Can I transfer rights in domain name ?

[domaingenius]

You are correct that advertising services fall into class 35. However, I've seen this game that you can just start a PPC site and get a class 35 registration.

Chances are, you will be able to obtain a registration - as the examining attorney will not take the time to research the services provided (nor should they). However, any such registration would be easily crushed if a cancellation action were brought. Quite simply, there is no bona fide service provided. Additionally, if you create a website that places auto-generated PPC links on the page, not even YOU know what ads will wind up there.

It might be another story if you launched Vuvuzela.com and placed links to companies that sell vuvuzelas on there -- but auto-gen PPC sites would not likely survive a cancellation action. Trademark squatting is not the same as having an actual protectable trademark.

---------- Post added at 10:25 PM ---------- Previous post was at 10:23 PM ----------



So why bother asking a legal question here? You're smarter than all the lawyers, but you want legal advice from a bunch of non-lawyers on a domainer board? Genius, indeed.

Marco you are sooo wrong I am afraid ,AND when someone starts on the road to knocking someone you know they (you) do not really have an educated reply. I tell you
that you are 100% wrong as far as UK laws go. US laws I do not know well but under UK laws you could not simply wipe away such trade marks as if they do not
exist. Also it is very hard to prove any bad faith. You think me wrong I dare you to challenge one of my trade marks.

DG

---------- Post added at 05:27 AM ---------- Previous post was at 05:24 AM ----------

By the way, I ask questions on here because quite often someone (whether lawyer or not) will reply with something that is useful whether it be a train of thought
or an actual piece of case law/udrp. THAT is why I ask questions. And as I have said before, it does not take much to know as much as a lawyer.

DG

---------- Post added at 05:42 AM ---------- Previous post was at 05:27 AM ----------

Because unless you are a PPC company, you're not really providing "goods and services" on a PPC page. These are bullshit trademarks when filed for PPC pages.

Please define what a pay per click company (PPC Company) is and why someone showing webpages on their own domain name does not have equal status ?. In the trade classes in 35 it has one description as per below ;
Dissemination of advertising for others via the Internet

Now how is that not a valid trade mark for someone who owns a domain and is not Google(tm) ?. I am not speakiong of what decisions have been made under IDRP I am
speaking of pure trade mark laws. In UK I see no reason that a challenge could succeed against this, given case law defining bad faith in such a way as to make it very very hard
to prove.

DG

 

[Cartoonz]

just so I have this straight... the original poster asks a question and gets a lot of actually intelligent, informed, and accurate responses... and then that same OP proceeds to fight with all of the people giving the feedback?

Yeah, I thought so.

DG, we get it that you are not happy with the consensus here on this matter but you need to understand that we live in the real world and not in your head. All of the arguments you're making, while they may seem to make sense, have been tried time and time again - and failed the majority of the time.

 

[marcorandazza]

Acro,

You're right. There have been many decisions that say that -- and pretty much only one panelist who authored all of them. David Sorkin has set up a nice little racket where he gets Ari Goldberger cases funneled to him, but that doesn't mean that he can tell his ass from his elbow when it comes to actual trademark law. And, even if it is "legitimate use" under the UDRP, I was trying to make the point that trademark registrations for PPC sites would not be likely to stand up to any real scrutiny. I apologize if I did not make that point clear.

The LegendaryJP,

I concur. Your answer is the best one in the discussion.

---------- Post added at 01:09 PM ---------- Previous post was at 01:07 PM ----------

You think me wrong I dare you to challenge one of my trade marks.

I would be delighted. Find me a client with standing and the money to pay me, and I'm there!

 

[domaingenius]

just so I have this straight... the original poster asks a question and gets a lot of actually intelligent, informed, and accurate responses... and then that same OP proceeds to fight with all of the people giving the feedback?

Yeah, I thought so.

DG, we get it that you are not happy with the consensus here on this matter but you need to understand that we live in the real world and not in your head. All of the arguments you're making, while they may seem to make sense, have been tried time and time again - and failed the majority of the time.

No wrong im afraid. All I said, or meant to say, is that if someone makes a statement of fact (i.e. like marco made about trade marks not being worth the paper they are written on) they should give the pure facts that that statement of fact is based on, otherwise it simply appears to be that persons opinion rather than based on a particular case or
reason. That is all I am saying ,dont make statements alleging trade marks are invalid without then giving precise reasons that it is ,not just sweeping statements.

DG

---------- Post added at 08:11 AM ---------- Previous post was at 08:09 AM ----------

I would be delighted. Find me a client with standing and the money to pay me, and I'm there!

Look forward to it. Bear in mind I shall be litigating in the UK. not USA and it will be going to High Court, Then Court of Appeal, then Supreme Court and then ECHR ,by which time your client will have run out of money .

DG

 

[Cartoonz]

Objection, Argumentative. Sustained.

I was correct in my statement. You are really p*ssing into the wind on this. You don't like this, you don't agree, you have all the answers... then why even ASK in the first place?

 

[domaingenius]

Objection, Argumentative. Sustained.

