Oakley Inc., how cheaters win the game...

[Jan Jaap]

I would hereby like to tell my story regarding my relationship with Oakley Inc., a producer of sunglasses and apparel from the United States.

As a (former) big fan of the brand, and maybe one of their biggest fans here in The Netherlands, I wanted to do something for them. To make them more popular, boost their sales and above all, enable me to order products more easily since their service quality here in The Netherlands was below standards. If you wanted to order a product that wasn’t in stock in any of their Dutch shops, you would have to wait months for it. Just to know if it could be delivered would take 3-4 weeks as that was their response time to dealer questions.

So I wanted to make it better, for me and for anyone else that wanted to buy an Oakley product. And I started to develop a concept for an Oakley product web shop in cooperation with my local Oakley dealer who was very interested to deliver the products while I would provide the customers via the internet. It was a perfect concept and then I noticed that Oakley.nl wasn’t used yet. I investigated it further and noticed that almost all European oakley domains weren’t in use for/owned by Oakley Inc. so I expected that they weren’t interested in local European domains. And on top of that Oakley.be was in use for a web shop by a Belgian optometrist who sold Oakley products, so that ensured me that I would not get into trade mark trouble by buying Oakley.nl. Of course I knew/expected there was a certain risk, but I believed that Oakley was a “good” company. Friendlier than just any company, I thought. A brand of athletics and “fair” players, who care about people instead of making more money only.

So I purchased the domain Oakley.nl and wrote Oakley Inc. to request for authorization to use the domain for a web shop to sell Oakley products together with my Dutch Oakley dealer. I told them I was willing to invest 100.000 euro to develop one of the most state of the art web shops and to promote their products here in The Netherlands. However, if they would rather use the domain themselves, I would be willing to sell the domain to them for a low price.

They did not reply, so I asked my dealer to contact them and he did. But again, no reply.

As I wanted to do something with the domain, I first started a website for Annie Oakley. Oakley was my favorite brand, it was kind of my hobby so that is why I invested some time to develop a site for the domain that could be used until I reached some sort of agreement with Oakley Inc. After that I decided to setup a genealogy website for people with the surname Oakley, that provided background information about their name.

As of then, approximately 2 months after my first email to Oakley Inc. I thought they were simply slow to respond and didn’t suspect that Oakley was already monitoring the website and aware of my emails and faxes, and those of my dealer. After some while, I placed some Google ads on the genealogy website to see if it would work out. At first they showed genealogy ads so it seemed ok. After one day however, I noticed at some page loads it also included Oakley sunglasses ads so I removed the ads again. They have been on the site for a few days at most. Oakley made a screenshot of it and used it against me in their trail to claim the domain. They told the judge that those ads were on the site the whole time before I used the domain as company domain.

More months pass by since Oakley took the screenshot, and after several more emails and faxes from me I receive an email from an anonymous person that asked me if the domain Oakley.nl was for sale. I told them that I was planning to develop the domain but that I would be willing to sell it for a low price. I told him that I offered the domain to Oakley Inc. aswell for 50.000 euro but that the price I would be willing to sell for was really 25.000 euro. I did this because I wanted to provide Oakley Inc. with 50% off in case they would rather use the domain themselfs, so that they would win something by talking to me and get the domain for a low price. This person was secretly contacting my for Oakley Inc. and did not reply anymore after. They were simply seeking confirmation that I wanted to sell the domain, and they used this against me to make me look bad.

Some more months pass by and as Oakley did not seem to respond at all, I thought they simply were not interested in the domain so I decided to use the domain as company domain. The word Oakley means “area with a lot of Oak trees” and this is the environment in which I work, so it fitted perfectly. I changed my company name into Oakley Publishing and developed a website for it.

Then all of the sudden, a month later and after 8 months of not responding to me they started a attempt to claim the domain from me.

I felt it as a knife in the back. An attempt to steal from a loyal fan that only wanted to help them. Of course I did consider it a possibility that they had all the rights to do so, and that I made a mistake by buying a trademarked domain. So I sought advice from trade mark experts but they ensured me that Oakley would not likely win. They could only win if I would have used the domain in bad faith, or if I would use the domain for a service or company that is similar to the one that the trademark is registered for. In this case “sunglasses and apparel”. So I had nothing to worry about, according to them.

