original domain owner and extort money out of him without even having a business. I am really curious now what happens when we ignore such people who tries to create a hostile situation. Went through a similar situation where I owned (company).com and someone later filed for a trademark and registered the(company).com. I hired a trademark attorney and he sent a nastygram back. We had evidence of first use in commerce and offered not to sabotage their pursuit of a trademark. They immediately agreed, backed down, and signed a document allowing us to use the name unrestricted irrespective of whether they successfully obtained the trademark. As we expected, the trademark application was denied (the name was descriptive, not unique) and it was all behind us quickly. TLDR: get a lawyer. Trademark law is weird. And don’t be mean - the other business is now your first call if you ever decide to sell. Did you get them to pay you for the non-compete? Yes the other option is to sell the domain for a profit. I wonder if counter-suing them would be an option and lesson to teach the crooks.
Plus it would be an amazing publicity Genuinely curious, isn’t there merit (I guess in terms of law?) for OP to do the same to the .net company? IANAL. But, your use of the domain in commerce constitutes prior art. 100% get an attorney. You were 1st, you are all good UDPR is your friend UDPR is definitely your friend. Your domain info should have been private anyways, too late now. One question is what content do you have on the domain today and does it relate/similar to the .net domain? If your .com is being used for something beyond a parking page, the .net don't really have a chance so let them file a UDPR. Reply saying you’ll sell it to them for N and see how quickly they change their tune. I’d talk to a lawyer about drafting a counter letter saying you were unaware of them using your brand and that they need to do all those things back to you since you have been using the name longer. Also petition the trademark office to invalidate their claim due to your prior use. I would say "no". Or ignore it. Don't ask for money. Being seen as "domain squatting" them will work against you in a tribunal. Web3 and Bitcoin fix this. This has happened to me several times, I have never taken it seriously or put much effort into responding. I usually would go straight to the throat and very personal. Publish their letter on the domain they seek, capture all lawyer and company details and publish to site. Use opsec for phone numbers, call them at terrible hours ( at home) to discuss offers of payment. They are trying to bleed you with superior resources so guerrilla tactics are best ( legal of course) They act different when they realize they are exposed and you don't care about normal processes. Lol, I should make my own David v Goliath service. Depends on the size of Goliath. No one scary came for me and a few 2am calls led to crickets. This is the type of comment I come to HN for. I try to explain to my partner there is always alternative ways to handle matters, and going with "the process" has inevitable outcomes. Probably good they work at a bank and I well... Don't Can you further elaborate on your story I am very curious? > Use opsec for phone numbers, call them at terrible hours ( at home) to discuss offers of payment. IANAL, but if your goal is to give the them additional grounds for suing you, you may be off to a good start. I think the idea is that it's plausibly someone else calling, since you made the documents containing contact info public (which is legal I hope?). Sounds absolutely ruthless and I quite like it. Don't think I'm bold enough to do it myself but I'm always surprised how much being persistent gets you when you're talking to companies. If one was short of time, one could always put out a tender so that several (hundred) different independent agents could speculatively contact them in order to conduct negotiations, then present you with offers that you could compare. If those agents were in turn having trouble establishing contact, they could farm out this effort to others who had more time and expertise in this area. This. If it is legal, you should at least consider escalating as far as you are comfortable. You are now at war, whether you like it or not. Never back down, never surrender. > call them at terrible hours ( at home) This is a really nasty idea. You’ll be bothering their family who have nothing to do with it. Sounds like you’re advocating harassment of people’s families. They're already harassing you under the guise of a legal process. A clock punching attorney won't be emotionally invested in the details of a matter, but the victims of such nastygrams are - the main goal of such letters is to make you stressed and worried so you just cave - hence the corollary of hiring a professional who will handle it impersonally Two wrongs don't make a right, and it certainly may be imprudent to escalate. But there's no moral ground for them to stand on here - they're in the same category as any other