I was correct in my statement. You are really p*ssing into the wind on this. You don't like this, you don't agree, you have all the answers... then why even ASK in the first place?

I told you, I ask questions to see if some of information may be useful, some is most is'nt. Are you a troll ?.

DG

---------- Post added at 03:14 PM ---------- Previous post was at 03:13 PM ----------

And alos how can you make a statement that I have no chance when you dont even know one fact of the matter ?. Doh !

 

[Cartoonz]

You supplied all the "facts" you wanted used to give an opinion.
All I stated was that you seem Hell bent to argue with anyone/everyone that gave you an opinion that is counter to what you want.
Nowhere did I state you have "no chance", all I did was point out the obvious... that you are unhappy with the opinions offered and have become rather argumentative because of that.
What I did say was that your arguments have been tried many times before in a variety of scenarios and almost always failed.
That is reality. Do you have a "chance"? Sure, but if you are realistic you'll realize that it is a very slim one.

Now, here's my question to you - Why bother to transfer the names to any other entity at all, especially in light of what you've been told here, instead of holding them as you always have? If you have so much confidence in the "rights" you have already established, you'll not be at risk keeping things as they are - right?

 

[Theo]

I still haven't gotten a straight answer here.

If individual A forms company B - or - if company B is renamed to company C, then would the transferred assets lose any "mojo" when challenged at a UDRP? Would that change in explicit ownership be of any importance, since the primary owner would be the individual A or the continuation of company B?

 

[TheLegendaryJP]

I still haven't gotten a straight answer here.

If individual A forms company B - or - if company B is renamed to company C, then would the transferred assets lose any "mojo" when challenged at a UDRP? Would that change in explicit ownership be of any importance, since the primary owner would be the individual A or the continuation of company B?

We answered this from the start, ask a lawyer

I have never heard such a defense used to fight a wipo/udrp etc so cannot say if " good faith is transfered with rights " in such a case. That would depend on a lot of things....

 

[Cartoonz]

Acro, that's the whole issue... under the "make it up as you go" ways of WIPO, they interpret it however they see fit. While technically, with a proper transaction, one should be able to transfer all rights, goodwill, etc with any asset transfer (especially if it is only a name change and actual ownership really is the same) the good folks running the UDRP mill do not usually saee it that way. That has been the main point that's been presented here - under UDRP it can completely screw you to do what *should* be a non issue in the real world. This is likely what has DG so frustrated.

---------- Post added at 10:23 PM ---------- Previous post was at 10:22 PM ----------

and if you check out the BME case that GregR lost, you'll see the very example you used Acro. No, it was not a pretty ruling.....

 

[domaingenius]

Now, here's my question to you - Why bother to transfer the names to any other entity at all, especially in light of what you've been told here, instead of holding them as you always have? If you have so much confidence in the "rights" you have already established, you'll not be at risk keeping things as they are - right?

You asked me so I will tell you. I know from my recent experience of fighting an 11 year legal battle (and eventually winning against all odds and through all Courts)
that you can never ever predict what the results of a hearing/trial will be,never. I only won that one by issuing Criminal proceedings for perverting course of justice
and when the guy faced a maximum life sentence they settled the whole caboosh. Secondly I lost a domain at UDRP unfairly and have decided that if anyone dares issues one again they will be facing a long and protracted court battle through years until I win. I have trade marks and my Company's own them. I do not need a lawyer in UK as I can do it myself. That is the reason.

DG

---------- Post added at 03:13 PM ---------- Previous post was at 03:03 PM ----------

Let me elaborate. Much as I am confident as I say you never ever know and thus best to be certain to not be involved in such liitigation personally. I do not own the domains
or trade marks personally, they are owned by Company's and each company will defend itself to the bitter end if required. I will not wait from the UDRP decision I will issue proceedings pro actively immediately someone makes a threat. I will seek the UK Courts intervention to protect my domain that has a UK trade mark. Who do you think a UK Court will side with ?.
It MIGHT be that the UK Court rules that the Complainant (defendant to my application) must firtsly challenge the trade mark, if they contend that it has been granted to the Company in bad faith. If the Company loses at one Court it will appeal. If it loses again it will appeal again, all the way to highest Court. Further, when I responded to "A" UDRP from WIPO I refused to sign the clause that stated that I absolved WIPO and their Panelist of all liability for their decisions. WIPO backed down in end and allowed me to delete that clause on basis that I had not anywhere undertalen to accept such supplemental rule (it is nowhere in the ICANN rules etc). At some point I want to see if there might be some angle to sue WIPO but not yet.

DG

 

[Theo]

Back to the BME case - I believe Greg used "faux" info after a while, which made it obvious that he's just hopping from one WHOIS to the next. What I am talking about is legitimate changes of the name of the holding company, keeping the ownership intact. To think of it simpler: Maria Doe gets married, changes her name to Maria Dufus and still owns the same domain.

