DNForum.net !

[avs162]

how about dn4m.com
wait dan has that already

maybe i can sell dn4m.net to wanda

jk

file a tm as this site is going to be huge

sean

 

[Capt. Flash]

Originally posted by Zoobar


No chance that would happen.
Dnforum.com was an active site prior to the registration.

Sorry, that is not how it works. Just because there is a web site active at DNForum.com does not give anyone trademark rights. First, to claim common law rights you must prove substantial use. In that the world has come to know you by the disputed mark and that you would be harmed by the confusion created from the registration of the .net version. 1100 members and no income does not even come close. There is a common ignorance among domain name holders, that just because you buy a domain name and stick some links on the site you have established US Trademark rights, this is not the case. A lot of people have lost out believing this. It is extremely difficult to win a trademark opposition where the defendant has filed an "ITU" (Intent to Use) application even though the respondent had used the domain name in some fashion prior to the filing of the trademark application by the defendant. The only positive is that the respondent could not be sued for cybersquatting (violation of the "ACPA") since no one had a trademark at registration of the domain name. As a side note since this forum specifically deals with domain name resale topics it could legally be considered an illegal activity, (per the terms of service you agreed to at name registration) giving the owner of DNForum.com zip for rights in the civil courts and US Trademark proceedings. Any attorney can explain this in detail. So Yes, in fact if this Wanda filed a US ITU Trademark Application today she could legitimately file a complaint with WIPO after the mark was registered and take DNForum.com as her property. ALWAYS FILE A TRADEMARK APPLICATION FOR ANY COMMERCIAL VENTURE.

 

s a side note since this forum specifically deals with domain name resale topics it could legally be considered an illegal activity, (per the terms of service you agreed to at name registration)

Domain name registrations in most tld's do not prohibit the resale of said domain names, not sure where you draw that conclusion from.

 

[Capt. Flash]

Originally posted by safesys

Domain name registrations in most tld's do not prohibit the resale of said domain names, not sure where you draw that conclusion from.

Registration of a domain name solely for the purpose of resale is not a bona fide use. This is an elementary fact clearly spelled out in any Registrars TOS as required by ICANN and referred to in hundreds of WIPO decisions. You are correct that to sell a domain is not in violation, but to register a name solely for resale is.

 

Registering a domain solely for resale is not a violation of the udrp in isolation. It has been used to support one of the 3 required prongs in the past - but it certainly is not the only factor.

There are many udrp cases that have held that domain resale in in fact a legitimate activity:

esquire.com:

There is growing precedent within US law and within the UDRP that resale of domain names per se is not evidence of actionable bad faith. (See Avery Dennison Corp. v. Jerry Sumpton, D.C. Case No. CV-97-00407-JSL, Appeal No. 98-55810; General Machine Products Co., Inc v. Prime Domains NAF 0001000092531 re: craftwork.com, and Allocation Network GbmH v Steve Gregory, WIPO Case D2000-0016 re: allocation.com.)

ezstreet.net

6.10 Moreover, neither mere registration, nor general offers to sell, domain names which consist of generic, common, or descriptive terms can be considered acts of bad faith. Shirmax Retail Ltd./ Detaillants Shirmax Ltee v. CES Marketing Group, Inc., ICANN Case No. AF-0104; Allocation Network GmbH v. Steve Gregory, ICANN Case No. D2000-0016.

manchesterairport.com

"Selling a domain name is not per se prohibited by the ICANN Policy (nor is it illegal or even, in a capitalist system, ethically reprehensible). Selling of domain names is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are also violated, namely trademark infringement and lack of legitimate interest."

alfabet.com

The domain name was then put on auction in November 2000. It is undisputed that Respondent has registered a number of domain names, including <alfabet.com> and has offered these for sale by way of an auction. This is however, not in itself an act of bad faith as required under the UDRP nor is it an illegitimate business, as long as the domain names does not incorporate trademark rights of other businesses or otherwise infringes rights of others.

 

[mole]

Originally posted by StockPilot


Registration of a domain name solely for the purpose of resale is not a bona fide use.

hmm, I thought that applied only to the .biz restricted namespace.

 

[Capt. Flash]

c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or ---

I point out agian "bona fide offering of goods or services" , a domain name registered soley for resale does not meet this criteria.

 

Thats ONE of the THREE elements necessary to lose a domain in the UDRP:

http://www.icann.org/udrp/udrp-policy-24oct99.htm

4a(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

the section 4c you pasted relates only to section 4aii, you also have to be in breach of 4ai and 4aiii for it to held a breach of the udrp.

4aii in isolation does not make it "illegal" to register domains for resale.

 

[mole]

As a sensible practice, its always good to put some relevant content up for your domain name. That gives you a couple of brownie points to take with you in case the need arises.

