How to seek transfer of a cybersquatters domain

[CyrusL]

Hey All,

I've got a client who is on TV regularly and has had her fullname.com registered in bad faith and parked. She is currently using fullname1.com as her website but I'm not too fond of it. To give you an idea of popularity, overture shows 5000 searches on her name in March.

What is the best route for getting the domain back? Obviously a UDRP would get it done, but is there a most popular order-of-operations for these things? I'm hesitant to contact the registrant without having a battle plan. Some ideas:

1. Contact the registrant and offer to buy the domain and do it if cheap enough (not likely).
2. Contact the registrant with a threat to file UDRP if the domain isn't transfered.
3. Pay a lawyer to contact the registrant with lots of legal jargon.

I've got some more questions I could ask, but if anyone has some general advice before I get down to specifics that would be great, thanks.

 

[jberryhill]

3. Pay a lawyer to contact the registrant with lots of legal jargon.

That's not the only thing lawyers do.

The appropriate course of action can depend on who is the registrant, among other things.

My first question, since you mention that you are looking at this on behalf of your client, is, "what does your client want?"

 

[CyrusL]

My first question, since you mention that you are looking at this on behalf of your client, is, "what does your client want?"

She wants the domain but doesn't see that much value to owning it, and doesn't have much of a budget for this. That's why I would try to exhaust all free or at least relatively inexpensive options before hiring a lawyer to actually file the UDRP.

As for the registrant, googling him doesn't provide much info and I don't think he's a very big time domainer.

Actually, damnit I just found his name on arbforum.com where he failed to respond to the complainant and lost another fullname.com. Does this help or hurt my situation?

Is there anything else I could answer to help explain things? Thanks.

 

[Steen]

Actually, damnit I just found his name on arbforum.com where he failed to respond to the complainant and lost another fullname.com. Does this help or hurt my situation?

Helps significantly.

 

[Dave Zan]

2. Contact the registrant with a threat to file UDRP if the domain isn't transfered.

Just a suggestion: try to make a polite but firm threat.

If the person doesn't reply, that detail you found at NAF can help if you do go
the UDRP route. NAF still seems cheaper than WIPO, and NAF's supplemental
rules say they (finally) reimburse a partial fee.

 

[jberryhill]

Actually, damnit I just found his name on arbforum.com where he failed to respond to the complainant and lost another fullname.com. Does this help or hurt my situation?

It helps to the extent that the person probably wouldn't respond in another case.

There are some people who simply don't respond to anything. They figure they'll keep making money off of the domain name, and if they lose it in a UDRP then it's no skin off of their back.

 

[Deleted member 5660]

You need a trademark to file a UDRP. It is not clear if you have that.

 

[Deleted member 70408]

You need a trademark to file a UDRP. It is not clear if you have that.

BruceSpringsteen.com, TomCruise.com, EliotSpitzer.com...etc... I don't believe those are TM.

 

[Deleted member 5660]

here is a link to info on when personal names are trademarks:


http://www.wipo.int/amc/en/domains/search/overview/index.html#16

 

[jberryhill]

NAF's supplemental
rules say they (finally) reimburse a partial fee.

They reimburse some of a complainant-requested 3 member panel fee if the respondent defaults and the complainant decides to switch to a single member.

A complainant that requests a 3 member panel is too stupid in the first place, IMHO.

 

[DNQuest.com]

BruceSpringsteen.com, TomCruise.com, EliotSpitzer.com...etc... I don't believe those are TM.

Why not? (hint, they are TMs, but being used in good faith)

 

[jberryhill]

Eliot Spitzer, IMHO, was a reach. He's a public figure, and the rules there are somewhat different.

Arnold Schwartzawhatever - the governor of CA - had an interesting problem a while back. Someone was making figurines depicting him as the governor of CA, and he attempted to stop them using his personality rights claims. The court nailed it - if your goods consist of commentary on AS the political figure, that's fine, but if your goods trade on his reputation as the actor, then that's not okay.

 

[Deleted member 70408]

Why not? (hint, they are TMs, but being used in good faith)

Sorry... I was implying that they weren't exactly "Trademarks" in the traditional sense, but the names were awarded to the complaintant nonetheles.

 

[DNQuest.com]

Sorry... I was implying that they weren't exactly "Trademarks" in the traditional sense, but the names were awarded to the complaintant nonetheles.

Actually, Bruce Springsteen lost with a split panel
TomCruise won

They are TMs, they use their name in commerce, that has been long upheld.

Eliot Spitzer is a political figure, that is a tough one and I don't think is resolved yet.

 

[Brett Lewis]

Use of a politition's name as a politician is not use in commerce. Without use in commerce, there are no trademark rights.

And no -- taking bribes does not count as use of a trademark in commerce, although politicians like Arnold or Hillary Clinton can develop trademark rights in another capacity -- e.g., as an actor or author.