Domain sale page content and it's legal implication.

[Silverwire]

Originally posted by Success
Yes, I know Mr. Berryhill is trying to help.

Success, it appears you may not be aware that Mr. Berryhill is not just a member here, he is a highly respected attorney in the field with solid experience.

Apparently he his NOT an expert on the price of coffee.

 

[dkny]

Originally posted by jberryhill
The point is that you do not need to let "potential buyers" know you are open to offers. This is the planet earth, and communism has not been popular here for a while. If you have something, and someone else wants it, they can generally figure out what they might do to get it. I do not know anyone with an appreciable number of domain names who does not receive offers to purchase names from time to time.

Thank you for sharing your expert opinion.

I have a different point here. I have this domain name CarInfo.com (not real), I put up information about cars. Six months later, Car Information Network (not real), e-mailed me offering to feed data to my site for free. The company also owns CarInfo.com.au, CarInfo.com.sg (not real). So, I asked if they want the .com, give me an offer. The chairman offered $3500 for the name.

Well, even though they own .com.sg, .com.au, they would never thought of buying the .com version.

 

[jeffpugh]

I have been doing this for 5 years.

My advice:

NEVER have a page that says a name is for sale.

J

 

[dkny]

Originally posted by dkny


Well, even though they own .com.sg, .com.au, they would never thought of buying the .com version.

My question to Mr. Berryhill is whether it's risky to send e-mail to these people (about 10 of them) who have similar name or might be interested in the name.

Will it get the domain owner into trouble if these companies file domain dispute even though the domain is generic such as CarInfo ?

Thank you

 

[Success]

Silverwire, I know Mr. Berryhill is a highly respected attorney in the field with solid experience.

I speak with respect to everyone whom I encounter and it does not matter if the person is a well known attorney, cleaner or a waiter in a café. Respect and basic courtesy should not be given based on the person's background. I do not speak differently to different people by judging on their background.

I know Mr Berryhill is trying to help. Maybe it's just my opinion from the manner of the language used in the posts. I apologize if my earlier post is offending.

 

[jberryhill]

"Do you count sending a personalized email to the correct person who is in charge of website or domain administration as spam?"

I consider all unsolicited email proposing a commercial transaction to be unsolicited commercial email, yes. Even if the sender knows my name. Sending emails of this type - i.e. offering to sell domain names to people whom you suspect might have an interest in the domain name because it is similar to a name they are already using in business, is begging for trouble.

"You don't give me the impression of someone friendly."

Oh well. Wait until you meet a lawyer who is not interested in volunteering his time to discuss issues of interest to domain name registrants. I guarantee you, that lawyer will make me seem downright lovable.

The original point here, which was the only one I wanted to make clear, is that I thought your question was what to put on a "domain sales page" - which I interpreted to mean a page you wanted to use for domain names that were for sale. Simply saying, "I reserved the domain for future use" doesn't really change much as far as the average UDRP panelist is concerned.

The bottom line is that some panelists think domain speculation is an horrific evil, and some don't. What makes someone a cybersquatter is a bad faith intent to unfairly profit by registering someone else's trademark as a domain name. That said, even where there is no such intent, there is no substitute for being able to document what you had in mind, by reference to objective materials, when you registered the domain name. Referring to vague "future plans" has in several cases merely raised the skept-o-meter as far as some panelists are concerned, because such explanations are often considered to be more of a post-hoc rationalization.

It's not a friendly world.

 

[Success]

I get your point. Thanks for the info regarding the danger on "future plans" part. I have been reading materials on UDRP. What you said is good advice.

 

[options]

I don't think that offering one or more names that are closely related to a potential buyer could cause a problem.
There is no business without communication, someone has to make first step, but if you are very concerned, you should first ask if they would like to hear about your proposal, not naming any product.

Fax and ground mail are even better ways to be sure that someone actually reads your message.
After all, we all recieve a huge amount of spam every day in our house-mailboxes.

In any case, with developed generic-name site, especially with traffic, there is almost no way for someone to legaly take it out of you .

 

[jberryhill]

One of the reasons why general suggestions are risky is that some folks have a peculiar notion of what the word "generic" means in trademark law.

A generic term is one which is incapable of serving as a distinctive indicator of source or origin of goods and services, because it is in fact the name of the goods and services. A good way to figure out whether something is "generic" is to try to describe that something without using the word itself.

"apple" is generic for apples. It is not "generic" for computers.

Many domain name registrants will take a term which is actually more on the "descriptive" side of the line, and believe it to be "generic". There is a significant difference here, because "descriptive" terms can indeed become distinctive through long-standing exclusive use, or by consumer recognition based thereon.

And here is a point where domain name disputes run counter to normal thinking about the relative strengths of trademarks. Moving up the scale of strength from "descriptive" marks, and "suggestive" marks, one reaches the area of "arbitrary" marks. An "arbitrary" mark is a word, such as "apple" above, where it is indeed a word, but it is applied to something having no connection to the primary meaning of the word. For example, "shell" for oil, "pledge" for furniture polish, etc. In the normal TM world, "arbitrary" marks are stronger than "descriptive" marks (because the application of the word to the goods or services is, well, arbitrary).

