Web Hosting Talk : Web Hosting Main Forums : Domain Names : We have received legal challenge on long held domain

[KwadGuy]

My partners and I own a domain. This is a reasonably valuable name (compound name), and the domain was originally owned by a big pharmaceutical company--who developed the domain for a pharmaceutical-related purpose at a cost of millions. At one point, they were required to divest the domain, the domain was passed to a third party (basically the group who had developed the site for the pharmaceutical company) who allowed to lay dormant for a modest amount of time, and then and we acquired it through the third party with the intent to use it an expanded version of its original purpose.

We developed a few pages for the site, detailing the type of content we hope to provide, along with contact and "coming soon" type notices, and have over the past few years tried to get it going as a full content site, but it has been slow going as we have searched for partner investors.

The original site was developed from the mid/late part of the '90s through the middle of this decade. We purchased it around 2007 for a price in the six figure range.

This is a .com domain.

This week, we received a legal notice telling us that a company that started in 2009 has applied for a copyright on the name of our domain and is challenging our ownership, saying that the existence of our site is "confusing" to their potential customers. They have filed with Icann. This company did not exist in any form at the time we purchased the domain and put up the "coming soon" type pages.

Any suggestions regarding what we should do? Given the timeline, do they stand a chance of prevailing, or is this a situation where they're just hoping we'll fold and give them the domain?

[IRCCo Jeff]

Contact a lawyer if its important to you.

[VIPoint]

Basically if the company didn't exist at the time when you purchased the domain then legally you are the owner of the domain. The company has filed the case on no grounds.

Contact a lawyer and file a counter at ICANN. How important is the domain to you. If possible negotiate with the company ad sell the domain to them.

You could make a fortune

[SiberForum]

If the domain name was first and then company appeared - relax. Domain name will be yours.

[Host Red Dragon]

There was a post on another forum I read with a very similar situation to yours. The op was advised to be careful about offering to sell the domain because it could adversely affect the dispute.

How true that is I do not know, I would advise speaking to a lawyer before doing anything else.

But, my undersranding is, that if the domain was registered before the company, then the company have no grounds, and the domain should remain yours.

[san-deep]

the domain was originally owned by a big pharmaceutical company--who developed the domain for a pharmaceutical-related purpose at a cost of millions

We purchased it around 2007 for a price in the six figure range

You definetly require to seek a proper legal attorney to help you.
Asking for help on Internet forums may get you in trouble if you follow a wrong answer.

[Dave Zan]

Originally Posted by SiberForum

If the domain name was first and then company appeared - relax. Domain name will be yours.

There are few limited scenarios where that isn't always the case. Look up the MySpace.co.uk dispute to give you an idea, although that was eventually overturned.

Originally Posted by san-deep

You definetly require to seek a proper legal attorney to help you.
Asking for help on Internet forums may get you in trouble if you follow a wrong answer.

Well said.

[miscellaneous]

...

Originally Posted by san-deep

You definetly require to seek a proper legal attorney to help you.
Asking for help on Internet forums may get you in trouble if you follow a wrong answer.

Quite frankly, what you post here could lead to trouble in court, if it were to come to that. In these situations you should never post anything that may come back to bite you in a way you never thought possible.

Bad move, this thread! Too late to ask someone to delete it, also. Good lesson for everyone. Bad, bad move!!

...

[4solutions]

Originally Posted by miscellaneous

...


Quite frankly, what you post here could lead to trouble in court, if it were to come to that. In these situations you should never post anything that may come back to bite you in a way you never thought possible.

Bad move, this thread! Too late to ask someone to delete it, also. Good lesson for everyone. Bad, bad move!!

...

I'm sorry, but I disagree.

The OP didn't give us any specific information. I think he got a lot of good information for free.

Hint: Google: "domain name lawyer"

[miscellaneous]

...

You could very well be right, 4solutions, and I sincerely hope you are, but that off chance that something could be used that was posted here is what drives up the cost of a legal team scrambling to put a positive spin on what the opposing legal team turned into a minus.

I'm just stating that there's no reason to take chances. There's a reason an attorney on a retainer gives the first bit of advice, "Don't talk to anyone until you call me."

Oh well, I hope all turns out fine for all parties.

...

[4solutions]

@ miscellaneous:

Hey, I totally respect what you're saying. But people get panicked and frantic and they often DO say stupid things on this forum that will be held against them.

But I don't think the OP went that far in this situation.

But, at this point, if the OP has a minimum of six figures invested into this domain, then they do need to retain a really good domain name lawyer.

[Techno]

They have filed with Icann.

This implies a UDRP. Read up on UDRP and look at past decisions before filing your response. It's well worth getting a lawyer since you purchased this "in the six figure range".

http://www.icann.org/en/udrp/udrp-policy-24oct99.htm
http://www.icann.org/cgi-bin/udrp/udrp.cgi
http://www.wipo.int/amc/en/domains/search/index.html

[nameslave]

Originally Posted by KwadGuy

We purchased it around 2007 for a price in the six figure range.

I agree that you should be talking to your lawyer, and not asking around here. Good luck.

[Techno]

Does this pharmaceutical-related domain name contain a trademark or name of the drug? ie valium, accutane..?

[Tech Evangelist]

No advice that anyone gives you here has any bearing when it comes to a legal battle. The only advice that matters is that you need to hire an attorney.

Something is not quite right here. I suspect the issue is a trademark issue and not a copyright issue. Most trademarks are easy to protect, but you cannot apply for a copyright on a name.

http://www.copyright.gov/help/faq/faq-protect.html

Read the part that says, "Copyright does not protect names, titles, slogans, or short phrases. In some cases, these things may be protected as trademarks."

If you received a legal notice threatening you with a copyright violation for the domain name, it is probably a scam or a company trying to scare you into giving up your domain. Every attorney knows the difference between a copyright and a trademark. These types of scams are common.

You should also read this page

http://www.pravel.com/FAQ_trademarks.htm

If it is a legitimate trademark issue, you might have a strong defense due to "prior use".