Am I A Cyber Squatter?

[jberryhill]

I am not a lawyer. There is one on here and he pontificates real nice.

Bless you.

 

[PalmBeach]

I am in the middle of a reverse domain name hijacking and I do need help.

Question, have you looked at your parking page for this?
It is for sale, there is no "On-Line Marketing opportunities that are guaranteed to improve your bottom line"

I could very well be wrong (it would not be the first time) but I thought Available and For Sale meant two different things. Or Is this a bullshit argument?

Available : obtainable or accessible and ready for use or service
For Sale : transfer of property for money or credit

Below is the complete offer as it appears at the TOP left hand corner the Spinpilates.com PARKED page.
”spinpilates.com
This Domain Is Available Please contact us for more information.”

Click on the contact us link it takes you to a page that explains what is Available. No ware on that page does it say anything about the domain name being for sale. No ware!
Questions that I am looking for answers tor:

• Does the SpinPilates.com PARKED page, stating that the domain name isAvailable, (not for sale) hurt or help my case. . Should I take the site down, should I leave it up or redirect to my PilatesCrosstraining.com Site
• Should I file a petition with the USPTO for the Cancellation of the trademark or Should I file an Opposition to the trademark ? The TARRA stats in post #18 are vague to me.
  

I am sure The Mad Dogg’s attorneys realize, in this internet driven world, that a domain name availability search is just as important as a trademark and trade name availability search when registering a trademark and did their do diligence.

This is my case so far
If the did their do diligence the new:

• It would be impossible to prove Cyber Squatting and prior intent because the three burdens of proof can not be met.It is also impossible to prove trademark dilution, trademark infringement, and unfair competition because their trademark rights must predate the domain name registration.

• SpinPilates.com was registered 5 years before they filed for their trade mark on Spin Pilates by a companies has been providing hybrid Pilates cross training (like Spin Pilates) for many years. My company has established a track record of registering the corresponding .com for all the program under development before they are released to the public.

• Knowing the above The Mad Dogg’s attorneys still went ahead and filed for a trademark.

Knowing the above it leads me to bereave the attorneys for Mad Dogg Sports are trying to game the system by using the USPTO and a $350 trade mark in an attempt at reverse domain hijacking in order to gain control of the domain name they desire spinpilates.com.

Would this surreptitious trademark maneuver be considered unfair competition: cause an economic injury to a business, through a deceptive or wrongful business practice. Could I be entitled to treble damages and attorneys' fees?

Wouldn't you want people to find out about your franchising opportunities?

I just went through a divorce and I am still picking up the Pieces.. I lost my shirt but I kept my domain portfolio and my dream ;-)

 

[DNQuest.com]

pon·tif·i·cate
Pronunciation Key - Show Spelled Pronunciation[n. pon-tif-i-kit, -keyt; v. pon-tif-i-keyt] Pronunciation Key - Show IPA Pronunciation noun, verb, -cat·ed, -cat·ing.
–noun 1. the office or term of office of a pontiff.
–verb (used without object) 2. to perform the office or duties of a pontiff.
3. to speak in a pompous or dogmatic manner: Did he pontificate about the responsibilities of a good citizen?
4. to serve as a bishop, esp. in a Pontifical Mass.

Which meaning is it being used here???

Pontiff John Berryhill?
Acting pontiff John Berryhill?
Pompous speaking John Berryhill?
Bishop John Berryhill?

:smilewinkgrin::smilewinkgrin:

My divorce started 4.5 years ago... and still going strong, got a court date Friday. Advice.. never get married. I lost just about all of my portfolio

It would best be best for you to contact an attorney familiar with this type of situation, you can save time and headaches. From their aggresive nature I would not suggest doing this on your own. There are several here here who are very reasonable and extremely knowledgable in this type of situation. One letter form them could resolve the issue. John Berryhill www.johnberryhill.com or Brett Lewis www.lewishand.com are active members here.