spammer. Furthermore nowhere did OP advocate deliberately expanding the scope to their family. If phone calls at inconvenient-to-them times end up bothering their family as well, it's because they didn't do the work to separate their family from their ugly business. In general I don't buy into the idea of declaring some times as off limits for phone calls, since society has never given me the same courtesy in the early morning. I'd much rather get calls at 10PM than 10AM, and yet it's somehow acceptable for businesses to return an afternoon call at 9AM sharp and pretend they're doing their best to communicate. A lot of words to justify that you know you’ll likely be impacting someone who did nothing against you. I'm sure many more words have been written by legal nastygrammers justifying their own actions of unsolicited aggression. Shouldn't we aim to have better moral standards than them when dealing with third parties? I'm just absolutely dumfounded that someone is seriously suggesting harassing a wife and children over a business relationship and repeatedly trying to justify it. In general? Sure. When dealing with hostile unwanted contact? Not particularly. Nobody here has advocated harassing someone's wife or children. That's a straw man you created. > If phone calls at inconvenient-to-them times end up bothering their family as well, it's because they didn't do the work to separate their family from their ugly business. Real ‘nice family you have there, shame if someone would scare them with a few calls at 2am’ vibe there, and you know it. It's more like don't harass people and then expect having a family will shield you from the repercussions. These nastygram shakedowns deliberately cause personal stress to their victims (there is little other reason to send baseless legal demands), and so escalating the situation to be personally stressful for the attackers seems like an appropriate response. As far as I can tell you're arguing that it's one thing to harass people during "business hours", but there is some greater principle whereby harassing them back at off hours is wrong because it might bother their personal associates. If you don't want to get phone calls at inconvenient times either don't be a shithead in the first place (so that people calling you respect your schedule), or figure out how to silence your phones. > escalating the situation to be personally stressful for the attackers seems like an appropriate response I'd morally disagree with that. Shouldn't deliberately cause someone personal stress, no matter what they've done to you. > I'd morally disagree with that. Shouldn't deliberately cause someone personal stress, no matter what they've done to you So if someone robs you, then you shouldn't call the police on them? That's a direct implication of your statement here. This whole "conversation" has been you quibbling using half-baked one-liners while avoiding any substance. I'm done. > So if someone robs you, then you shouldn't call the police on them? That's a direct implication of your statement here. No the opposite. You should call the police on them and let them deal with it. You shouldn't attempt to put any pressure on them yourself. > avoiding any substance Don't harass people. Use proper procedure to resolve disputes instead of calling them at their home. > Use proper procedure to resolve disputes That's really the depth of your thinking here? Sheesh, why did I bother? Here's a practical reason if moral reasons don't work for you. If calling them at 2 am for some reason doesn't get the business result you want, and you have to go to court, the court'll ask you what reasonable steps you've already tried to resolve amicably, and the judge will think you're in the wrong when your opponent brings out a log of your 2 am calls to their residential address. Suddenly it'll look like they were just doing legitimate business and you were threatening and harassing. Even if you aren't a moral person, it pays to do things properly. From my very first comment: > Two wrongs don't make a right, and it certainly may be imprudent to escalate The root of the hacker mindset is looking at alternative solutions that go against the common narrative. It sounds like this method worked out for OP, so it is worth considering. I don't think I personally would go down this path due to possible complications, its utter pettiness, and the fact it is very easy to silence phones at off hours. But depending on the situation, maybe it would make sense. I am a very moral person, hence having thought these things through. You're the one taking the shortcut of assuming anything done through "proper procedure" is moral. In my book, calling the cops on someone is most certainly escalating the situation and causing them personal stress. Deferring to the system is not an absolution from moral reasoning. This is what worked for me a few times. It is painful for a bit but better than spending money on a lawyer. I would also suggest to try and find a lawyer in your network willing to help at below their