DNForum.net !

this site might help you namebox:

http://www.udrplaw.net/UDRPappeals.htm

 

[Who-Wiz]

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

I thought this story from Demys.com was very interesting.

Kevin Spacey finally wins domain
http://www.demys.net/news/02_aug_15_spacey.htm

In this instance, the domain name "kevinspacy.com" (different spelling) was the subject of an attempt for retrieval from John Zuccarini. Of note, is the fact that Zuccarini attempted to put a quick "fansite" subsequent to the filing under the UDRP.

The lawyers had to prove three distinct points:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name;
(3) the domain name has been registered and is being used in bad faith.

He'd originally used the domain to drive traffic to the domain "celebrity1000.com".

From Demys:

It was noted that the respondent had made "persistent registration and [had made] use of famous names and marks in the past" and thus it was likely that the domain had not been registered as a genuine fan site - merely to trade off the actor's name and drive traffic to a commercial site.
Therefore Spacey won on all three points and the domain was ordered by the panelists to be transferred to him.

Read the article for more details. But, "Kevin Spacey" was understood as a "Common Law" trademark.

Also, check out how the FTC sued Zuccarini:
http://www.demys.net/news/02_May_27_zuccarini.htm

It's interesting that the stink is made so clear with domain names, and yet there is a HUGE scam going on with long-distance dial-in service numbers. Many "mis-typed" "call collect" numbers have been snapped up by scam artists to run horrifically more expensive services than their counterparts (eg. 1-800-COLLECT [1-800-265-5328] might have a counterpart of 1-800-265-4328). From what I understood, these people have yet to be charged with anything, although customers who mistype may end up with hundreds of dollars in charges from Hell.

Maybe they feel the have more leverage and precidence with a system based on NAMES.

~ Dudley

 

[rapidtransit]

As a general point of this entire thread, having a registered trademark does not automatically entitle you to a domain name. I have a U.S. registered trademark of which I have the .net and .org, and I also obtained the .us on the basis of that trademark druing the sunrise period. I don't have the .com, even though I held a common law trademark on the word mark at the time that someone else registered it. I could have registered it but didn't and someone else who does not have a trademark in the name registered it in good faith for non-competing services.

I wouldn't even embarass myself by attempting to screw the legitimate owner out of the .com. If the .com is ever dropped, I will grab it for myself. If someone else grabs it for resale, I would consider filing an action if appropriate.

Of course, if this or another owner of the .com were begin to use the .com for a service in the same classification as mine, I would have an action, not only against the .com, but against the entire business as infringing my trademark, not because they have "my" .com.

 

[NameBox]

This is very much the issue in the real world rapid transit. Non-competing usage, and no confusion caused amongst consumers, etc., would be the key issue.

Of course, bad faith presupposes intent to confuse, etc., and profit from the association with another persons trademark.

So many conflicting trademarks possible in different jurisdictions, that in cases of good faith registration, one would hope that bullying tactics would fail.

 

[mole]

I agree with box. Almost every prime generic term is trademarked today in some country or another.

It is ludicrious to say that just because I have a tm, I have rights to all namespace - current and future. Speculators are hoping that might be the case, and some are registering trademarks for that sole purpose.

Good faith registration is where its at - and often the onus is on the registrant to prove it, which isn't too difficult if you think about it.

http://www.wipo.org.uk

 

[Capt. Flash]

Interesting interpretations of the posts. the discussion originally started off with the registration of DNFourum.net which is not very generic. Anyway, here is a good case study. An associate of mine has operated a news letter called FundPilot the guy is rather brilliant and has had a strong following for a number of years. He decides to start a web site FundPilot.com, a year after the launch of his web site version of his unique service, a big German firm (MLP) files a trademark application for Fund Pilot (in the same category). The associate discovers this and then files his own application. Guess who got the trademark. Even though the associate has over 30,000 paying subscribers, and has been using and known by Fund Pilot since the mid 1970's, he was advised by different law firms that he should of filed an application for trademark before the first use, because now it could be cost prohibitive to fight the German firm and a formal USPTO opposition will fail because of the "substantial use" issue. Now, the German firm has never to date ever used Fund Pilot. However, now they have the US Trademark and are demanding the domain name. Again there are qualified attorneys that are willing to take the case but are advising that the costs could run upwards of 100,000.00 before it is over and there is no guarantee, also advising his case is weak due to the Germans filing first. I think it is pretty clear the Germans acted in bad faith. But like my man sys said, it is about the money. The point is that bad faith or good faith a good lawyer with a bank roll behind him can make the case either way. If you are serious about your business get a trademark.
The facts are verifiable www.USPTO.gov

 

[mole]

Originally posted by StockPilot
If you are serious about your business get a trademark.
The facts are verifiable www.USPTO.gov

What happens if you have tens of generic names and you need to protect them, Pilot?