 

[jberryhill]

Pontiff John Berryhill?

http://blog.lextext.com/blog/_archives/2006/9/22/2349589.html

Without doing any heavy lifting into research of the particular facts here, it seems to me, Palm, that you are getting inordinately worked up over a c&d letter. Your c&d letter may be ill-considered or whatever, but that does not make it the century's greatest crime against humanity. Put another way, if this asshole works you up into also behaving as one, then the world is blessed with another asshole it didn't need.

And that was largely the point I was making when I put on the mitre at that particular presentation. Aside from the fact that the "Domain King" title was already taken, I wanted to encourage folks to take the high road in these situations.

Yes, some attorney was paid a token amount to send you a dumb letter. Why work yourself into a lather over that? You can explain it to him simply and succinctly without getting into a lot of factual questions, admissions, or colorful characterizations, or you too can pay an attorney a token amount to do it for you.

Advice.. never get married.

My advice to young single men is this:

Find a woman you can't stand, and buy her a house.

Then you'll be about ten years ahead of the game.

I thought Available and For Sale meant two different things. Or Is this a bullshit argument?

It's a largely irrelevant one.

 

[Michael]

My advice to young single men is this:

Find a woman you can't stand, and buy her a house.

Then you'll be about ten years ahead of the game.

That made my day :lol:

 

[PalmBeach]

Case filed in Federal District Court in apparent attempt @

“Reverse domain name hijacking”


Mad Dogg Skipped ICANN proceedings ($1200) and went straight to California district ($350) court in an attempt at Reverse Domain Name Hijacking SpinPilates.com . This domain I registered 5 years before they filed for their Spin Pilates trademark. I discovered (on line) a case had been filed in Federal District Court against my company Thursday, June 05, 2008. I have not been served yet. What comes next? Can they make me travel to California to defend my domain name?

 

[jberryhill]

This domain I registered 5 years before they filed for their Spin Pilates trademark.

Their SPIN mark was registered in 1998, btw.

 

[steven22]

John

Email sent!


Steven

 

[PalmBeach]

Their SPIN mark was registered in 1998, btw.

Mad Dogg applied for a trademark on Spin Pilates on February 5, 2007, They also applied for a trademark for SpinYoga on February 5, 2007. The corresponding domain names SpinYoga.com was registered May 19, 2000.

I discovered (on line) a case had been filed in Federal District Court against my company Thursday, June 05, 2008. I have not been served yet. What comes next? Can they make me travel to California to defend my domain name?

How will I be served? What comes next?

 

[NameGuy]

Check trademark serial # 75976589

 

[steveatvillas]

Hello all:

If I'm not mistaken, the word "Pilates" is already a registered trademark. Moreover if you go to the USPTO site you can do a search on "SPIN PILATES". Mad Dogg has 4 applications pending, and all have been published for opposition. This means that before giving the trademark to Mad Dogg, the USPTO publishes this application for anyone with "prior art" or prior rights to oppose the granting of the mark.

For your reference, here are Mad Dogg's Trademark application numbers:

77099719
77099712
77099724
77099722

Unfortunately, you have missed the opposition period. I'm guessing you got your C & D within days of 13 May 2008, the date the opposition closed.

And, remember, Registered Trademarks and domains are different types of Intellectual Property.

I have read many cases wherein WIPO clearly states that the first jurisdiction is WIPO or the other Arbitration bodies, not civil court. This is the UDRP agreement we all agree to when we reg a name.

There was also a landmark WIPO case, http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0062.html, which, in very narrowly defined circumstances, allowed a domain to be transferred away from a Respondent (that's you) to a Complainant (that's them) even though the Respondent had regged the name well before the Trademark.

One of the things the Respondent did wrong is he PANICKED and did a registrar shuffle to try and do a runner with the name.

Take John B's advice and take a breath and look at your options.

It would appear on the surface that you are being bullied, if you know that you didn't reg the name in bad faith.

Don't do anything that can be construed as bad faith, it will come back to haunt you in either the Civil case or a UDRP challenge.... if you look guilty, and act guilty....well, figure it out.

There is a debate as to whether or not a civil action takes precedence over UDRP continues in full force. John B. would be a better one to ask.

Hope this helps, and good luck.

Steve

An afterthought.....

