Domain UDRP/Trademark questions - help needed please

anony · Nov 28, 2004

Hi,

We are in an Asian country, and our domains are registered with a US based registrar.

Few of our domains have the name of some other company (lets say name of other company is = XYZ and their website is XYZ.com) included in them.

If the other company (XYZ) sells insurance, and if our domains are for example such as:

XYZinsurance.com, XYZautoinsurance.com, XYZcarinsurance.com, XYZlifeinsurance.com, XYZcar.com, XYZauto.com, XYZlife.com, XYZdental.com, etc.

We do not have any website but only parking pages for these domains at domain parking services such as fabulous/DS/Trafficz etc.

Questions:

1. Are we violating their trademark XYZ if XYZ just sells health insurance?

2. Are we violating their trademark XYZ if XYZ just sells auto/car insurance?

3. Are we violating their trademark XYZ if XYZ just sells life insurance?

4. Should we just give the domain back anytime we get an e-mail or letter from XYZ saying that we are infringing their trademark?

5. If answer to questions#4 is YES, then is it OK (or safe) to ask for some expenses for giving the domain back such as $35 per domain to cover for registration etc?

6. If answer to question #4 is NO, then should we just ignore their emails/notices?

7. One of the company has sent us the UDRP notice from "national arbitration board, (website is www.arb-forum.com ), what will happen if we just ignore this notice?

8. Is this 'National Arbitration Board (i.e. www.arb-forum.com)' even legally able to impose their decision on non-USA based domain registrants?

9. Can we just respond to this notice (to the arbitration board and the comapny) by offering the domain to them for just mere cost of $35? Will that violate any rules or put us in more trouble? Or should we just offer the domain to the company free of cost and will the matter be closed then?

10. Any other helpful suggestion what we should do differently to help protect our domains or to avoid any trouble with litigation?

Thanks a lot for all your help.

All comments are very much appreciated.

PS: Lawyers on this forum, please help out with your comments. Thanks!!!

Regards,

Anony

jberryhill · Nov 28, 2004

domain parking services such as fabulous/DS/Trafficz

Hence, one might assume that most of the advertising is directed to companies in the US. Given that the domains are registered in the US, and if a US parking service is used, such that the revenue is derived from activities in the US (except for fabulous, which I believe is in Australia), then your presence in an Asian country is pretty much irrelevant to the fact that you are conducting business in the US.

Trademark disputes are fact-intensive, meaning that a lot can hinge on just exactly what "XYZ" is, among a lot of other things. So, this is not legal advice intended for you to rely upon in your particular situation.

In general, assuming that XYZ is a trademark for insurance services, then the answers would look like:

1. Most likely.

2. Most likely.

3. Most likely.

Trademark rights arise through consumer perception of the source or origin of goods and services. There is a company in the US called "Geico" for example, which spends an awful lot in advertising auto insurance. I don't know offhand whether they sell other kinds of insurance, but it is a sure bet that if I saw "Geico Dental Insurance", then I would assume it was being offered by the same people.

4. Probably not. Simply giving the domain to them does not operate to release you from any potential liability claim they might have against them.

5. That can depend on how much you charge for "etc."

6. n/a

7. The NAF will appoint a panelist who will, most likely, order the domain name transferred. That is not an order to you, but it is a requirement of all registrars to transfer domain names in response to a UDRP transfer order (with some exceptions that don't apply here). The decision will be published, and henceforth whenever someone files a UDRP complaint against one of your domain names, they will refer to this decision as establishing a "history" of cybersquatting on your part.

8. Yes. The UDRP is included in your domain registration contract.

9. This part is a mess. The domain name is locked by the registrar when the UDRP complaint is filed. So, you can't transfer the domain name to the complainant even if you want to. In order to transfer the domain name, the NAF has a somewhat convoluted procedure for ordering a suspension and allowing the registrar to transfer the domain name. Ask your case manager for help.

10. That depends on way too many specific factors for an answer of general utility on a hypothetical basis.

anony · Nov 28, 2004

John,

Thanks a lot for your detailed responses.

I forgot to ask few other questions. Please help us with:

11. Do we have to pay the arbitration board (for UDRP participation) fees also in order to respond/participate in the UDRP?

12. How often the UDRP fees are recovered from the defendent (i.e. domain registrant)? Are those fees a lot?

I am thinking why bother with all this mess in future, just offer the domain back when we get this kind of notice/e-mail in future?

PS: I also wonder how the domain (XYZinsurance.com) which is registered by some other person/company for past 2 years is never recovered by XYZ company when they filed UDRP against our domain which in a totally different category that XYZ does not even sell insurance in? How can that registrant protect his domain for that long? May that be because they are not in USA and they are also NOT using a US-Based registrar? In other words, does it help to transfer your domains to a registrar out of USA when you are already located out of USA?

Thanks again Sir.

Anony.

jberryhill · Nov 28, 2004

11. No.

12. UDRP fees cannot be recovered in a UDRP proceeding. It is possible for the complainant to win the UDRP in order to obtain transfer of the domain name, and then to pursue an independent legal action to recover damages.

On the questions in the P.S. - it is entirely up to the trademark owner to decide against whom to enforce its mark.