 

[Capt. Flash]

You may be somewhat correct. I am not an attorney, I however have been advised by a very highly regarded firm that in their opinion "buying domain names for soley for resale is not a safe venture" and that "there are several legal dynamics involved" including "bona fide use". I am not going to get into a contest with anyone over the issue. I would advise anyone to tread very carefully relative to the issue and seek comptent legal advice. There are certainly no absolutes to the issue and WIPO decisions are certainly not 100% either way. A good attorney could make a case either way. So it would be arrogant to state yes or no. My original point was that legitimate use of this site could come into question if a theoretical legal action came about due to the lack of a simple trademark application. Good Luck.

 

[NameBox]

Thank you StockPilot and safesys for an interesting and informative discussion!

Mention has only been made of ITU or trademark applications / rights holders in the USA.

What is the situation for companies with certain usage rights within other countries? For instance a EU based company with a legal identity (corporation, SA, etc.) which operates under one name, which may have a conflicting trademark in the USA, etc.

After all, there are MANY different trademarks granted per given term. Quite a few "Amazon" trademarks, etc.

Jurisdiction must be of some importance. Or does WIPO look at availability of (say) a co.uk, and deem that appropriate for a UK based company, thereby forcing it to relisquish a .com to a complaitant ....

Same way a USA based company may not have similar rights to a .co.uk, .de, etc.

 

Stockpilot, there is a big difference to a blanket statement that domain selling is illegal (which is absolutely incorrect) and referencing a single case where that *particular* registration may be illegal due to additional factors as already outlined.

Its not arrogant to state that, its simple fact.

 

[Capt. Flash]

Whatever, be assured there are no absolutes. Nor did I intend any. I have had some verifiable experience in these matters, having successfully defended myself in a WIPO petition (http://arbiter.wipo.int/domains/decisions/html/2001/d2001-1019.html). I have several US Trademarks, including; Stock Pilot, eAirways, Jet Alliance, AllianceJet, Charter Allinace, Alliance Charter. I am currently involved in two different lawsuits with major corporations pertaining to domain names and trademark rights that have cost me over 50,000.00 to date. I am on the phone virtually daily discussing trademark rights and domain name issues with my attorney's. I can assure you and anyone reading this forum that passive holding of a domain name is not a bona fide use, therefore, a legitimate argument can and has been made in past rulings that a domain name held without a bona fide use is considered registered in bad faith and not a legitimate use. Thereby, satisfying all three criteria for recovering a domain name. Again, there are no absolutes, any given panelist will give you a different ruling. There are many dynamics involved. My original point was the fact, that this forum is based on the resale of domain names and COULD be used by a panelist as an additional reason to make a ruling unfavorable to the domain name holder, when he had not filed a trademark application or posses verifiable common law rights. Please understand that I deal only in facts and not on a personal plane. I am no expert by any means, that is why I depend on legitimate legal advice.

 

If someone registers a domain name devoid of trademarks (registered or common law) purely for resale there is absolutely nothing illegal in doing so.

If trademarks do exist then it becomes a different arena entirely as trademark stenghts then come into play along with a whole host of other variables.

It is only the infringement of the rights of others that causes the domain to fall under the realm of the udrp/acpa/etc and it is at that stage that the circumstances of registration are examined by the panelist/judge.

Udrp decisions certainly do vary from panelist to panelists and even case to case - but that doesn't mean that this has in any way made domain selling an illegal activity in and of itself.

 

[NameBox]

Originally posted by StockPilot
My original point was the fact, that this forum is based on the resale of domain names and COULD be used by a panelist as an additional reason to make a ruling unfavorable to the domain name holder, when he had not filed a trademark application or posses verifiable common law rights.

I would have to agree in part with StockPilot here. No active usage of the domain, or connection to a legal entity (i.e. corporation of that name, etc.), could be considering as indicative of non bona fide use, or simply "parking" the domain in the expectation of a future sale or solicitation.

Anyone care to comment on my earlier post of rights holders (trademark or common law) in other jurisdictions opposing USA claimants?

 

Stockpilot...just want to say thanks for the information you've posted here...very good stuff. I hope the litigation you're currently involved in has a favourable outcome.

Miles

P.S. Safe, you've also made good points, as always.

 

to clarify, I agree that passive holding and offering for sale a domain where there is an alleged tm infringement is not a good base from which to mount a defense.

But, it's not the act of selling a domain that's illegal, it's selling an infringing domain.

 

[NameBox]

Safesys,

What are you thoughts or experiences regarding the .com vs. other .tlds issue, especially other national .tlds.

(can't I get anyone to address this issue)

 

if they have a trademark in their own locality, they would have legitimate interest in the domain name (which would answer any argument of squatting) - this *should* be enough to counter any claim, but its not black and white and money talks if it goes to court and it could still be a dice roll at udrp with its lack of appeal or review process.

 

[NameBox]

Seems like if you have the money to bully another party ... odds are in your favour ....

Then the jurisdicational issue applies as well. Any cases, safesys, of EU companies sueing or countersueing a US party after a dispute?

If a court process is used, where does the jurisdiction lie ...