[E-trademarks] Wresting Control and Ownership of Domain Name

[trachtenbergm at gtlaw.com]

Without more specific facts I would file an ACPA action and use the prospect of $100k in statutory damages plus attorney fees as a hammer.

Marc H. Trachtenberg
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Chair, Internet, Domain Name, e-Commerce and Social Media Practice
Greenberg Traurig, LLP
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Diane Gardner via E-trademarks
Sent: Wednesday, November 29, 2023 1:58 PM
To: e-trademarks at oppedahl-lists.com
Cc: Diane Gardner <diane at mmip.com>
Subject: [E-trademarks] Wresting Control and Ownership of Domain Name

*EXTERNAL TO GT*
Dear Colleagues,

Please let me know what route you would take to resolve this:

Party had an idea for an online platform.
Party formed a corporation in Wyoming and attained SEC approval to publicly trade under the hypothetical symbol MARK.
Party brought on his buddy to help the start-up for remuneration in stock. (Of course), there was no employment contract.
Buddy was tasked with acquiring a domain name, and did acquire MARK.inc<https://urldefense.com/v3/__http:/MARK.inc__;!!DUT_TFPxUQ!Dg5V1Acg-aWwlZ7Evm4I4Wl_ZtsPfPCTYTONNG1ndRekgdlCH5zMDWpdTtGPbZ11_Nbjk-2ngCZqhZyDQBi30jI2YHI66kGS$> in his own name through his GoDaddy account, with Party listed as administrator.
Party’s website is operational, with customers (and investors).
Party never filed a trademark application to register MARK.

Then, “something happened.”

Buddy now is in Mexico and his stock has been rescinded.
Buddy has removed Party from administration position of the MARK.inc<https://urldefense.com/v3/__http:/MARK.inc__;!!DUT_TFPxUQ!Dg5V1Acg-aWwlZ7Evm4I4Wl_ZtsPfPCTYTONNG1ndRekgdlCH5zMDWpdTtGPbZ11_Nbjk-2ngCZqhZyDQBi30jI2YHI66kGS$> domain and Party is blocked from accessing the MARK.inc<https://urldefense.com/v3/__http:/MARK.inc__;!!DUT_TFPxUQ!Dg5V1Acg-aWwlZ7Evm4I4Wl_ZtsPfPCTYTONNG1ndRekgdlCH5zMDWpdTtGPbZ11_Nbjk-2ngCZqhZyDQBi30jI2YHI66kGS$> account.

What should Party do to force GoDaddy to transfer ownership of the domain?
I feel that the best bet is civil court – but if there are other opinions, I would love to hear them.

Kind regards,

Diane L. Gardner
Reg. No. 36,518
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