I got a similarly steaming letter from MicroSoft via my privacy service on a name I had registered in good faith. I only found out when I got an email from my registrar. I also got a copy of a summons and ongoing court case that had already been filed by Microsoft, where I was named as a "doe" as in John Doe, because my details are privatised. They were using the same anti-cybersquatting law you quoted above, and told me I owed them the transfer and a gazillion dollars in damages.

With nothing to hide, I called the lawyers for MicroSoft and explained my situation, gave them my direct contact details and even told them about other names I held that "might" be construed as infringing.

Ya know what? We worked it out, no harm no foul. We're good friends now.

But it seems that Mad Dogg has another agenda....

Steve

 

[DNQuest.com]

So, how is the domain being used? are you advertising thier or thier competitors products and/or services? How about this, do you acknowledge any trademarks of Madd Dog on the parking page? BTW- it seems the page has changed from the last time I saw it.

Added: Madd Dog has a registered mark on "SPIN" for equipment and instruction since 1992

 

[PalmBeach]

Thank you so much for your response.

NameGuy Check trademark serial # 75976589

I did check would think that this ruling applies:
nothing in trademark law requires that title to domain names
The following August 27, 2001, the United States District Court for the Eastern District of Pennsylvania speaks to trademark holders who seek title to domain names that includes trademarks or portions of trademarks:
It is clear that nothing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders. To hold otherwise would create an immediate and indefinite monopoly to all famous mark holders on the Internet, by which they could lay claim to all .com domain names which are arguably ‘the same’ as their mark. The Court may not create such property rights-in-gross as a matter of dilution law. … Trademark law does not support such a monopoly.
– Strick Corporation v. James B. Strickland, EDPA (27-Aug-01)

Thank you Steve

One of the things the Respondent did wrong is he PANICKED and did a registrar shuffle to try and do a runner with the name.

What is a runner?

I have read many cases wherein WIPO clearly states that the first jurisdiction is WIPO or the other Arbitration bodies, not civil court. This is the UDRP agreement we all agree to when we reg a name.

Sounds great. If I had a negative WIPO judgement than I would gladly give up the domain.

 

[flamewalker]

Sounds like a very complex case best suited for a skilled and knowledgeable lawyer, such as John Berryhill.

Whatever you do, do not respond out of haste and say/do something that would jeopardize your case. Regarding the current suit, some judges will be willing to talk to you over the phone, or you can hire a lawyer in California to appear for you (I know theres a cool legal term for it but I don't remember it

I don't know about the 80k figure others have thrown around, but I would look at it this way: how much would it cost you to give up the name and start a new business venture? How much money have you invested in the name and services related to the name? How much income have you made from it or project to be able to make?

Look at all the numbers and think about whether its really worth the time and money. Based on what I have read, it sounds like it may be. Again, some sound legal advice from a pro, I believe, is the wisest choice before making any silly mistakes that could cause you dearly.

Good luck and keep us updated!

 

[PalmBeach]

If I'm not mistaken, the word "Pilates" is already a registered trademark

"Pilates" Trade Mark Overturned October 20, 2000

"Pitates." In a landmark decision handed down by the U.S. Southern District Court in Manhattan on October 20, 2000, the use of the term "Pilates" cannot be restricted by a trademark, making it as generic an exercise term as yoga or aerobics.

Their SPIN mark was registered in 1998, btw.

Mad Dogg got their trademark on Spin in 1998 2 years before the Pilates trade mark was deemed generic and overturned at the end of 2000. If the trademark was good that why did they need to trademark Spin Pilates and Spin Yoga February 5, 2007

I incorporated my Pilates Companies in 1999 and my All-American Pilates™ # 2872502 in 2002 and registered SpinPilates.com June 6th 2002

Check Spin trademark serial # 75976589

It is evident (to me) that Mad Dogg had no intentions of doing Pilates when they trademarked Spin 2 years before the Pilates trade mark was overturned. They were not referring to Pilates in their trademark serial # 75976589 Goods & Services description : stationary exercise bicycles / physical fitness instruction. They were talking about exercise on bicycles. The only way they could get my domain name was to Trademarked it.
This could be the reason for the recent District Court of The Hague, April 29, 2008. Mad Dogg Athletics, Inc. versus Batavus B.V. rulling

Mad Dogg is owner of the trademarks SPIN, SPINNER and SPINNING and uses the marks in respect of ‘bicycle fitness’, a concept invented by the American Johnny Goldberg. Batavus sells bicycles under the name “Ultimate Spinning S3” and uses the word “spinner” in this regard. Mad Dogg claims that Batavus infringes their trademark rights.

