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I'm in a situation where a cybersquatter holds a domain name that I have trademarked.

My company "Example Ltd" is based in the UK, and we've been established under our brand name for over 30 years. Our brand "Example" is a unique made-up word, ie: you wouldn't find it in a dictionary.

We hold the trademarks for our brand name "Example" in many countries, including the UK and the USA. We've held it in the UK for over 10 years, but were only awarded USA trademark a few months ago.

We discovered recently that someone in the USA has registered "example.com" about 17 years ago. We own "example.co.uk", "example.fr", "example.com.au" and many other ccTLD's in this format.

I contacted the owner of example.com and opened negotiations for the domain, asking if he would consider selling to us, but he indicated he wouldn't consider less than $60,000 USD.

We decided to file a UDRP (legal claim) for the domain name and leave it to solicitors to claim the domain. However, I've suddenly received an email from the owner saying that he's listed the domain name example.com for sale on Godaddy as a premium domain for about $60,000.

My question is, can I still file a UDRP now that the domain is listed for sale? As a premium domain, I presume it's still owned by the original owner, hence we can take him to court if need be? The price is extortionate and we own the IP, so I presume we can still claim it as cybersquatting?

Look forward to advice, keen to know if anyone has been in a similar situation.

  • You need to edit your question to make it less of a rant about what you perceive as extortion, and focus on key points: "We hold the trademarks for our brand name "Example" in many countries, but were only awarded USA trademark a few months ago. Someone in the USA registered "example.com" about 17 years ago. We own "example.co.uk", "example.fr", "example.com.au" and many other ccTLD's. Is this cybersquatting? Can we file an UDRP?" – BlueDogRanch Nov 26 '19 at 15:50
  • @BlueDogRanch - this wasn't meant to be a rant and I was perfectly calm when I wrote it - I genuinely believe everything I've written up to be relevant. The main query was whether it affects our cybersquatting claim when he has suddenly put it up for sale? I'm pretty sure it is a clear case of cybersquatting, but it isn't making me frustrated or bothered - just one of those things you have to work through as a growing business, and I wanted a bit of advice about. I'll give it a read through and reduce it if I can... – 5Diraptor Nov 26 '19 at 16:26
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    The paragraph "I contacted the owner..." and all of your "Few points" are irrelevant; the UDRP and/or a solicitor aren't going to care what you think about valuations and extortion and business practices. – BlueDogRanch Nov 26 '19 at 18:10
  • AFAIK, if the domain was registered before your trademark, you may not get it back. – JonathanReez Nov 26 '19 at 18:24
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    If you visit www.nissan.com you can see what can happen in the worst case if you offer to sell your license. (Also a case where "get a lawyer" ended up being the worst possible advice). – gnasher729 Dec 28 '19 at 9:29
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If anything, I think posting it for sale and notifying you is more evidence of bad faith. File a claim - it can't hurt, and the quicker you let ICANN know there's a dispute, the better. It doesn't cost anything to file. https://www3.wipo.int/amc-forms/en/udrp/eudrpcomplaint.jsp (It costs a hearing fee of $1500 - $4000 if it gets that far, but file the claim as soon as possible.)

https://www.wipo.int/amc/en/domains/

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Yes you can file when the domain is for sale. Buying the domain that corresponds to a company's name to sell it is frequently the subject of UDRPs.

The sales offer is how some companies that file UDRPs learn of the violating address.

This site has a list of common reasons to file a UDRP and I think your example would fall under URLs bought to sell. https://www.gerbenlaw.com/blog/the-definitive-guide-to-udrp-proceedings-and-domain-disputes/

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Yes you can still file a complaint to obtain the URL.

The URL is still owned by the same person while it is for sale obviously, so it does not factor in to the process.

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