My friend, a trade mark owner himself, also told me I would likely win.

They did not know however, about the evil tricks Oakley was going to use to make me look bad so that they were able to obtain the domain from me. Oakley Inc. tried to make me look like a smart domain trader that only wanted to make a fast buck on behalf of their brand name. It felt so evil from them, because they really knew that they were not telling the truth. But not only that, they even suggested that I would have messed with documents that the I provided as proof of my attempts to contact them. They told the judge that they believed I changed the dates of the documents and suggested they never received those emails and faxes from me or my dealer. As if I committed fraud.

Oakley cheated, and that may have been the major reason they have won this case.

I would have never expected Oakley to do such a thing. I also don’t understand why they did this to me. I am really a good guy and have worked on several major non-profit projects in the past. That proofs I’m not in this for the money alone.

Cheating is bad, everybody knows this but Oakley provides lifestyle products and has fans so it is even worse to do these kind of things. They should know that some of those fans will be interested in local domains if Oakley wouldn’t do anything with them. And these kind of practices do hurt people. Why would you want this as a lifestyle company?

I wanted to share this story with you, so that you may be able to learn from it and if you happen to own a local Oakley domain. Beware of Oakley’s evil tricks to take it away from you. They cannot do so otherwise.

[samsm]

Your story is too long. Here's a summary.

You wanted to make a website for Oakley so you registered oakley.nl.

When Oakley didn't get back to you, you used the domain for non-sunglass related purposes. However, at one point you used Google ads on the non-sunglasses site, and those produced Oakley sunglasses-related ads. Oakley took a screenshot of those ads and cried fowl. That seems to die down when you remove the ads.

Someone contacted you about buying the domain. Later this conversation would be used by Oakley as evidence of you being a sleezy domain trader.

Later, you settle on a topic for the site.

Later still, Oakley makes you look like a a sleazy domain trader and snags the domain back for free via court process or something.

[Jan Jaap]

Yes, that and they also provided lies about them not knowing of my (and my dealer his) attempts to contact them and even suggesting that I committed fraud on the provided evidence.

Just to be clear, it doesn't really matter to me that I have lost the domain (or money). I am not a trade mark expert, so I really don't know much about how things work in these cases. But I didn't mind losing the domain to them, I actually purchased it for them. It could have been a honor to me, also if it would cost some money.

They made me look bad however, and it seems they could not have won this case otherwise. That is what dissapointed me.

[samsm]

They probably just aren't really setup for people more well-meaning than your b-flat domain prospector.

They follow a specific path to deal with those people, and (unfortunately) you just happened to cross that path.

[Jan Jaap]

They probably just aren't really setup for people more well-meaning than your b-flat domain prospector.

They follow a specific path to deal with those people, and (unfortunately) you just happened to cross that path.

Well, I can't believe they could have really thought that. I told them that I was a big fan of their products and my dealer tried to contact them aswell, so they must have known. Evenso, why be so paranoid and act like that? It doesn't seem normal to me to behave in such a way.

Even if I would have been a sleazy domain trader, would that make their lies ok? Why not play it fair for anyone.

[G.Schuster]

However, if they would rather use the domain themselves, I would be willing to sell the domain to them for a low price.

25.000 $ are a "low price"?
Sorry...but in which world do you live?
A low price would have been something like the registration fee + a few bucks on top but not someting in the mid 5-figure range.

I don't say it's OK what they did, but it was your fault to offer them the domain for 25k (ok, 50k at first).
You just made yourself look like a domain trader...it wasn't them!

[Jan Jaap]

25.000 $ are a "low price"?
Sorry...but in which world do you live?
A low price would have been something like the registration fee + a few bucks on top but not someting in the mid 5-figure range.

I don't say it's OK what they did, but it was your fault to offer them the domain for 25k (ok, 50k at first).
You just made yourself look like a domain trader...it wasn't them!

Don't you understand that was not my intention? And I paid for this domain. Domains hold value.

