Something I've wondered... if you publicly say that a domain is for sale and someone has a trademark for it would you automatically lose in arbitration?

Around 1998 I registered a domain. Sony registered a trademark with the same name a few years after that. Someone on a Gmail account asked if he could buy it - I later found out he worked for Sony. I told him no - it's for a game I've been working on. I went on a vacation for a month and when I got back there was a fedex package filled with documents from Sony saying I'm violating their trademark and they'll take the domain.

I got a lawyer and he told me that I shouldn't offer it for sale as that would show the arbitration board that I don't need the domain. But he also told me that in order to fight the trademark it would probably cost a couple of hundred thousand dollars. So I could keep the domain but not use it for commerce...

In the end I ended up selling it to Sony but through my lawyer - I never stated it was for sale. But this was early on for domains and I wonder what the process is like now.

I tried to register a domain like acme.stream through Cloudflare Registrar and it asked me to affirm I had Acme Widgets Corp.'s permission [edit: I might be wrong about this part, since I'm in a totally different niche, but the pop-up freaked me out]. I went with a different domain.

>But this was early on for domains and I wonder what the process is like now.

UDRP:

https://www.icann.org/en/contracted-parties/consensus-polici...

Are you allowed to share how much (roughly) you sold it for?

This has been my understanding. I was told by lawyer in in th 90's that it would be described as squatting in court.

A reply said this, but it's dead:

>If you're offering it for sale, you're clearly not using it for commerce. [...]

>if you're selling a domain and someone has a trademark for it, you should have to hand it over. Hell, I'd argue that should apply even without a trademark [...]

I disagree, but they made a point and did so clearly.

Why that person felt someone else's chosen commercial use of a domain should trump anyone's non-commercial (or less commercial) use, I don't know.

All business assets are for sale at the right price, right? Even whilst living by the business at a particular domain, I'd have sold that domain for £200k, probably a lot less. Same as for any business asset, even (especially?) those in commercial use.

full disclaimer, I have worked on https://udrp.tools for something like a decade now as the developer. We're working on an AI chatbot to help answer these types of questions based on our dataset and other data sources (actual wipo guidelines, udrpperspectives.org). The short answer is no, the answer our AI gave with citations/explanation is below if youre curious:

Does publicly listing a domain for sale mean you'd automatically lose a UDRP arbitration if someone has a trademark for it?

No. A public sale listing is not an automatic loss. Here's how panels actually decide these cases.

The controlling rule

Bad faith based on a sale offer requires that the domain was registered primarily for the purpose of selling to the trademark owner (or a competitor) for more than out-of-pocket costs. Two things must be true at once: (1) the primary purpose of registration was to sell, and (2) the target was that specific trademark holder. A generic public listing on Sedo or Afternic doesn't automatically satisfy either requirement. (WIPO Overview 3.1; UDRP Perspectives 3.5)

What panels actually look at

No single factor decides it. Panels weigh all of these:

How distinctive is the trademark? A coined word like KODAK is treated very differently from a generic term like CLOUD.

Did the registrant plausibly know about the mark when registering? Famous marks raise this inference; obscure marks don't.

Was the offer directed at the trademark owner specifically, or listed publicly for any buyer?

Does the asking price only make sense if the trademark owner is the buyer, or is it consistent with general market prices?

Does the registrant hold a broader portfolio of generic/descriptive domains, or a collection of brand-matching ones?

Was the domain registered after the mark became well-known, or before?

Is there a credible non-trademark reason to want the domain?

Things that do NOT automatically mean bad faith

Listing a domain publicly for sale (UDRP Perspectives 3.5)

Asking a high price (UDRP Perspectives 3.5; WIPO Overview 3.1.1)

Even reaching out to the trademark owner directly — panels look at whether multiple parties were approached and whether the registration was brand-specific (UDRP Perspectives 3.5)

Wanting to profit — legitimate domain investing is a recognized lawful activity under UDRP (UDRP Perspectives 2.6)

When the calculus shifts against you

The harder cases are where the domain is identical to a highly distinctive coined brand, there's no plausible use for the domain other than trading on the trademark, and the asking price is only realistic for the trademark owner itself. In those cases panels have found bad faith even without a direct approach to the owner. A notable example is the three-member panel majority in WIPO case D2022-1570, which found that the asking price implied the complainant was the only conceivable buyer — though a dissent disagreed, illustrating that even these edge cases are not automatic.

Bottom line

The outcome depends on: how famous and distinctive the mark is, whether you had it in your sights at registration, whether there's a credible independent reason to want the domain, and who you're actually marketing it to. Generic terms with multiple plausible buyers, listed publicly, have repeatedly survived UDRP challenges. (UDRP Perspectives 3.5) Coined-brand matches with sky-high asking prices and no other credible use have not.

> I shouldn't offer it for sale as that would show the arbitration board that I don't need the domain. [...] So I could keep the domain but not use it for commerce...

If you're offering it for sale, you're clearly not using it for commerce. I'm sure if you finished you game and offered it for sale on that domain, you'd be fine. You're actually using it and in a non-infringing way.

So yes, if you're selling a domain and someone has a trademark for it, you should have to hand it over. Hell, I'd argue that should apply even without a trademark, but alas...