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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:

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(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

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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)




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