retail price. Despite the bad rep, lawyers are humans and are very eager to help good people Every answer in this thread is wrong except for "hire an attorney and work with them to figure out what the best option for you is." Do not follow any "free legal advice" from HN -- and I'm speaking as an actual licensed attorney. I don’t question your motives in this instance, but I always pay extra attention when someone’s advice is to hire them or someone like them. Obviously, “hire a lawyer,” is sometimes right. But if I hired a lawyer every time I was told to, I would be out hundreds of hours of billing fees. Anecdotally, I’ve never fucked anything up royally. That doesn’t mean that I made the right decision, but is something I strive for. Spending $300-1000 on a consult every time I might need one is like taking an antibiotic every time I might have encountered a bacteria. It’s important to qualify and spend money when I actually need to rather than every time. It’s like those people who say “don’t criticize my book until you read it” (since that usually means that it makes them some money to have me buy their book). If I had to read every book to figure out if I should like it or not, that’s impossible. I need to develop effective evaluations and filters to prevent me from wasting my time and money. > Spending $300-1000 on a consult every time I might need one Actually I’ve been surprised to find that many times even high priced attorneys are usually willing to spend 20-30 minutes+ giving you some general advice before even retaining them. I’ve gotten very valuable advice this way several times at no cost. This is my personal experience as well. They need to due a little due diligence before taking you in as a client, such as assessing if your needs fall within their expertise and whether you will be a potentially profitable client. If you work as hard as you can to summarize your case to respect their time, as opposed to rambling like an incoherent crazy person, you can often get a free pointer on how to handle the case & maybe a referral to someone who is better prepared to assist you. > Anecdotally, I’ve never fucked anything up royally. You're not necessarily wrong, but that's definitely a survivalship bias. You only need to lose once for a game over, so everyone still playing underestimates the stakes at play, as there is close to no interaction to people that have lost. I agree. And it balances out the survivorship bias of “I always get a lawyer.” I’m not sure of a good way to balance out and correct for my bias other than just trying to think critically for when I need and don’t need a lawyer. Which type of error do you feel more comfortable making? One type of error is paying a lawyer when you didn't need one, in which case, you're out $X. The other type of error is not paying a lawyer when you did need one, in which case, you're out $Y. In my experience, the values here are frequently $Y >>> $X. In the end, the choice is yours; you rolls your dice and takes your chances. In my experience, a lawyer will also nudge you towards whichever course involves keeping a lawyer involved. They'll never tell you "if I were in your shoes, I wouldn't keep going". A bad lawyer will never help you get to the point, because a bad lawyer needs to milk you as they have little to no referral business. I got a semi-serious traffic ticket in Colorado in 2014, but I lived in California. I forgot about the ticket, and remembered a couple years later. I wanted to clear up the situation, but navigating the court system from a different state was challenging. I decided hiring an attorney local to the area would be easier than traveling to Colorado. I called maybe 6 to 8 attorneys, and they fell into three categories: too expensive, too inexperienced, or just right. Too expensive sounded like “we’ll need a $2000 retainer to even look at your case.” Too inexperienced sounded like “I just graduated from law school, and I’ll give you a super good rate for the experience of working on your case.” Just right sounded like “I know the district attorney who is overseeing your case. Their name is $NAME, and here’s exactly how I’m going to handle your case… <time passes> …I might be able to handle this for $500, but it could cost maybe double that if it’s more work than expected.” I got the matter resolved for between 1X and 2X the minimum estimate, and was happy with the results. What did you use to look them up? > In my experience, a lawyer will also nudge you towards whichever course involves keeping a lawyer involved. Both of the times my wife and I have consulted an attorney, they provided an overview of the relevant legal and practical context, a description of options of how to approach it and what they could do as part of that and the fee structure involved, and a description of why hiring them would probably not be cost-effective for the issue at hand. I'm sorry you had such an experience. Ethical lawyers will give you the best advice they can, which often includes "you are going to end up paying me way more than