how can we get our domain?

[Dloganesq]

Makes you wonder about a lot of the "no brainer" decisions, doesn't it.

You can pose a really tough dilemma in your brief and think, "Now, I'd like to see how the decision is going to get around that", and the way they do it is by ignoring the issue.

You are so right. You can pose a really tough dilemma supported by both facts and "law" (used loosely in the context of UDRP matters) and STILL end up with a decision from left field based on cherry-picked facts supporting that Complainant actually sustained their burden of proving all 5-6 elements of the policy requirements. I am all for the transparency that DNQuest.com mentions above. If the briefs and evidence submitted were open to sunshine, it might encourage more careful methodical deliberation on the part of panelists. A system like PACER would be helpful. And since the UDRP system is primarily electronic, you'd think it wouldn't be tremendously difficult to set up...

________________________________________
Deborah A. Logan, Esq.
Intellectual Property, Internet & Technology Law
Email: [email protected]
www.DomainLegalCounsel.com

 

[PalmBeach]

In this internet driven world why doesn’t the USPTO incorporate a domain search into their Trademark Registration requirements?

You would think a domain name availability search would be just as important as a trademark and trade name availability search when registering a trademark.

People who registers trademark with out doing their do diligence to find out if someone owns the domain name are at best incompetent. Or are they clever foxes.

-- Strick Corporation v. James B. Strickland, EDPA (27-Aug-01)
It is clear that nothing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders. To hold otherwise would create an immediate and indefinite monopoly to all famous mark holders on the Internet, by which they could lay claim to all .com domain names which are arguably 'the same' as their mark. The Court may not create such property rights-in-gross as a matter of dilution law. ... Trademark law does not support such a monopoly.

 

[fab]

Now, there’s a $64 million question. I’m assuming you are referring to the treatment of such trademarks in a UDRP dispute. At the risk of oversimplifying, it is very difficult to know how an unregistered trademark will be treated by a single-member or three-member panel of WIPO or NAF.

Thanks for the post Deborah, and it's nice to see another lawyer here.

You have basically strengthened my point, and the outlook of members here who refer to TM, as a registered TM. How can someone say they have a TM, on something as iffy as what you've written.

I’m assuming you are referring to the treatment of such trademarks in a UDRP

Generally, but Cyber-Squatting cases reach regular courts as well. I personally was threatened with a lawsuit based upon Common Law trademark. The complainant fortunately removed legal action and agreed to buy the domain from me.

 

[jberryhill]

If the briefs and evidence submitted were open to sunshine

The problem there is the presence of a lot of proprietary information.

Someday I should get around to obtaining consent to release a few dozen selected UDRP responses, but it's on my "get around to it" list, which is huge.

 

[harleyx]

Makes you wonder about a lot of the "no brainer" decisions, doesn't it.

You can pose a really tough dilemma in your brief and think, "Now, I'd like to see how the decision is going to get around that", and the way they do it is by ignoring the issue.

That's funny. That's EXACTLY what politicians do everytime they answer unscripted questions.

 

[DNQuest.com]

The problem there is the presence of a lot of proprietary information.

John, would it be possible to obtain the information under the Freedom of Information Act?

 

[dominator]

Does your trademark predate the registration of the domain?

No it does not.


Is the current use conflicting with your trademark rights?

He has it parked, so I would have to say no.

he lives in a different country

it is not YOUR domain, it is HIS domain

(and i guess you have not registered the TM in his country)

 

[DNQuest.com]

(and i guess you have not registered the TM in his country)

Many times, it is not neccessary to register a TM in every country in the world to be afforded protection. Many countries do honor other countries TMs and copyrights. Additionally, in UDRPs, you only need to show rights or greater rights to a name. Still there are other factors that are involved, but you get the jist.

 

[dominator]

People who registers trademark with out doing their do diligence to find out if someone owns the domain name are at best incompetent. Or are they clever foxes.

they are potential hijackers

anyway, it is not uncommon that several companies in the world or even in the same country use the same company name (if incorporated in different states/provinces) or same trademark (for a different classes of products)

but there is only one .com domain
so obviously they all cannot have it
only the first one

 

[jberryhill]

John, would it be possible to obtain the information under the Freedom of Information Act?

No. UDRP providers are not government agencies. Even if they were, FOIA does not extend to proprietary information submitted during the course of an agency proceeding.