I could make several millions per year with the domain if they would have granted permission. 25.000 euro on such a value isn't much in my opinion, and I wouldn't have made a lot of profit with that price.

And what else should I have told them? No sorry, I want to build a webshop for you or I will be a pain in the *** if you want to have the domain yourself.

My main and true concern was that I could get my Oakley products when I wanted it. No matter if I would build a shop for it, or if Oakley would finally do so themselfs.

[samsm]

Oh geeze, I misread, I thought you tried to sell the domain for 25 euros.
25 thousand is obviously piggybacking on the value of the Oakley brand.

I could make several millions per year with the domain if they would have granted permission. 25.000 euro on such a value isn't much in my opinion, and I wouldn't have made a lot of profit with that price.

That is exactly the crux of this ... you could have made a lot of money because of the Oakley brand. That's value they own, not you.

[Jan Jaap]

Again, this 25k is pocket money for some. And I did not want to sell the domain, but they could have if they wanted to. That's all.

I did not want to block them or anything, I wanted to help them/work for them. My favorite brand.

[Jan Jaap]

Btw, if you own Oakley sunglasses it is also value created by them. Does it mean they own it however? No, you paid for it.

I also paid for this domain.

[shadowbox]

What a rather odd story.

[Ted S]

Again, this 25k is pocket money for some. And I did not want to sell the domain, but they could have if they wanted to. That's all.

I did not want to block them or anything, I wanted to help them/work for them. My favorite brand.

Using a trademarked domain name in a competitive way (even if you want it to be a platonic and mutually beneficial relationship) is a violation of the domain agreement and as such you can lose the domain. It's unfortunate you were unable to reach an agreement and form a business relationship, but that you wanted to have one doesn't change the fact that the name was still trademarked and there was the potential of infringement and/ or confusion when ads started shopping up about the Oakley Inc product line. It sounds like you many good intentions but also took your name through a lot of various businesses and stepped on some toes (and laws) along the way... What exactly caused you to lose the name is unclear from your post as the specific legal case isn't cited but it sounds like you're not pleased with Oakley and that's perfectly fair.

Bare in mind that while 25,000 may be pocket change to some, it's still substantially more than the name costs to register and when you're holding a name from a company and trying to sell it back to them, it's generally considered cybersquatting. That probably wasn't what you wanted to do but looking at your post as an outsider with a very limited set of facts, that's the story I see and presumably what a court saw as well.

And I did not want to sell the domain, but they could have if they wanted to. That's all

It really does sound like this all gets back to your intent versus your action. Intent is nearly impossible to understand from an outsider's point of view when there's a lot of conflicting information going on. It sounds like you yourself weren't certain of your intent and perhaps that was the first problem.

My takeaway from your post is this... secure a relationship first, and if you can't do so, to build a business under a completely separate name without going through transitions which open the door to competitive claims and confusion between brands.

[Unit7285]

I could make several millions per year with the domain if they would have granted permission. 25.000 euro on such a value isn't much in my opinion, and I wouldn't have made a lot of profit with that price.

And what else should I have told them? No sorry, I want to build a webshop for you or I will be a pain in the *** if you want to have the domain yourself.

If Oakley wanted to increase their sales in your country surely they would prefer to do it in their own way, at a time of their own choosing, with partners they selected themselves? And without being forced to give 'millions' to you!

They didn't ask for your help and, from what you say, they never once gave you any indication they were interested in your plan. That would be a pretty strong hint for most people.

There's a huge disconnect between supposedly just loving their products and wanting to 'help' Oakley out of the goodness of your heart, but then offering to sell their name for 25,000 Euros ($38,000).

You're not seeing things from their perspective at all. And just because they don't behave the way you think they should doesn't make them 'evil'.


Paul

[Jan Jaap]

Using a trademarked domain name in a competitive way (even if you want it to be a platonic and mutually beneficial relationship) is a violation of the domain agreement and as such you can lose the domain. It's unfortunate you were unable to reach an agreement and form a business relationship, but that you wanted to have one doesn't change the fact that the name was still trademarked and there was the potential of infringement and/ or confusion when ads started shopping up about the Oakley Inc product line. It sounds like you many good intentions but also took your name through a lot of various businesses and stepped on some toes (and laws) along the way... What exactly caused you to lose the name is unclear from your post as the specific legal case isn't cited but it sounds like you're not pleased with Oakley and that's perfectly fair.