what's at stake here." (This literally just happened to me as a client over a land-sale-deposit dispute.) Or, "This is a turkey of a case and you should roll over. You owe me nothing." I have gotten that advice from lawyers. I just kept hitting up new lawyers until I found one that saw things my way. Resulted in a windfall for me. Glad it worked out for you, but it's a bad idea to extrapolate that to broader advice. Maybe you got lucky. Maybe it wasn't luck and you have some kind of gift for assessing case trajectory. But in either case, most people aren't going to be able to predict a case outcome better than experienced attorneys. two out of three common auto mechanics were caught here giving false estimates and cheating to some extent on common operations.. how many people can discern minor errors with law? My experience differs. I once had a legal dispute in which I was asked to sign away some additional rights in order to receive some money that I was owed anyway. My lawyer said, essentially, "you are in the right, but you aren't planning on using those rights anyway, so just sign the paper and get this over with." There are scrupulous and unscrupulous lawyers, much as in any profession. > My lawyer said, essentially, "you are in the right, but you aren't planning on using those rights anyway, so just sign the paper and get this over with." There are situations where this is very good legal advice. Collecting things you are owed from people who don't want to give them up takes time and money (and involves risk), and even when it nominally works the systems intended to make you whole for the additional costs don't always, and especially often don't value time (both delay and the consumption of your personal time) as much as you do. A lawyer's job isn't just to advise you on what the law says you are entitled to, but more critically to do so on the course of action that will best achieve your interests given the pragmatics of the legal system. They will, because they don’t want to pursue legal action where there’s little chance of them getting paid. It’s worth giving you a half-hour of their time for free to figure out if 1) there’s enough money involved, 2) the defendant can pay up in the event of a win or 3) you can pay up if you don’t win. Nothing worse than working 100 hours and not being able to collect because the defendant is “judgment-proof” (aka flat broke). Have a home issue where the builder owes me $100k in an open-and-shut case… but there are a dozen other people in the same situation, his company has folded and he’s under indictment for fraud in an unrelated case. My lawyer advised me to just move on with my life as any chance of collecting is near-zero. 99% of the lawyers I've met are scum, and I've met hundreds. One lawyer I hired to defend me in a contractual pay dispute said to me on the first meeting with both sides "Do not let this get to court. If this goes to court the only people that will win are me and the other lawyer. We'll both get to take an extra vacation this year." So, 1% of lawyers are not scum. Luckily it didn't need to go to court. I walked into the meeting, let the other side play hardball, "We're not going to pay you any of the money we owe you, go fuck yourself." and then showed them in the contract they had signed where it says they don't own any of the copyright to any of the work I developed for them. They left the room and came back several minutes later with a cheque. Which one was it and how did you find that person? I can't remember his name, this was circa 2004 in the UK (so technically a "solicitor" not a lawyer). I found him on a referral from an acquaintance. Since your comment is categorical, I'd like to chime in with a counterexample. I've gone in for a consult and gotten "you've already pretty much done everything I would. I can charge you $2000 for the rest but you probably wouldn't want to do this seeing that you already have done all of the work." I've consulted lawyers perhaps a dozen times in life, and not once have they attempted to make me use them. Most actually help me in the 30 or so minutes free to find a better solution. A few times I had to go all in and hire them: I won a copyright infringement suit, stopping someone from selling knockoffs of things I sell, I needed some to represent me in states half way across the country to get a trust drawn in that state rejiggered, I won a case against a landlord. Each of those times I needed one to screw it up by not hiring a lawyer could have cost me significant money. And in each case, by hiring one when I was in in the right, the lawyers delivered. And only the copyright suit was expensive to pay lawyers for - the rest would amount to a few months rent to obtain significantly more in return. This is also the experience of a few friends I consult each time I weight "do I need a lawyer". So my experience is 100% the opposite of yours. How many times have you used a lawyer for something and had your example happen? How many times have they not done what you claim? Care to share