UDRP Is this a sufficient ground for a claim?

[Coindoji]

Hi, got hit with a claim(or for now - threat by a law firm) and was wondering if this even a valid ground?


......
I assume that you are familiar with my client and its business under the .com brand in the
internet field.

The domain name “.com” is virtually identical to my client’s protected trademark, and I
have noted that the domain name is not used for any purpose reflecting the domain name.
Moreover, it is up for sale at an excessive price. Therefore, there is no doubt that your regis-
tration is unjustified and that my client can claim a transfer of the domain name.
......

____________

The Name is just a common word with number '0' used instead of a letter 'O'.

So, think of it as a Fox, Crocs or Mailbox but spelled with '0' instead - F0x, Cr0cs, Mailb0x...

The question is if 'virtually identical' (which in fact means ' very different ' ) is enough ground, so some Mailbox Inc. or Fox Group can take Mailb0x.com or F0x.com away?

____________

I mean, I've seen the case of l0real.com being taken away after claim by L'oreal Company, but the defendant never responded and case is similar to mine..

https://www.dndisputes.com/case/d2017-2247/

But again, makes so little sense to me, they show their European Trademark for 'O' version and want to grab '0' just because it's similar?

I have resources to defend, just need a good lawyer and his opinion if this is the way?

Well, for example, I don't see http://micros0ft.com/ being grabbed by Microsoft..


P.S. Yes, forgot to add, my domain was at lander (Afternic or Dan) and I switched to default Nameservers for now.

 

[cyberlawyer]

It would depend upon numerous factors, so is it a generic or a distinctive word, but as you referred it is a common word, so that should not be a big issue. But in case of some famous marks, knowledge of the Trademark can be assumed on part of the domain registrant and the confusion that it can create. Normally, the knowledge can be denied, if the Trademark was never known in your country.

Though putting the domain name for sale in itself is not wrong, unless there are any ADs appearing, that may violate rights of the Trademark holder or cause any confusion.

 

[Joe N]

I think the two most important questions are:

1. If you're being honest with yourself, did you register the name hoping this
   company would buy it?
2. Is it valuable enough to be worth paying legal fees in order to keep it?

If you answered yes to the 1st, or no to the 2nd, I would just let it go. It's not worth it, especially if it's a recent registration.

 

[Coindoji]

Hey guys! Thanks for the feedback!

@cyberlawyer

Yes, it's very common word we use daily in our language, generic not descriptive or anything. I'm just not sure if I can share it publicly
But

@Joe Nichols
In regards to the questions:

1. I had no clue that Company even existed, plus why would I care.. I've checked TMs for this exact match word+number and saw nothing, I had no idea I had to check TMs for, for example, Mailbox if I'm planning to acquire Mailb0x.. Nor I have ever done any outbounds, having a number in a name is kinda a hard sell in itself already.

2. I think it is a mid 5fig name, since it was sold already on SH for $35k I think it was, but after few days buyer failed to pay and sale fell through.

Acquisition cost was $2300.

 

[capybara]

since it was sold already on SH for $35k I think it was, but after few days buyer failed to pay and sale fell through

It was not sold if it was not sold.
I remember those posts about that name. The buyer thought it was a name with O, not 0, and when they became aware of it, of course the deal was cancelled.

I think it is a mid 5fig name, since it was sold already on SH for $35k

Sorry but it looks like you are trapped in self-deception about the value of that name.

 

[Joe N]

Hey guys! Thanks for the feedback!

@cyberlawyer

Yes, it's very common word we use daily in our language, generic not descriptive or anything. I'm just not sure if I can share it publicly
But

@Joe Nichols
In regards to the questions:

1. I had no clue that Company even existed, plus why would I care.. I've checked TMs for this exact match word+number and saw nothing, I had no idea I had to check TMs for, for example, Mailbox if I'm planning to acquire Mailb0x.. Nor I have ever done any outbounds, having a number in a name is kinda a hard sell in itself already.

2. I think it is a mid 5fig name, since it was sold already on SH for $35k I think it was, but after few days buyer failed to pay and sale fell through.

Acquisition cost was $2300.

Oh! My apologies. I thought it was a hand registered name for some reason.

Well if the name is truly as generic as "mailbox", then chances are you can safely ignore the email. Of coursr that's also based on the assumption that you were not previously advertising on the domain, or selling anything on it, and that you never approached the company with an offer to sell.

It would help a lot if you could post the name for us, since these discussions are all theoretical otherwise.

 

[jberryhill]

Normally, the knowledge can be denied, if the Trademark was never known in your country.

If someone registers T1DE.com - using a "1" in the place of "i" for the word "tide" - then they certainly know what is at tide.com, even if it is not a mark in their country.

In answer to the question "is this enough for a claim?", yes, it is.

Asking whether it is enough for a "claim" is different from asking "will they win". It's probably easier to look at whether a complainant in a domain dispute would get past the initial hurdle of "is this domain name confusingly similar to a trademark".

If we are talking about a name lke "F0X.whatever" in relation to the trademark "FOX", there is not a UDRP panelist on the planet who is going to conclude anything other than "F0X" is confusingly similar to "FOX".

The same goes for simple character substitutions from various scripts, like n and ñ, accented characters like o and ó, and so on.

But if you have facb00k.com, you are going to look awfully dumb trying to say "I had no idea what was at facebook.com", when the entire reason for registering numbers substituted for letters would be that the normal version is registered by someone.

I have resources to defend, just need a good lawyer and his opinion if this is the way?

Why ask a bunch of random people on a message board then? The overwhelming majority of responses to questions like this on Namepros are nothing short of horrifically bad. I can never figure out how people decide whether a response is good or not beyond "sounds like something I want to hear".

've checked TMs for this exact match word+number and saw nothing, I had no idea I had to check TMs for, for example, Mailbox if I'm planning to acquire Mailb0x.

The first element of the UDRP is not "is it an exact match", it is "is it identical or confusingly similar". There have been over 35,000 domain disputes, so the contours of "confusingly similar" are pretty well-explored at this point, and it boils down to anything that remotely looks, sounds like, or includes the mark. That element has a pretty low threshold. The word "confusingly" has had the life choked out of it in these things, and is devoid of meaning as far as the decisions are concerned.

So where a domain name is something like "b00king.COM" then it is pretty clear that it is trying to look like "booking.com"

 

[jberryhill]

It would help a lot if you could post the name for us, since these discussions are all theoretical otherwise.

People have remarkably expansive notions of what qualifies as "generic".