Bare in mind that while 25,000 may be pocket change to some, it's still substantially more than the name costs to register and when you're holding a name from a company and trying to sell it back to them, it's generally considered cybersquatting. That probably wasn't what you wanted to do but looking at your post as an outsider with a very limited set of facts, that's the story I see and presumably what a court saw as well.



It really does sound like this all gets back to your intent versus your action. Intent is nearly impossible to understand from an outsider's point of view when there's a lot of conflicting information going on. It sounds like you yourself weren't certain of your intent and perhaps that was the first problem.

My takeaway from your post is this... secure a relationship first, and if you can't do so, to build a business under a completely separate name without going through transitions which open the door to competitive claims and confusion between brands.

Well, so it be if that is the case. I wouldn't mind to have lost the domain like that. If Oakley were honest I would have just provided the domain to them for free, to save lawyer costs.

I did not want to fight them, they made an enemy of me while I did not want to be.

And my lawyers told me they could not win, and they lied during the trial so that does sound suspicious to me. Maybe I would have lost the domain anyway, or maybe I should if Oakley really wanted it. But I didn't know what they wanted and I just wanted to make them more succesful.

[Jan Jaap]

If Oakley wanted to increase their sales in your country surely they would prefer to do it in their own way, at a time of their own choosing, with partners they selected themselves? And without being forced to give 'millions' to you!

They didn't ask for your help and, from what you say, they never once gave you any indication they were interested in your plan. That would be a pretty strong hint for most people.

There's a huge disconnect between supposedly just loving their products and wanting to 'help' Oakley out of the goodness of your heart, but then offering to sell their name for 25,000 Euros ($38,000).

You're not seeing things from their perspective at all. And just because they don't behave the way you think they should doesn't make them 'evil'.


Paul

I am not paranormal or anything. Their response time to dealers was bad (2-3 weeks) for simple dealer questions. So how could I know they were not interested in my plans from their irresponsiveness.

And my dealer is an official Oakley dealer not to forget. One of their best and most prestigious ones. He was on my side. The good en honest side at least.

[purplefdu]

while I have to agree you ended up looking like a cyberspace and domain trader (from Oakley's perspective) they are dumb to not have purchased the domain themselves and just assume that noone would be using it. I'd say they treated you fairly poorly when they realized someone bought a domain they should have owned. But live and learn.

[Unit7285]

I am not paranormal or anything. Their response time to dealers was bad (2-3 weeks) for simple dealer questions. So how could I know they were not interested in my plans from their irresponsiveness.

And my dealer is an official Oakley dealer not to forget. One of their best and most prestigious ones. He was on my side. The good en honest side at least.

Congratulations! You've just proved my points with your vulgar, tunnel-visioned reply. (EDIT: Note, Jan Jaap's vulgar language was removed from quote by mod)

It's little wonder Oakley wanted nothing to do with you. If 8 months without a reply isn't a great big jumbo-sized hint that they're not interested then I don't know what is. You obviously believe you know what's best for them, but they don't seem to share your confidence.

They suspected you were basically a cybersquatter, they put you to the test and - hey presto - you offered to sell the domain for 25000 Euros. And that was AFTER a '50% discount', wasn't it? For a .nl domain which costs about 10 Euros to buy. Which makes you in most people's eyes.... yes, a cybersquatter!

All this 'poor little me, just trying to help' stuff just doesn't wash, mate.

Paul

[Jan Jaap]

Congratulations! You've just proved my points with your vulgar, tunnel-visioned reply.

It's little wonder Oakley wanted nothing to do with you. If 8 months without a reply isn't a great big jumbo-sized hint that they're not interested then I don't know what is. You obviously believe you know what's best for them, but they don't seem to share your confidence.

They suspected you were basically a cybersquatter, they put you to the test and - hey presto - you offered to sell the domain for 25000 Euros. And that was AFTER a '50% discount', wasn't it? For a .nl domain which costs about 10 Euros to buy. Which makes you in most people's eyes.... yes, a cybersquatter!

