How do you normally respond to legal threats? Do you challenge their BS or do you just get a lawyer to respond to them?
These can come up with any generic domain, the more domains you have, and the more popular the terms are, the more of these you'll encounter.
They tend to come in 3 varieties:
1. A naive person (or sometimes just a plain nutjob) who just registered their first corporation or trademark, but has no real clue about trademark law. I politely tell them to consult both a TM lawyer and a domain lawyer first to educate themselves, because they clearly don't know what they're talking about. I've even sent them direct links to the CDRP process rules. That usually makes them go away, but sometimes it has got to the point where I just say "bring it on" (which of course they don't).
2. A lawyer or biz owner taking a shot at getting the domain - hoping the domain owner is naive and a push over. I kindly tell them that I respect Trademarks and ensure them I have not, nor will not, infringe on any marks with this domain. I also point out that their client's TM protects the relevant term only with respect to very specific goods and/or services, not all potential uses. And I may even show them evidence of the numerous other existing businesses and trademarks that also use the term, showing them they clearly do
not have exclusive rights to the term. They quickly see I'm not a pushover and that I might know what I'm talking about. Once they dig deeper, they realize they're not going to win. So its almost always just a big swing-and-a-miss for them.
3. Sometimes, they may have a valid point. Early on I made the mistake of parking a domain that shouldn't have been, just the inadvertent consequence of managing thousands of domains... I was caught red-handed with blatant ads for products of a major brand that just so happened to use a 1-word domain, and I could tell they weren't going to just accept "I'm sorry, my bad, I won't do it again". So as Kenny says, "you got to know when to hold'em, know when to fold'em." So I just gave them the domain. It was a lesson well learned. There's nothing more important than ensuring you don't lose great domain names due to sloppy bulk domain management. It pays to be thorough.
That being said, I may have a complaint in the works. I have a domain that is a long acronym for something that is widely used in Quebec as a generic term for a type of service. There are no trademarks on it either. However, after inquiring about buying the domain, they didn't like the price and instead they filed for WIPO mediation. I simply informed them that WIPO has no jurisdiction over .CA domain names and as such, I do not plan to participate. I did note that if they'd like to re-open their previous purchase inquiry to continue negotiations, that I'd be more than willing to discuss it. So I figure its only a matter of time before they figure out that they need to file a CDRP, if that's what they want to do. They seem to think they have some sort of special designation for the acronym but I can also show that there's no TM and that the term has been considered generic by the public for decades. So I have plenty of defense to work with.
I also had a potential complaint this summer over a short mispelled word, brandable type domain. I wasn't worried about defending it, but I was afraid about the timing, as I knew I was out of town for most of the next few months. It felt like they would file a dispute, so I immediately decided to prep a defense in advance in case I had limited availability to work on it. Also note that finding a domain lawyer who is free on short notice is also difficult, so I wanted to make sure my go-to-guy, our well known friend Zac, was available. But now that he's a CDRP panelist, he's not representing anyone any more. So heads up to anyone counting on Zac. That's a big loss for domainers. But CDRP's are pretty rare so it was probably more advantageous for him to be a panelist in a limited pool rather than to represent the rare client. In any case, that potential complainant is either really slow, or they folded - I haven't heard from them since. But its good to know I'm queued up for it in advance.
At this point, I feel pretty comfortable prepping my own defense and the CDRP rules are pretty clear. There's a wealth of knowledge in the past decisions to draw on too. Its just an annoyance more than anything.
