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Common law property rights

ErezY

Regular Member
Good morning all.

I have purchased a two-word generic name on drop and I have now been contacted by the previous owner who "wants it back". I guess they forgot to renew the domain. They are claiming "Common law property rights".

Here is their quote "we have common law property rights to it as a trademark that has been used in the public domain for over 11 years" So I clarified, they don;t have a specific trademark, just claiming common law property rights.

Is this something I should worry about?
 

Joel

Top Contributor
I wouldn't, but if you want a legal view of it then contact a lawyer. Erhan at Cooper Mills for example.
 

ErezY

Regular Member
I would confidently say there is no trademark on the name as its too generic and would be very difficult to get.

In saying that I am going to "return" the domain name, I do try and do the right thing by people. I have verified that this person was the previous owner.

However, I would like to learn from this experience and also recover my out of pocket expenses.

Has anyone seen / had a "common law property rights" dispute over a generic domain name?

Thanks
 

Horshack

Top Contributor
It sounds like someone might be having second thoughts about letting the name drop. I myself wouldn't just give it back. I'd check with Cooper Mills.
 

robert

Top Contributor
They can claim "Common law property rights" jargon all they like. Australian domain names are governed by auDA policy.
I am assuming the name you are talking about is something like PerthHotels.com.au (a geographic and generic term), and not an easily brandable or trademark-type name. If it is clearly not geo and/or generic, you may have a problem. I am not a lawyer, like Cooper Mills, but I have saved many names from being taken from me, and my clients. If you want to email me the details (I won't disclose the name if you don't want me to), I will give you my "professional opinion", but if you want to pay to stay in the game, use a legal firm as mentioned, like people have been saying.
Like Horshack, there is no way I would just be giving the name back (assuming you are not in the wrong and have geo-generic and auDA policy on your side), no matter how nice you want to look to the angels peering down from heaven. Business is business.
If you're not going to sleep well at night knowing they don't like you, you need to at least ask for your "out of pocket" expenses plus a small percentage for your time (something a great well-known Aussie domainer taught me a few years ago). They have messed-up and now don't have the right to just have their mistake forgotten about for free. If they were as professional as they are trying to come across, they wouldn't have lost the name in the first place.
If they literally want to have a go at you through their legal avenues, or an auDRP, they will be paying a couple of grand, just to kick this off. Surely they would rather give that money to you and call it a day, than go through all that, right?
After all that though, I still don't know what your name is, so you could be in the wrong for all I know...
 

ErezY

Regular Member
Thanks guys, the latest is that I have offered them to buy it back for $475 ex INCLUDING COR and I fell off my chair when they said they will run it past their solicitors and get back to me within 5 days. They are really stuck on this "Common law property rights" rather than their mistake to let the domain expire. I mean they have had the domain for many years and it should come as no surprise that every 2 years there is a renewal.

If they do not accept this I might give Cooper Mills a call. The domain is not geo but a generic two word in the beauty industry.

My girlfriend runs workshops with another makeup artist and this "was" rather fitting but we are not emotionally attached to it.... .yet.
 

robert

Top Contributor
Generic two-words sometimes make the name sound much more brandable, than actual generic, and can get into shady territory. I wasn't aware of that. This could be a tough one without knowing what the actual domain name is... $475 sounds way too cheap if you ask me, but again, maybe you're not allowed the name to begin with... I can't really bat for you if I don't know the name. Hope it all works out that you're happy with the outcome though!
 

robert

Top Contributor
Thanks Erezy for the name. Now we can have some more fun.

I can't help myself but to comment further, as I love getting into the nitty-gritty of protecting domain name ownership. Especially from silly people who lose their names and then want them back for free with bullying tactics.

First let me state: I am not a lawyer, these comments of mine are personal opinion. I recommend seeking legal council and not acting on my advice alone.

That said, I consider myself a pretty good domainer/domain broker who understands auDA policy. I've had some recent legitimate wins, put it that way.

Firstly; in terms of the complainants "common law property rights".
I cut and paste the following excerpt so I don't have to re-invent the wheel, which directly relates to your case.
"There are no such proprietary rights arising from the registration of Australian domain names. A party that registers a domain name does not own the name but holds a licence to use it for a specific period, subject to terms and conditions that include restrictions on the transfer of the licence. A .au domain requires a registered trademark, company or registered business name corresponding to the domain name. They are registered in Australia and regulated by .au Domain Administration Limited (auDA)."
So, their "common law property rights" statement wields no power. You are holding a license. Not their property rights. It's nothing but a puff of wind. (personal opinion).

Secondly; a trademark search for "mineral makeup" in Australia shows 6 companies who have indeed trademarked "mineral makeup" after their name. Notice how no one has been allowed to trademark "mineral makeup" on its own? Because it is two generic words. (Just like RealEstate.com.au is not allowed to trademark "Real Estate" on its own.

Thirdly; I notice your parking page "mineralmakeup.com.au" is spot-on in terms of adhering to auDA's 2012-04 - Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs which clearly states:

SCHEDULE A - ELIGIBILITY AND ALLOCATION RULES FOR ALL OPEN 2LDS

First come, first served
1. Domain name licences are allocated on a ‘first come, first served’ basis. It is not possible to pre-register or otherwise reserve a domain name.

This is you. They lost the name and you were "first come" when it became available on the drops. They lost it. They didn't bother trying to secure it first again on the drops. You grabbed it fair and square (assuming your ABN is up to date).

Registrants must be Australian
2. Domain name licences may only be allocated to a registrant who is Australian, as defined under the eligibility and allocation rules for each 2LD.
I am assuming you pass all the normal qualifications for owning the names (such as valid ABN etc).

I am assuming you were not registering this domain name for "sole purpose" of selling it.