All this 'poor little me, just trying to help' stuff just doesn't wash, mate.

Paul

That's not true, I did not believe I knew what's best for them. Anything would be good for me, any way they liked.

I offered myself to serve the Dutch market in the best way, since their service is really bad over here. Users currently need to buy in other countries since here they need to wait 2-3 months. For atletes that need to perform its a necessity to be able to get what they need when they need it. And for me it would also be a relief to finally get the products I want when I wanted them.

However, if Oakley had other plans: no problem. If they held a trade mark and I was not allowed to keep the domain: no problem.

They never replied to me nor my dealer, so it's not that they did not like me or my ideas or anything, they did not even reply to one of their most prestigious dealers here in The Netherlands.

And with prestigious I mean one of the most expensive optometrists that sells high priced glasses and is the most popular by people with money in his city.

[Sagewing]

It sounds to me like you were speculating on a deal, but you didn't have the relationships or fundamentals of the deal in place. So, it didn't work out well. Just because you are a big fan of a company, that doesn't mean that they have to do business with you.

[Jan Jaap]

That's correct, I took this risk.

And my official Oakley dealer told me that Oakley Inc. would likely grant permission, and wanted to help me. It is not that his advice puts the blame on him or anything, he did not have the right to grant permission and I knew that. I took this risk myself and I still believe it was a good risk to take. It could have been so beautiful if they would have granted me and my dealer permission to serve the Dutch market in the best way.

[Dave Zan]

They never replied to me nor my dealer

And they're not required to reply, nor are they required to be friendly about it.

I hope you're not posting just trying to defend or make yourself appear to be
the little guy being bullied by the big guy. It would seem more credible if you
didn't give them a demonstrable cause to hold you liable for your choices.

Oh, and for those who replied here and curious if Jan posted elsewhere:

http://forums.digitalpoint.com/showthread.php?t=899812

Jan, let's just say you knew both it's risky and it's "practically" wrong, yet you
chose to do it anyway. You've then paid the price for your choice.

If you don't like how people are replying to you, then you might want to stop
posting here and just move on. Just as you don't have to do anything for any
of them, they don't have to do anything for you.

Learn from your experience, move along, and don't do this sort of thing again.

[Jake Arkinstall]

Replies to that thread on DigitalPoint simply show how much more advanced sitepoint is at this kind of thing.

Selling a domain for 25k is simply over the top. Especially for an suffix which isn't mainstream. I'm not supprised that they were offended.

If you want to do a company a favor, park the domain and send them an offer. Don't touch it until they reply.

[BadDevil]

a search for Oakley inc gives this page in 13th place.. Nice job man


Sorry to hear the storry

[Sagewing]

It could have been so beautiful if they would have granted me and my dealer permission to serve the Dutch market in the best way.

Perhaps, but they have their own idea of what the 'best way' is.

[Jan Jaap]

And they're not required to reply, nor are they required to be friendly about it.

I hope you're not posting just trying to defend or make yourself appear to be
the little guy being bullied by the big guy. It would seem more credible if you
didn't give them a demonstrable cause to hold you liable for your choices.

Oh, and for those who replied here and curious if Jan posted elsewhere:

http://forums.digitalpoint.com/showthread.php?t=899812

Jan, let's just say you knew both it's risky and it's "practically" wrong, yet you
chose to do it anyway. You've then paid the price for your choice.

If you don't like how people are replying to you, then you might want to stop
posting here and just move on. Just as you don't have to do anything for any
of them, they don't have to do anything for you.

Learn from your experience, move along, and don't do this sort of thing again.

It wasn't wrong at all, why do you think that?

My official Oakley dealer also thought it was a great idea, he told me about Oakley.be doing the same.

We could have made a million dollar company with it, and really improve the service quality of Oakley in The Netherlands because Oakley may be providing the worse service of all companies arround here. It's sad for all their customers, that really love their products but are served in such a bad way and need to wait months for replacement lenses etc. having them to be without their glasses for half the summer etc.

So we wanted to help improve their service, and boost their sales. There is nothing wrong about that, right?