examples? Ive had three legal advice experiences - two with work and one personal. The employer ones were both straightforward about whether or not we should do something, and they did not encourage us to keep returning to them on the issue, and the personal one the guy gave me a 30 minute phone call, advised me that if I wanted to formally pursue the matter I would need to engage his services at £200/hour, however his unofficial legal advice was to just proceed and not bother. As another anecdote, my experience with developers is that developers will repeatedly tell you that the software isn't complete and requires extra attention to keep it running and to maintain it, and that it needs extra time for refactoring, despite it functioning correctly right now... > my experience with developers is that developers will repeatedly tell you that the software isn't complete and requires extra attention to keep it running and to maintain it Is that not true in most cases? A running system will eventually become vulnerable to attacks, and/or services it relies on may be deprecated. The last thing you want is to be in a situation where your software is easily exploitable, but your dependencies are so far behind that a fix becomes a multi-month or year long project. Yes, and im sure it's equally as true for lawyers too! It is essential to ask around for recommendations -- there are some great lawyers out there. When you need a good one, you may find yourself suddenly-surprised and grateful to be paying their (substantial) hourly rate. I have no skin in this game. I just have experience. The outcome here could be that OP loses their domain name. If they just want to give it up, they don't have to hire an attorney. Easy answer. But if they do want to keep the domain name, when paid opposing counsel comes knocking at the door, they need to lawyer up, plain and simple. Even if they want to give it up, the agreement will likely have representations and warranties (see part about any known/future claims) which OP should not just sign without an attorney reading it over. The agreement will surely be written in a way that is very favorable to the other party. It isn't that simple. The burden of proof and the cost of filing suit is entirely on the people who own the .net domain. You can't lose a domain based off of a threatening email. I have received threaten letters before and have responded with "I dispute these claims. Please do not contact me again in any manner" and I never heard from them again. I don't know enough about the company sending the threatening letter here, so I can't say if that would work or not here, but it is very possible you don't need a lawyer. > You can't lose a domain based off of a threatening email. Indeed, but if you take no action at all, the opposing counsel does take action, and you don't contest the action, then the default outcome could be a forced transfer of the domain. So you agree that he doesn't need a lawyer at this junction. But if a lawsuit is filled, he will need to respond and request that the case be dismissed. Using a lawyer for that step isn't a bad idea. They are going to have a hard time finding a case that set a precedent that you can take over another company's website because you registered a similar company 5 years later. Lookup nissan.com This is not legal advice, but I don't recommend waiting until a suit is filed. Hiring counsel early and figuring out how to respond to the initial notice can be important: it might keep the courts out of the dispute altogether (especially if the other side is on very weak grounds) and might increase the settlement amount (if any) should OP choose to settle and transfer the domain. There's more to this issue than just the naked law and legal procedure. Context matters, and experienced lawyers help you navigate situations. They're called "counsel" for a reason. :-) But at what cost? 200/hour to navigate a situation that is easily winnable? Also if the other party knows that he has a lawyer they can use that to run up legal fees, making a settlement seem like the cheaper option. You are assuming "easily winnable" without knowledge of all the facts and the law. The whole reason to hire an attorney is to get an informed opinion about where you stand in the first place. You are assuming that one cannot access facts and the law without paying a lawyer. This. While I respect lawyers immensely, I think half the battle is deciding when to use a lawyer vs handling it yourself. With that said, this guy definitely needs to consult with a lawyer. Usually you have something like insurance for this. In Dutch it is called “rechtsbijstand” for private persons and pretty affordable. These are not necessarily the best lawyers obviously but they are backed by huge law firms. Probably the same exists for businesses but way more expensive. So it doesn’t need to be expensive to request the support of a lawyer. "Rechtsbijstand" is dependent on certain conditions. Amongst which a minimum amount of financial damage. The "juridisch loket" is an organisation