 

[rapidtransit]

Several points with your Fund Pilot example. Are you trying to reinforce the idea that a trademark owner gets the domain name, too? There's quite a bit of experience to say that's not so, but let's take a closer look at your example case. BTW, IANAL and this is not legal advice, but you knew that.

True, the German firm got Fund Pilot on an ITU. Ordinarily the USPTO will not issue a registration, they will issue a Notice of Allowance. This means that your registration is provisionally approved, but you have six months (IIRC) to actually use the mark in commerce, and then you can file an Amendment to Use and get the registration.

However in this case, the German firm already held the mark in Germany, so this gave them a leg up in registering the mark in the US on the assumption they would be offering the same service in the US as already provided in Germany.

But does this give them the domain name? No, they don't have stockpilot.com, at least not yet.

When (if) this goes before WIPO, the German company must still show the elements necessary to grab the domain. I assume the number one thing they will argue is bad faith. Why? Look at the timeline:

-- 4 Feb 2000 - MLP Finanzdienstleistungen AG files in Germany
-- 15 May 2000 - MLP Finanzdienstleistungen AG gets the German mark
-- 21 Aug 2000 - The .com is registered by the US party.

Did the American dude see the German service and decide that was a cool name and grab the dot com for himself, three months after the TM was registered in Germany? I have no way of knowing. But if I were the German firm, that's probably how I would argue my case. Who will win? I don't know that either. But my point is the case is more complex than your overview suggested.

As to big guys stealing marks from little guys, consider Ty Warner, who tried to get the nice two-letter domain name TY.COM from someone who already had it. Ty (Beanie Babies) is surely a famous mark, but the owner of the .com resisted and it was privately settled for an undisclosed amount, but I bet it was a lot of Peace Bears and Grunts.

And look at one of the few pure "dot com" registrations, which are very hard to get--amazon.com. They have the domain name and a gen-u-ine registered trademark on it. But do they have the dot net and dot org? Check it out.

When a big guy with a ® muscles up to grab your dot com, if he gets it easily it's probably because you were scared off by a letter from a Great Big Law Firm, or maybe you have guilty knowledge that your motives weren't 100% pure, and decide not to fight it at WIPO. EIther way, I know of cases where people who could probably have fought successfully just faded away...

 

[mole]

Originally posted by rapidtransit
When a big guy with a ® muscles up to grab your dot com, if he gets it easily it's probably because you were scared off by a letter from a Great Big Law Firm, or maybe you have guilty knowledge that your motives weren't 100% pure, and decied not to fight it at WIPO. EIther way, I know of cases where people who could probably have fought successfully just faded away...

True true.

 

Could it also be not enough money or energy or worth the effort to fight with the big guy's lawyer!

 

[rapidtransit]

Originally posted by goh
Could it also be not enough money or energy or worth the effort to fight with the big guy's lawyer!

Sure that can be. But if the domain name is important to you, if you registered it in good faith, and are using it legitimately, you can get your ducks in a row and file the responses yourself.

I think probably the biggest mistake people make is that they try to enter into negotiations with the complainant. Once you start talking money, they can turn around and use that as argument that "see, he was planning to sell it all along." Bad faith.

I have some nice domain names. If anyone approaches me for one of these names, I just tell them "We registered this domain for our own use. It is not for sale." That's the truth. So far, they have just gone away. And I like that.

 

[mole]

Originally posted by rapidtransit
I have some nice domain names. If anyone approaches me for one of these names, I just tell them "We registered this domain for our own use. It is not for sale." That's the truth. So far, they have just gone away. And I like that.

Ah, a developer :swg:

 

[Capt. Flash]

Rapid - Again, there are no absolutes, there are cases where reverse domain name hijacking have worked and failed. My point clearly was that it is possible for a person to go after the domain name by filing an USPTO. To prevent future costly problems I suggested that a 375.00 trademark application can prevent numerous headaches and expensive defenses.

