A Lawyer gets SM on my .com AS a .COM!!

[JuniperPark]

The name is 'law' and 'sharks' with .com at the end. I'm avoiding typing the name all togther so that it isn't listed in the search engines.

History:

- The name was owned by a lawyer in Colorado in the late 90's.
- The name dropped and I bought it in mid 2002. I listed it for sale.
- A lawyer from Los Angeles is awarded a registered service mark on the exact domain name with extension (ex. "TheName.com") July 15 2004!!!

Serial Number 78451545
Filing Date July 15, 2004
Published for Opposition June 21, 2005
Owner (APPLICANT) (his name, address)
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

- The LA Lawyer in mid 2004 because making offers below asking price. I accepted, and he failed to make payment

- The LA lawyer is now threatening to take the name (via telephone)

So... is it legal to apply for a service mark on something you KNOW do not own, then harrass the owner for it? Should I sue this guy for devaluing MY property since I can't sell it to others without an issue? Perhaps this should be taken to the California Bar assn, since we're both in California?

 

[Mr. Deleted]

that is called reverse hijacking, and if you get a lawyer, you'll win

 

[DNjet]

I , without a doubt, would take this to the cal. bar assoc. , I don't see how this dirtbag could get a service mark on a domain he does not own , maybe a few lies in the paperwork? oh , that would be nice wouldn't it.

 

[NameYourself]

Contact JBerryHill here in the forums. He is an expert in this area.

 

[Theo]

"An opposition is now pending at the Trademark Trial and Appeal Board."

Did you appeal the mark or someone else did?

 

[JuniperPark]

"An opposition is now pending at the Trademark Trial and Appeal Board."

Did you appeal the mark or someone else did?

That's interesting -- I see that somone HAS filed against it, and it wasn't me! I also found that his application is online, and includes this:

Declaration

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.

Signature: /123-4567/ Date: 07/15/2004
Signatory's Name: Victor Valleau

==========

This could get interesting. I can't imagine a clearer case if violation.

 

[Theo]

Hammer away - I would contact the office immediately if I were you.

 

[JuniperPark]

I didn't realize that I could access all of this information was available on the www.USPTO.gov site!

Apparently a 4th party (not me, not the owner from the 1990's) is fighting for this trademark. It's a legal publishing company from Canada.

http://ttabvue.uspto.gov/ttabvue/v?pno=91166302&pty=OPP&eno=2

There is going to be "testimony taken" between Sept 8 2005 and March 7 2006, with the whole process wrapping up Sept 2006! Click the links on the right and you're taken to a 5 page legal document where the Candian firm argues their case... THEY'VE BEEN USING THE MARK SINCE 2003, and received a Canadian trademark in 2004!

Remember, I've owned the name since 2002, and the mark is for my precise name with the ".com" in the mark.

I tried to file an opposition online, but I get an error that the deadline has passed. I tried to file a cancellation, but it says the serial number (78451545) is invalid (it's not!). Not sure what to do.

Apparently neither company bothered to look up the ownership before filing tons of legal documents?

 

[Dave Zan]

You could also use the mess.com UDRP as an example.

But that tidbit you found in USPTO is an even better bet.

 

[jberryhill]

So... is it legal to apply for a service mark on something you KNOW do not own, then harrass the owner for it?

The question is not necessarily that simple. However, the short answer would appear to be a violation of the federal perjury statute has ocurred.

(that is the import of 18 USC 1001 referenced in the standard declaration)

 

[Theo]

It appears that the domain was owned before, between 2000 and 2002.

 

[dtobias]

My own article on this reverse-hijacking method is here:
http://www.icannwatch.org/article.pl?sid=02/06/10/200835&mode=thread

 

[greggish]

My own article on this reverse-hijacking method is here:
http://www.icannwatch.org/article.pl?sid=02/06/10/200835&mode=thread

I read your article Dan. Great stuff, but it had me so angry at the incompetence of these judges.

 

[Theo]

My own article on this reverse-hijacking method is here:
http://www.icannwatch.org/article.pl?sid=02/06/10/200835&mode=thread

Where is a link to the paint.biz decision? It doesn't come at at http://arbiter.wipo.int/domains/search/

 

[Mr. Deleted]

http://www.arbforum.com/domains/decisions/112596.htm
If you click on the link in the article that should come up

 

[Theo]

Thanks Joe.
But that was done using the NAF, not the WIPO.
To be honest, I am not aware of the NAF's role and legtimacy over WIPO. Why would one file a case with NAF over the WIPO?

 

[dtobias]

NAF and WIPO are both ICANN-accredited dispute resolution providers under UDRP. There were some others, but I'm not sure any of them are still operating.

 

[David_Hellam]

Perhaps someone like Dan or JB could correct me if I'm wrong, but I thought the purpose of using NAF over WIPO for UDRP was that statistically their 'experts' were more likely to side with the 'mark' holder in cases of dubious legitimacy?

Or am I reading too much into the results of a small sample of really bad cases?

 

[Theo]

WIPO is the global organization whereas NAF is US-based. As for the statistics you mentioned, you are probably correct.

 

[Dave Zan]

If you think about it, NAF seems a more practical choice if both complainant
and respondent are US-based. Seems, anyway.