that provides free legal advice and is financed by the Dutch government. This is probably a better option in most cases. > Spending $300-1000 on a consult bruh consults are free, you're getting worked There are free consults, but then you aren’t their client. Paying for an hours time gets a more detailed consult and makes you a client that gives me more meaningful iformation and also some “work.” I don't know what's so special about law that it can never been discussed in any forum. You can certainly ask about other people's previous experience, possible advice or recommendations. For example for certain legal issues there are government websites that can help, etc. Saying "hire an attorney", as if it was no big deal to directly spend thousands without first asking around, is a bit strange. The advice sort of extends to any profession doesn’t it? Sometimes you can get good advice from strangers on social media, most times you probably shouldn’t risk anything on it though. It’s sort of like Google programming isn’t it? I’m sure you’ll get it to work, but you hopefully wouldn’t do it if you were building medical software that could end up killing people. That’s when you pay the experts. It also incorrectly assumes the purpose of a forum (this and many others) is to simply find the answer to the person's question. For as long as people enjoy reading, writing and discussing, the only important thing is that readers can distinguish between "legal advice" and something some random person said on the internet. I've litigated dozens of cases on my own. Law isn't that complicated, especially for the smart people on here. You can often do a better job on your own simply because you have waaay more time to spend on the issue than a lawyer would. Plus you have skin in the game which makes you motivated in a way your lawyer will never be. The flip side to that is that it is illegal in most states to give legal advice to someone unless you are a lawyer. You can give legal information, but not advice. [Illinois once tried to prosecute me for the crime, so I have some experience] Person who charges $600/hour: "your only correct action is to hire a person who charges $600/hour." Sorry for the snarkiness, but I'm continuously gobsmacked by how oblivious people, especially attorneys, can be to the fact that the Game of Justice as it is played in these parts is simply not accessible to the vast majority of people, who can only try to find another way to work around the system even if it's probably doomed to failure. You can add a layer in between: there are countries with a governmental institution[0] where you can go to for basic legal advice. They may point you to an attorney if needed, but for basic things they can give you advice themselves. [0] Dutch example: "Het Juridisch Loket" In the US, you can call your local bar association. They’ll generally find an appropriate lawyer, and charge a small amount for the initial consult/matchmaking. Bullshit. Knowing your rights, reading the law and discussing it is a perfectly fine thing to do for everybody. > Knowing your rights, reading the law and discussing it is a perfectly fine thing to do for everybody. Sure. I am a former law student (in mid career when I did that), worked in legislative office, spent a large part of my career as a government program analyst that did lots of legal/compliance analysis, and spend huge amounts of reading and discussing the law, legal rights, etc. But when people have an immediate concrete legal problem with substantial property or other interests at stake, whatever other discussion of my understanding of the involved law involved might be interesting, the only correct advice in ~99.997% [0] of circumstances from anyone who is not a lawyer, or even just not the person involved’s lawyer on the matter, is to get someone who is your lawyer (at least for the length of a consultation) review and advise. [0] there are situations where the practical context is such that the law and legal advice are irrelevant, though they are quite exceptional. You act like getting informed on the law is somehow contrary to hiring a lawyer, which is especially bizarre, since most of the advice was phrased as "in my experience X is likely to happen, but you should consult with a lawyer". Is it wrong to try to be informed of the law (when ignorance is rarely an excuse)? To find out what rights a trademark or a domain name confer? Or to list precedent and examples, such as nissan.com? We should just stick our heads in the sand, resign ourselves to total ignorance and helplessness, and let the lawyers do all the thinking? Lets make this specific. Look at this comment: https://news.ycombinator.com/item?id=29522196 Are you saying every part of that comment, except for "This is probably not DIY territory; consult a lawyer knowledgable about trademark law to help you determine how to respond." is wrong? For example, is the following statement wrong in the U.S.? > Just like patents have a concept of "prior art," trademarks have a concept of "first use