Batavus defends by stating that Mad Dogg’s trademarks have become generic terms and that Mad Dogg can therefore not derive any rights from them; after all, if the trademark owner is to blame that the trademark has become a generic term, the trademark registrations can be cancelled in court.

The court agrees with Batavus: Mad Dogg’s trademarks have become generic, however, Mad Dogg is not to blame for this. The trademarks are therefore not being cancelled. They do, however, have a (very) limited scope of protection. Although, Mad Dogg still has valid trademark registrations, Batavus does not infringe these rights according to the court.

Does a District Court of The Hague ruling have any influence over a California District Court Ruling?

 

[flamewalker]

Does a District Court of The Hague ruling have any influence over a California District Court Ruling?

Generally international rulings don't/shouldn't directly affect the rulings in the U.S., however that does not mean that judges will not follow the same guidelines if they feel the same way as the judge across the sea did.

You never can know for sure... there are some dumb judges out there (aka the 9th Circuit in Cali :-/). IMHO the Manhattan ruling on "Pilates" will help your case more than the one in The Hague.

IMHO, a very obvious case of reverse hijacking... the fact that you missed the challenge period on their TM doesn't help, but you have a lot of evidence of "prior art" and usage in the field (even if not directly on the name.com), and imho should be relatively easily get it cancelled.

I believe by "runner" the writer was meaning to run the name around and make it difficult to track down/acquire.

Also, in most legal cases, you should get served through the mail/by carrier...

 

[DNQuest.com]

So would you concider "Spin Pilates" excersize instruction? If pilates in deemed descriptive or generic, adding the SPIN registered mark would make it a stronger case for the TM holder. For comparision, would someone view this like IBM Computers, or Apple Computers, or Apple Records? I think that is where the sticking point will come in.

75976589 Goods & Services description : stationary exercise bicycles / physical fitness instruction. They were talking about exercise on bicycles.

I know you are trying here, but you presentation is a little misleading here. They hve a registered mark under 2 distinct catagories:

IC 028. US 022 023 038 050. G & S: stationary exercise bicycles. FIRST USE: 19920100. FIRST USE IN COMMERCE: 19920100

IC 041. US 100 101 107. G & S: physical fitness instruction. FIRST USE: 19920100. FIRST USE IN COMMERCE: 19920100

There is no exception or targeted reference to the type of physical fitness instruction. Since pilates is a generic term, and this could apply to any other new term that may come about, Madd Dogg may have the right to use thier TM in asociation with that type of instruction.

 

[dr00t]

You're fine. They don't have a chance as long as you state the case as you have done here. They may have registered the trademark in an effort to file this against you and try to reverse hijack the domain.

Whatever you do, don't ask them for any money, because it would show bad faith. Just tell them you're not interested and if it goes to WIPO, do what you did here, and explain your side to the story.

You have nothing to be worried about.

 

[flamewalker]

I wouldn't say he has nothing to worry about...there are some stupid panelists... but it does seem from my perspective that he has a very strong case. Certainly don't freak out and make stupid mistakes that might cost you...

 

[DNQuest.com]

You're fine. They don't have a chance as long as you state the case as you have done here. They may have registered the trademark in an effort to file this against you and try to reverse hijack the domain.

I am sorry to be rude here, but have you read the whole thread or research the situation? Mad Dogg already has a REGISTERED MARK on "Spin" in the area of physical fitness instruction. The domain contains the word "spin" in reference to physical fitness instruction. So a challenge could stand on it's own merits from the "spin" registered mark. The new filings could be irrelevant. If Mad Dogg did not already have a registered mark on "spin", then that is an entirely different situation.

Sorry, but he is not "fine"... eggshells (that means walk carefully).