Now, faced with a challenge of <word>.com by a TM holder of an arbitrary mark for <word>, the obvious defense is to determine whether the domain name registrant can show that their reason for registering <word> arose from the primary meaning of the word, and not from its trademark usage.

But what some people don't seem to get, is that faced with a challenge by a TM holder who is claiming rights in <word> as a descriptive mark which has acquired secondary meaning, then the "primary meaning" defense DOES NOT WORK. The reason is, in the case of the descriptive yet distinctive mark, the primary meaning of the term is intimately bound to its meaning as a trademark. Hence, making the *same* argument will be more likely to result in a loss for the domain name registrant.

Is "carinfo" generic? Without some digging around, I wouldn't venture a guess off of the top of my head. What is it generic for? Automotive information? No, "automotive information" is generic for automotive information. One might do, for example, a google search and see whether a substantial number of hits refer to one particular source of goods and services for the term, but that is only one of many things one might do.

using "furniture polish" as an example, and running up the scale from "generic" to fanciful, most trademarks fall into one of the following categories of "strength".

"furniture polish" - generic, cannot be a TM

"Dust Wiper" - descriptive; might be a TM, might not

"Shiny Wood" - suggestive (for furniture polish), the polish is not, itself, "shiny" wood

"Pledge" - arbitrary, it is a word, but has nothing to do with furniture polish

"Furn-o-Slix" - fanciful; it is not a word and has no meaning apart from its use as a trademark

 

[options]

Agree 100%. Indeed, necessary to spell this out.

 

[Silverwire]

Mr. Berryhill:

Thank you for giving your time and advice in such a generous way. I have book marked your site www.johnberryhill.com

What if I am sitting on a domain name that is not fanciful (unique made up term) and have shown no bad faith? Am I at risk of losing the name? I remember reading 3 tests for bad faith. Don't remember them exactly, but they included things like trying to sell to the TM holder, using the website in a way to confuse visitors that I am the same company, or in a directly competitive way.

Let's use the example of "pledge". Not "PledgePolish.com" or anything else suggesting or describing household cleaning products, just plain old English dictionary word “pledge.com. If I owned it, perhaps I would want to develop it one day as a site for people to pledge donations to a cause or to make promises to other people, or as some sort of patriotic site reminiscent of the Pledge of Allegiance, or anything else not related to any existing trademarks. I have taken no concrete steps to develop yet, or I am speculating that one day I can sell it to someone who does not CURRENTLY own a trademark on "pledge". (I won’t ask you here about trademarks after I have registered the name as I suspect it is an entire issue in itself.)

Am I violating the trademark holder's rights? Is it true that I have to show development progress within 3 years of registering the name? What would give Pledge furniture polish any more right to take away my name than any of the other legitimate holders of the term "pledge"? If I show no bad faith, am I safe?

Thanks,

Gary
ChatFaces.com

 

[options]

Originally posted by Silverwire
www.johnberryhill.com

Are you sure this name cannot be taken from you?
Hmm.

 

[jberryhill]

"What if I am sitting on a domain name that is not fanciful (unique made up term) and have shown no bad faith? Am I at risk of losing the name? "

-----------

There is no single simple answer to that question. In a situation like this, then the covetous TM owner is, if they are any good, going to do some other things. For example, they are going to find out what other domain names you have registered, and then they are going to cherry-pick that list for any and all domain names which also, incidentally or not, correspond to trademarks. Then, they will claim you are engaging in a pattern of registering domain names which correspond to trademarks.

They are going to masquerade as someone interested in the domain name and send you a message saying something like "I am interested in acquiring the domain name, how can I do that?" The message, you will note, will say NOTHING about PAYING for the domain name. In fact, it will be very carefully worded to avoid any explicit suggestion that they would buy it. But, because you are a wishful thinker, you will interpret it that way, and then they will say you tried to sell it to them.

They will carefully examine your whois data for any outdated, incorrect, or downright stupid false information you have put in there. They will argue that you have used false contact information in an effort to conceal your identity.

Then they will file a UDRP. You will shoot yourself in the foot by failing to follow the rules to the letter, or by failing to structure your argument in a way that makes sense to a panelist who knows absolutely nothing about either trademarks or domain names. For example, many NAF cases are decided by a retired traffic court judge.

You will fail to opt for a three-member panel. By doing so, you will throw yourself on the mercy of random selection in a deck that is stacked against you, and you will thus forego the opportunity to select panelists who understand that speculation in generic terms is perfectly fine.

You will not cite any of the ACPA or UDRP prior decisions which support the proposition that speculation in generic terms is perfectly fine, despite the fact that the attorney on the other side has cited default cases which have gone the other way. In fact, you will fail to point out how many default cases the other side has cited.

Can you lose the name? Certainly. Simply follow the steps above and you will probably lose the name.

 

[Silverwire]

Thanks Mr Berryhill!