in commerce." Agree, just got a TM, and the journey was full of grey areas and few to zero xor solutions. For all the lawyer haters, the game is already rigged, so don't hate the player. > Every answer in this thread is wrong except for "hire an attorney and work with them to figure out what the best option for you is." Do not follow any "free legal advice" from HN -- and I'm speaking as an actual licensed attorney. Speaking as a former law student that left because I got back into technology, and who is a fairly educated layman on the law but not someone with any financial interest in how people approach legal services, this. Do not respond to the letter. Do not engage. Do not alter your website. Do not hire a lawyer. The fastest way to enter into a legal battle is to hire an attorney and start engaging. Seems like an excellent way to lose your domain in a default judgement A default judgement requires that a case be filed. In the US, that means they have to serve you notice of the case. Obviously they have the OP's address, so if they fail to serve him the judgement should be easy enough to set aside. I'd do absolutely nothing in this circumstance until and unless they actually initiate a legal proceeding. If they did sue for the domain, depending on the value of brand I probably lawyer up, and perhaps seriously consider counter-suing them for both their domain and the use of the business name itself. "Strictly speaking, a cease and desist letter is not legally binding because the recipient can choose to ignore it. However, it is a valid legal document that establishes a precedent of a plaintiff's grievance. Usually, the letter sets a time limit for the recipient to comply with the request to desist from the offending action — or deliver an appropriate response if they believe the letter was sent in error." Take the letter. Delete it. Engaging is the fastest way to lose the domain. Their Lawyers want you to engage and start making written statements. Don't. "Seems like an excellent way to lose your domain in a default judgement" Lol. Don't ignore legal paperwork or court dates, which this isn't. This is not legal advice, but I don't recommend waiting until a suit is filed. Hiring counsel early and figuring out how to respond to the initial notice can be important: it might keep the courts out of the dispute altogether (especially if the other side is on very weak grounds) and might increase the settlement amount (if any) should OP choose to settle and transfer the domain. There's more to this issue than just the naked law and legal procedure. Context matters, and experienced lawyers help you navigate situations. They're called "counsel" for a reason. :-) Reminds me of my favorite lawyer youtube video: https://www.youtube.com/watch?v=sgWHrkDX35o Of course an attorney would tell you to hire an attorney. Can't up vote this enough. 1) This is an ex co-worker . I believe she's well versed in such things. I get nothing for this mention. 2) That said, one of the keys to trademark is being in the same industry, such that the public might get confused. Apple Computer striking a deal with Apple Records, once the former started to sell music, is a good example. Prior to that, there was no (legal or market) overlap of the two. One thing I noticed during the Get Back Beatles Documentary recently released, is that Apple Records was a subsidiary of Apple Corps. The Beatles' Apple had much bolder ambitions than I had realized. In the film, they discussed movies and performances under the Apple umbrella. John Lennon himself described it as: "we've got this thing called 'Apple' which is going to be records, films, and electronics – which all tie up." > 2) That said, one of the keys to trademark is being in the same industry, such that the public might get confused. Note that this is generally true for trademark law, but there are things like the ICANN/WIPO UDRP that can be used to expropriate domain names that have somewhat of a different standard. People tell to hire a lawyer, yet at same time hundreds of programmers copy snippets of code they dont understand, or use libraries unaudited by anyone That says more about the profession of "Programmer" vs "Lawyer" than it does about some imagined hypocrisy. Sometimes doing so yields an RCE, dealing substantial damage to both a company and its counterparties. > and I'm speaking as an actual licensed attorney. and so the racket continues This is the equivalent of a doctor saying "if you think you have cancer, don't blindly listen to the internet and consult a doctor and I say that as a licensed medical professional". This isn't someone trying to rope someone into a racket for their own gain, it's "Our laws and legal system are a clusterfuck that varies wildly from region to region. Get a free (or at least cheap) consult instead of taking a risk trying to navigate this yourself". There is no situation in which it is worthwhile to take the risk to try and navigate that clusterfuck yourself. Spend the 50USD or so and the hour of your time it'll cost at most to get