The German firm did file an application in their country, but after an offer to buy the .com was made. This is their MO, once they get the German version the petition the USPTO to delete the ITU.

As I stated in my previous post the "American dude" had been using Fund Pilot since the mid 1970's. The German's knew this because they offered to buy the .com from him.

Yes, I did try to keep the overview simple, there are no lawyers on this thread. And the point I was attempting to make was general and simple. I did not realize the size of the ego's that needed stroking on the thread. I will not make that mistake again.

Ty and Amazon are generic terms found in the dictionary and have many uses that do not interfere with each other. (i.e. Amazon Beer, Amazon Fasteners...). I myself have defended WIPO action and won due to the name being generic. One more time -- the gist of my point is that DNForum is not generic and failure to file an application is an invitation for problems.

I agree with you "I know of cases where people who could probably have fought successfully just faded away..." I read the WIPO decisions daily and constantly scratch my head.
However, you fail to mention that it does not have to end with WIPO. If a well financed attorney wants the name and loses a WIPO petition they will file in a State Circuit Court then proceed to Federal Court. Not to mention filing TRO's (Temporary Restraining Order) and injunctions that add additional cost's due to the time element.(Two years of litigation squeezed into 2 months)

On your other post "But if the domain name is important to you, if you registered it in good faith, and are using it legitimately, you can get your ducks in a row and file the responses yourself." This is not good advice for State or Federal Court. No matter how pure your intentions are. Lawyers love it when someone can not afford their own attorney and have a fool for a client, if a firm has the resources to proceed in this manner, I can assure the attorney will be no slouch and will kick your butt.

Please allow me one more time to make my point. If the owner of DNForum.com is serious about this site, and he has knowledge that someone has registered the .net. He should protect himself by filing a US trademark. IT IS POSSIBLE that the person whom registered the .net could file a trademark and come after the .com. It is obvious this person's motives are not honorable. What the outcome would be in this particular theroitical situation is impossible to predict. But why leave yourself vulnerable?

 

[mole]

Originally posted by StockPilot
Please allow me one more time to make my point. If the owner of DNForum.com is serious about this site, and he has knowledge that someone has registered the .net. He should protect himself by filing a US trademark. IT IS POSSIBLE that the person whom registered the .net could file a trademark and come after the .com. It is obvious this person's motives are not honorable. What the outcome would be in this particular theroitical situation is impossible to predict. But why leave yourself vulnerable?

Because there are a lot of witnesses that Dan popularized this .com extension? Because we know Wanda May?

It will cost Dan $325 min. moolah (last time I checked) to TM this name with USPTO, and that's without a lawyer's help. But does he need to given the circumstances? This site is already technically TM'd, does Dan need an (R)?

 

[Capt. Flash]

Originally posted by mole


Because there are a lot of witnesses that Dan popularized this .com extension? Because we know Wanda May?

It will cost Dan $325 min. moolah (last time I checked) to TM this name with USPTO, and that's without a lawyer's help. But does he need to given the circumstances? This site is already technically TM'd, does Dan need an (R)?

WOW - Sometimes I am just amazed. This site is not technically TM'd. There is no substantial use. There is no income. There are only 1300 members. No one on the street knows what DNForum is. There is no ITU Trademark application on file. Even if he puts a tm on his site, it would make no difference. An R is for registered mark, this is only allowed AFTER the mark is REGISTERED. I like a little debate but please keep it intelligent.

 

[mole]

hmm...Pilot, it is obvious you don't know how UDRP and WIPO operate It's a slimy world ain't it. Go do up some reading first....

 

[Capt. Flash]

Please educate me.

 

[mole]

I can't Pilot, I'm not a lawyer. :sad:

Try Eric at http://www.tm4smallbiz.com/

He got me a USPTO (R) and in the process, I learnt a lot about this TM thingy. I am humbled.

 

the udrp is a dice roll, whether theres a tm, a response, any usage of the domain or whether its been offered for sale. There are cases that support just about every permutation either way.

with court action, its a money game as thats what buys the best attorneys and allows pressure to be applied on the lesser party for the greatest periods of time.

Its not fair, but life generally isn't.

having a tm for something that is important does make sense, its just something that might prevent a well funded bully from taking the first steps on the road to "theft" via the processes available to them.

 

[Capt. Flash]

Thanks Sys, could not have said it better, that is the exact point I tried to make all along. I never claimed to be an efficient communicator, appreciate the respectful exchange. Good luck all.