Then we come to how you have legally "parked" the two generic-words domain name:

SCHEDULE C - ELIGIBILITY AND ALLOCATION RULES FOR COM.AU

The com.au 2LD is for commercial purposes.

The following rules are to be read in conjunction with the Eligibility and Allocation Rules for All Open 2LDs, contained in Schedule A of this document.

1. To be eligible for a domain name in the com.au 2LD, registrants must be:

a) an Australian registered company; or

b) trading under a registered business name in any Australian State or Territory; or

I'm not going to go and check this, but again, I assume you meet these requirements...

And here is the big one for you:

Schedule C - contd...
3. A domain name may also be registered in the com.au 2LD under paragraph 2(b) for the purpose of domain monetisation, in accordance with the explanation of “domain monetisation” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs, provided that the following conditions are met:

a) the content on the website to which the domain name resolves must be related specifically and predominantly to subject matter denoted by the domain name; and

On my testing of your name, you meet this requirement, as I can clearly see on the parked page for domain monetisation: Matte Mineral Makeup, Cream Mineral Makeup, etc...

b) the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered*.
"Mineral Makeup" is not an entity name, personal name or brand name. It is two generic words.

* Definitions:

  • “entity name” means the name of an Australian registered company or incorporated association as listed with the Australian Securities and Investment Commission (ASIC), or the name of an Australian government body. It does not include a registered business name;
  • “personal name” means the given name(s) and/or last name of a person; and
  • “brand name” means the name of an identifiable and distinctive product or service, whether commercial or non-commercial.
This brand name part is interesting. Because auDA are saying a brand name means an identifiable and distinctive product... I don't think it should have been worded that way at all when this sentence was created for policy. If you literally take this meaning, this would mean the word "computer" would be a brand name, because it is an identifiable and distinctive product. Which would mean we are all not allowed to monetise a domain name with the word computer in it.

Basically, no one owns the brand name "mineral makeup" as it is two generic words, as you said initially in your post. And you were right.

So, as far as auDA policy goes, it looks like to me that you have parked the name correctly to meet Domain Name Eligibility and Policy Rules (using the Schedule C domain monetisation clause.)

So...

I must state again.

I am not a lawyer and I am not giving you legal advice. This is just my personal opinion.

But if I were in your position, I would retract my offer. They didn't accept it. You made them an offer and they said they will think about it for 5 days.

If you want to retract your offer, I would do so immediately, and this is exactly what I would say:

###########
Due to you not immediately accepting my offer, I have had time to seek further opinion from fellow professional associates in my industry and have researched this matter more thoroughly.

Although I believed on your first contact that I was not in breach of auDA policy of owning this domain name, I believed you when you said I was not allowed to own the name.

I now believe you are wrong. I now believe beyond doubt that I am allowed to own the name mineralmakeup.com.au under auDA policy.

I also believe you do not "have common law property rights to it as a trademark that has been used in the public domain for over 11 years" because there are no such proprietary rights arising from the registration of Australian domain names. A party that registers a domain name does not own the name but holds a licence to use it for a specific period, subject to terms and conditions that include restrictions on the transfer of the licence. A .au domain requires a registered trademark, company or registered business name corresponding to the domain name. They are registered in Australia and regulated by .au Domain Administration Limited (auDA).

I hereby officially withdraw my intention of selling mineralmakeup.com.au to you.

I legitimately registered the name when you allowed your license to expire on it.

If you would like to make a more realistic offer for it in the future, I may consider it.

For now, I am currently considering developing the name with my girlfriend who runs makeup workshops. In the meantime, I am entitled the license for the name according to auDA policy and am currently correctly obeying policy regulations.

#############

Again, don't do anything because I've gone ahead and written something in an open forum.

I'm just saying... This is what I would do :)
 

ErezY

Regular Member
Thanks Robert, I understand your personal opinion is not legally binding. :cool: Saying that, I have a few clients who are lawyers and would probably not know the auDA policy as well as you (clearly Cooper Mills is not one of these :(). I really appreciate the lengthy research which aligns with my own research.

I have been thinking of retracting my offer if they come back with anything but "we'll take it" however perhaps I may do so earlier.
 
Robert makes some good points about policy - make sure you comply.

Their claim is about common law rights, they can exist even where someone doesn't have a registered trademark. On the basis of the domain you are talking about it is a very generic term, it describes a type of makeup from my research, it is like saying your have a common law trademark over the term lipstick, silly.

I would personally recommend a PM or to run this discussion a private forum for Erez's benefit
 
Thanks Robert, I understand your personal opinion is not legally binding. :cool: Saying that, I have a few clients who are lawyers and would probably not know the auDA policy as well as you (clearly Cooper Mills is not one of these :(). I really appreciate the lengthy research which aligns with my own research.

I have been thinking of retracting my offer if they come back with anything but "we'll take it" however perhaps I may do so earlier.
sorry I haven't had a chance to spend much time on forums recently
 

robert

Top Contributor
There's no need to be scared that anyone sees this. It's up to Erezy if he wants it to be private. If he wanted it to be private he would have PM'd me instead of publicly posting the name. Hopefully other people who lose their domains and then think about legal-bullying tactics when a domainer picks it up fair and square will find this and realise it's a waste of time. Lesson: if you lose your name due to bad internal procedures, and a domainer grabs it off the drops fair and square: PAY UP.
 

snoopy

Top Contributor
The claim is a load of crap. Sounds like it is not even a lawyer contacting you and they've thought up a couple of arguments among themselves to try and recover a domain they forgot to renew without it cost them much.

People like this don't want to spend money so don't waste your own resources, wait until they at least have a lawyer with some real arguments. Until then it just like arguing with someone on the street, you wouldn't hire a lawyer for that.
 

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