a consult and go from there. At best you can get something out of this whole interaction but at worst if you don't consult a lawyer you can end up without the domain, without any money from selling the domain, and saddled with legal fees defending a lawsuit against you. Except that it isn't cancer. It's a headache. And sure, WebMD will tell you to call a doctor in case your headache is a blood clot. But most people just take aspirin. Exactly. Licensed attorney's typically avoid any commentary at all that could be construed as advice, to avoid creating a relationship. So if someone is sticking their neck out, it is hard to imagine there isn't an ulterior motive in telling everyone to lawyer up when they get a letter. Not that their advice is wrong - you should consult a lawyer over internet advice. But the "everyone else is wrong, listen to me" flavor is a bit heavy-handed. I'm being heavy-handed here because 20 years ago, before I was a lawyer, I was sued, failed to hire counsel in time, and unnecessarily lost my shirt as a result. I don't want the same thing to happen to OP. Legal questions come up on HN from time to time and the usual response is a bunch of wannabe lawyers incorrecting one another, and if OP follows any of their advice, Bad Things could result. I spoke up early this time in what was perhaps a foolish attempt to short-circuit this. No competent attorney is going to give legal advice here -- money aside -- because they would be violating their professional ethics code by doing so. Giving legal advice requires knowing facts at a very detailed level (the degree to which is rarely found in the post), knowing the laws in the jurisdiction(s), and having relationships and experience. Not to mention attorney-client confidentiality, and other reasons. Thanks for being a voice of reason. Whether or not you, or anyone else, believes, and / or can demonstrate, the current state of society and legal systems is a racket, doesn’t magic away the problem of a potential default judgement. This sort of looks like template document. An actual attorney would send paper letter, not an email. False. C&D letters are sent via email all the time. This is a great reason to ensure your mail client doesn’t auto-download embedded images, send read receipts, etc. No reason to tip your hand until a lawyer tells you to. For instance, the last time I dealt with a lawyer, they had me send responses directly, in hopes the other side would underestimate our position. It worked, fwiw. False. C&D letters are sent via email all the time. Millions of Americans don't have e-mail. They're just on social media. What then? That's why important things are always sent by mail. Very important things by certified mail. That's irrelevant for this issue. Domain holders have to provide working email addresses as a condition of registration, and are reminded annually to keep their addresses up to date. If an email address can't be found, the correspondence can be delivered through other means if necessary (mail, process server, etc.). But generally, there has no longer been a need to waste paper and postage to deliver notices since email became practically ubiquitous. IANAL but I am an internet plumber. Happy to provide expert witness that e.g. Hover, owned by Tucows, has a toggle for whois in their domain admin dashboard but it does nothing: I cannot turn whois on even if I want to. Having, or publishing, an email address does not mean I care to, choose to, or will in fact receive email sent by you; or that I will display or treat it in the fashion you desire. They may not check their email, but how is anyone on social media without email? I'm not aware of a single social site that doesn't require an email address to create an account. I believe all of them allow the use of a mobile phone number as an alternative. If you haven't registered the trademark, does holding the domain have any legal merit? "In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the rule is that ownership of a mark goes to the first-to-use, not the first-to-file." https://www.legalteamusa.net/trademark-law-first-to-use-v-fi... If he's doing business under that domain name, he is using it as an unregistered trademark and still gets some protection from that. In some cases, including when someone new starts a similar business with the same name, it can have the same force as a registered trademark. You don’t need to have registered. You get trademark ownership automatically without any registration if you are the first to use a distinctive mark in interstate commerce. Having registered can help assert your claim though. IANAL. > does holding the domain have any legal merit? There... is no relation between the two?
This was a red flag for me too. 3 days to take action? It takes longer than that to get anything done these days. They're trying to scare you into compliance. Three days is not enough time to get legal advice from an actual lawyer who is versed in domain name law, and respond. don't worry about this 3 day nonsense. Nobody works that fast.