Acro, that's the whole issue... under the "make it up as you go" ways of WIPO, they interpret it however they see fit. While technically, with a proper transaction, one should be able to transfer all rights, goodwill, etc with any asset transfer (especially if it is only a name change and actual ownership really is the same) the good folks running the UDRP mill do not usually saee it that way. That has been the main point that's been presented here - under UDRP it can completely screw you to do what *should* be a non issue in the real world. This is likely what has DG so frustrated.

---------- Post added at 10:23 PM ---------- Previous post was at 10:22 PM ----------

and if you check out the BME case that GregR lost, you'll see the very example you used Acro. No, it was not a pretty ruling.....

 

[TheLegendaryJP]

Not the same thing Acro, he wants to transfer whole ownership, Maria is not

 

[Theo]

The OP states exactly that, I simplified it to make a point. See:

Can I transfer the domain name and rights (that are both in my personal name) into a Limited company that I am director of

 

[TheLegendaryJP]

The OP states exactly that, I simplified it to make a point. See:

That is not how they will see it though

It has been mentioned by Marcorandazza, policy dictates ownership(registrant) change negates faith, Maria is not changing ownership, just her last name via a panel at the registrar. The OP wants to change the registrant!

The OP wants to know if the registrant became a company ( new registrant ) that he heads is THAT going to negate faith.

Youre trying Acr, maria example actually helps make it clearer what his issue is

 

[Theo]

The OP wants to transfer ownership to an entity - a business - that he's the manager of. That's a perfectly legitimate move. Before I formed a corporation, all my domains were in my name. Now, they are held as assets by my LLC of which I am the general manager. Are you saying that ICANN will tell me that was a break in ownership? Of course not.

 

[TheLegendaryJP]

Is it a break, from personal to biz.. thats the question and according to my understanding of policy if the registrant changed the faith does not carry forward.

But keep in mind, if you lose a case (wipo) etc it isnt likely based on a registrant change alone but rather the motive, was it changed and in good or bad faith there after, intent etc. You do lose however the past registrants good faith. So in sensitive situations like the OP`s its best imo not to tempt them to have an excuse.

So yes, imo you lost your faith when it went from Acro the man to Acro Inc. Not saying the company had bad faith ( that is up to you to disprove, them to prove ). But you lost the good faith you had prior if good lol .

 

[Theo]

Actually JP, that's BS. If that were the case, 95% of domains would be in bad faith. I am not even going to begin stating my opinion on what good ICANN is (think the opposite of anything positive) but the fact remains that a change in managing entity that bears the prior or original owner as part of ownership - and I'd extend that to partnerships as well - has no ill effect on the continuum of ownership. The reason I gave the example with a simple name change in the case of a married woman was to explain it to the simple-minded.

 

[marcorandazza]

JP & Acro,

Here's how I see the transfer math:

If you transfer from Acro (the person) to Acro, Inc., you do change the legal entity that owns the domain name. Sure, you can say "but it went from my right hand to my left hand." However, corporations come with certain benefits (which I would presume that Acro, Inc. enjoys), thus you can't simply acknowledge the corporation as a separate entity when you want to (tax time, or lawsuit time) but say that it is a mere fiction when it comes to a transfer of domain name.

On the other hand, I know that there have been a significant number of UDRP cases in which panelists do disregard a transfer of ownership when it goes from a single person to a sole proprietorship corporation.

Now here comes the next jump though. Lets say that you take a domain, transfer it from Acro to Acro, Inc. Then, next step, Acro, Inc. adds in a partner, Plato, so it goes from a sole proprietorship to a partnership between Acro and Plato. Then, Acro himself sells his shares in Acro, Inc. to Plato.

One could argue that the transfer from Acro to Acro, inc. was not a change in registration -- and many UDRP panelists would agree. Once the corporation owns the domain name, changes in ownership of the corporation would arguably not change the registrant. Therefore, good faith that existed at the time of Acro's original purchase might be laundered to Acro, Inc. and then further laundered to Plato, as the sole owner of Acro Inc.

Lets take it another step ... would a transfer from Acro, Inc. (now owned by Plato) to Plato himself be a "change in registration?" Under some UDRP decisions, it would not (for the same reason that Acro to Acro, Inc. would not be).

So if we take it from that step, we *could* launder the good faith that Acro had when he bought it, and run that good faith through a corporation to Plato, and the good faith might survive.

Of course, if you demonstrated this kind of shenanigans to most panelists, they would see it for what it is -- an attempt to launder an initial good faith purchase in order to avoid subsequently-arising rights. But, if you get lucky and wind up with one of the cybersquatter-preferred panelists, they might simply feel that the whole is not greater than the sum of its parts -- so 0 + 0 = 0, and thus you get away with a laundered transfer.

 

[Theo]

Marc, I think that was the case with Greg's passing around of that LLL .com to various entities. However, the mere notion that a change of ownership discredits any rights at a future UDRP is comical. Companies and assets are sold daily and so are domains. In fact, many IP attorneys advise domains to be incorporated as LLC companies and be sold as companies to the buyer of the domain. How is that not looked down upon by the "tribunal of elders" that ICANN has become? Again, I'd like to know what percentage of these cases that challenge the good faith of owing a domain that has changed "titles" end up handed over to the complainant.