I hate to tax your time and generosity, maybe someone else has a good answer to this. Earlier in this thread, dkny said:

If you did not do anything after 3 years of registeration, or worse than that you put up ads for cosmetics products those belong to Ponds' competitors, you'll more likely to lose the case.

This is the first I have heard about this 3 year test. Is there much substance to it?

 

[Drewbert]

>If you have enough money to offer, you can buy my left leg, but I don't walk
>around with a "for sale" sign on it.

So if I find a buyer, what commission are you offering?

 

[Drewbert]

What REALLY frosts my weiner is when a TM holder who's TM is a dictionary word attempts to steal all gTLD's of that word, based on "we do nnn billion of business a year". Like TM's are more important than the English language.

REALLY annoys me.

Especailly when the current holder ISN'T infringing them in any way, shape or form.

 

[Drewbert]

And I was really hoping that by now someone would have sued NAF in federal court for breaking the UDRP rules by allowing the complainant to reply to the respondent's submission.

 

[jberryhill]

"This is the first I have heard about this 3 year test. Is there much substance to it?"

No. There is no "three year test". In fact, there are few "yes" or "no" questions. While it may drive people up the wall that lawyers answer every question with "it depends", there is a lot that comes after those two words.

The way these things develop is a little different from case law where there is an appellate system to resolve differences among individual panelists and how they approach UDRP cases. For example, in case A, the panelist said there was no legitimate interest because the domain name was not being used. Then, in case B, a panelist distinguished case A because the domain name had only been registered a couple of weeks before the dispute, saying, "In case A, the domain had been unused for X years".

Given the distinction that was made between case A and case B, there are panelists who have a predilection for trying to develop black & white rules, and who have referred back to that distinction. There are other panelists who don't even bother to look at how long the domain name was registered.

The main thing is that there are a LOT of default decisions where the panelist feels compelled to transfer the name, but also feels compelled to put forth some reasons for transferring the reasons. Some of this reasoning in default cases gets recycled, and some panelists simply cut & paste from previous defaults, giving the impression that some important "rule" has been developed.

Then, along comes a case like milesandmore.com, where the domain name was not used since registration back in 1995 or 6. But the Respondent bothered to answer the complaint and explain that the same reason why he registered the name - out of an interest in hiking and outdoor activities - was the very same reason why he had contracted Lyme disease and hadn't done much of anything, much less develop a website, for quite some time.

But trying to boil down all of the potential relevant facts and circumstances as to why a domain name may or may not be used, and come up with a "3 year rule" is a pointless exercise.

And, please, if I do not respond to something in this forum, do not take it as agreement or disagreement with any particular proposition. There are only so many hours in a day, and most of the answers are not as simple as some of the questions.

While it's on my screen, let's take up that "someone" who should have sued NAF for making supplemental rules which go beyond the UDRP rules. I completely agree that the NAF should not have the ability to effectively derail the intended rules which were for a complaint and a response. But I have yet to meet these mythical folks who want to put food on my table while I spend months pursuing a lawsuit in which the only relief sought is equitable, rather than monetary. There are also some significant hurdles that "someone" would have to overcome, such as the indemnification and "hold harmless" clause in the domain name registration contract.

Then again, when the ICANN UDRP Review Task Force published a questionnaire seeking input on areas for reforming the UDRP and the UDRP rules, and when I looked at the survey responses, I had to scratch my head and wonder where all of those "someone"s manage to run off and hide when presented with a free opportunity to provide some input.

Try this exercise. Go the WIPO or NAF site and take a range of UDRP cases. From that sample, pick out the "dictionary word" cases. Of the "dictionary word" cases, pick out the ones where the Respondent bothered to file a response (and if you pick tonsil.com, throw that one out, because that respondent might have been better off not responding, than by acting like a weirdo). Also, throw out the ones which has false contact data. Let me know what kind of win rate you find at the end of this exercise.

Heck, even among ALL disputes, where the respondent bothers to file a response, and where they elect a three member panel, domain name registrants win the MAJORITY of UDRP cases (see Mueller, _Rough Justice_). The .biz STOP cases have been a hands-down rout for Respondents (more at WIPO than at NAF, though), especially in the "dictionary word" cases.

But, do I have any sympathy for people who register typo's of "yahoo.com" and then go crying about how the system is unfair. No. It is people like that which make it hard for honest folks.

 

[Ari Goldberger]

My view is that you never should be perceived as offering domain names for sale. So, I would not recommend placing a message stating a name is for sale.

From a business point of view, you are better off from a negotiating position if you are not seen as a motivated seller. From a legal position, even if you have the right to sell it, a trademark owner still may use this as evidence of bad faith. The safest course of action is simply to post your contact information for inquiries of any sort. If a buyer is interested in purchasing, they will come to you. When they do, let them know about your general plans, but tell them they can make any offer they would like that you would consider.

 

[DryHeat]

Its nice to see you here.

Remember, a few months ago, you responded to a "C&D" type letter from Disney re. one of my "generic" domain-names...Guess what? Never heard from them again (at least so far).