Joe's domain

[abrams1117]

Joe asked me to post this.
My advise: Give them the domain.
Comments?

------------------------------------------


E-mail message

From: [email protected] Date: Fri, Sep 6, 2002, 7:40pm To: [email protected] Subject: can you help me to post this?
Subj: Re: Legal: TOMMYS-BOOKMARKS.INFO
Date: 9/6/02 11:49:44 AM Central Daylight Time
From: Qpuzzle
To: [email protected]
CC: [email protected]
In a message dated 9/6/02 11:35:14 AM Central Daylight Time, [email protected] writes:
Subj:Legal: TOMMYS-BOOKMARKS.INFO
Date:9/6/02 11:35:14 AM Central Daylight Time
From:[email protected]
To:[email protected]
CC:[email protected]
Sent from the Internet
Also sent by registered mail.
- Charles Kramer
================== C O P Y ==============
September 6, 2002
By Cert. Mail R.R.R. and
email to [email protected]
ALL RIGHTS RESERVED
Mr. Lin Chang
Q Puzzle
810 West Pecan Street
Carbondale, Illinois 62901
Dear Mr. Chang:
I write on behalf of Thomas Lapertosa and Tommys Bookmarks, Inc.,
the company through which Mr. Lapertosa does business (hereafter
interchangeably referred to as "Mr. Lapertosa").
Mr. Lapertosa is the owner, creator and manager of the website
"WWW.TOMMYS-BOOKMARKS.COM" which uses TOMMYS-BOOKSMARKS
prominently as the name of the site._ Since Mr. Lapertosa
registered the website in 1997 he has transformed it from one of
the earliest websites to provide an organized and selected list
of links to adult websites to one the most popular websites of
any type.
Consequently, TOMMYS-BOOKMARKS is a distinctive and famous
service mark in addition to being a website domain name._ Because
the name of the website is based on Mr. Lapertosa's first name,
and because its contents are reviewed and changed daily to
conform to his personal quality standards, TOMMYS-BOOKSMARKS is
intimately and inextricably tied to the reputation of
Tommys-Bookmarks as a business, and to Mr. Lapertosa's reputation
personally._ TOMMYS-BOOKMARKS is also protected as a service mark
by a pending federal application in the U.S. Trademark Office
(Serial Number 76/384221).
Mr. Lapertosa recently learned of your website
WWW.TOMMYS-BOOKMARKS.INFO which has the following
characteristics:
*_ Its URL is identical to the one used by Mr. Lapertosa -- only
__ the top-level domain (.INFO instead of .com) is different._ In
__ addition it uses TOMMYS BOOKMARKS.INFO as a service mark in
__ banner form on the top of the page.
*_ It openly represents itself as being associated with Mr.
__ Lapertosa's website in that it contains the following link to
__ his site: "To the poen master site: Tommys-Bookmarks.com"
__ [misspelling in the original]
*_ It invites visitors to "submit a cool site" for "decent free
__ cyber sex" -- which is similar to the invitation to submit
__ links on Mr. Lapertosa's site.__ It also contains a link to
__ http://recommendasite.com/bps1.htm which claims to be the
__ "best porn site" but in fact offers little, and does not meet
__ the standards that Mr. Lapertosa demands of links on his site.
*_ It contains links to gambling sites -- offering games of
__ chance that risk the loss of money.
This indicates:
*_ You registered the domain WWW.TOMMYS-BOOKMARKS.INFO in bad
__ faith, and use it solely to usurp and profit from business
__ deliberately diverted from Mr. Lapertosa's website.
*_ You refer to WWW.TOMMYS-BOOKMARKS.COM without the permission
__ or authority of Mr. Lapertosa with the intention and effect of
__ implying sponsorship or approval by him.
*_ You associate Mr. Lapertosa with gambling activities which are
__ not offered by Mr. Lapertosa, and which may be illegal.
In short, your website is just similar enough for surfers to
believe its claimed connection to Mr. Lapertosa's website, but
different and inferior enough to disparage and dilute the market
power of his site and the service mark that identifies it.
Consequently, Mr. Lapertosa is entitled to damages consisting of
the following, among other things:
*_ The value of all business diverted by your website consisting
__ of the greater of the value of the business lost by Mr.
__ Lapertosa, and the value you received;
*_ Damages consisting of the future business Tommys-Bookmarks
__ will not receive by reason of injury to its reputation;
*_ Damages by reason of injury to the reputation of Mr. Lapertosa
__ personally; and
*_ Statutory damages of $100,000 and reimbursement of Mr.
__ Lapertosa's legal fees in connection with this matter under
__ Anti-Cybersquatting Consumer Protection Act (15
__ U.S.C. S.1125(d)).
Mr. Lapertosa demands that you:
*_ immediately cease and desist using WWW.TOMMYS-BOOKMARKS.INFO,
__ and agree never to use that domain or any confusingly similar
__ domain name or service mark; and
*_ Immediately transfer ownership of WWW.TOMMYS-BOOKMARKS.INFO to
__ Tommys Bookmarks, Inc.
In the absence of your affirmative reply I have been instructed
to take such actions as may be necessary to protect the legal
interests of my client without delay.__ Mr. Lapertosa reserves
the right to sue for compensation for his damages.
I accordingly await an immediate response from you or your
counsel.
Sincerely yours,
Charles B. Kramer
cc:_ [email protected]
==============================
Charles B. Kramer, Esq.
Suite 1516
853 Broadway, New York, NY 10003
Email: [email protected]
_ Tel: 1+212-254-5093
_ Fax: 1+212-254-0214
Cell: 1+917-626-6215
Email to pager: [email protected] (transmits the 1st 120 characters only)

here is my reply, take me to the judge, any time.

 

[mole]

Well, as least they took the trouble to explain clearly to Joe what this whole thing was about. That's at least worth $8.88 of man hour time.

Agree that Joe should just push the name over to him. Personally, I think that name sucks, too long.

 

[Bob]

Originally posted by abrams1117
Joe asked me to post this.
My advise: Give them the domain.
Comments?

here is my reply, take me to the judge, any time.

Since there is not trademark on "Tommys's BookMarks", they have nothing to go one. If they open a WIPO suit, they will be shot down. The first requirement is to be confusingly similar or identical to a mark.

Yes, they have applied for one. However, even if the mark is granted, you would have secured the .INFO domain previous to the mark being registered.

Since they

a) Do not have a trademark
b) The term is not a "common law trademark"

They will crash and burn.

Bad faith has no merit because the first element was not satisfied.

If they want the name bad enough, then make them cough up $$.

You may want to remove any references to their site though.

Good luck!

-Bob

 

[mole]

Originally posted by Bob


Since there is not trademark on "Tommys's BookMarks", they have nothing to go one. If they open a WIPO suit, they will be shot down. The first requirement is to be confusingly similar or identical to a mark.

Similar enough to Tommys's Bookmarks imo >

--------------------------------------------------------------------------------
Word Mark TOMMYS BOOKMARKS
Goods and Services IC 041. US 100 101 107. G & S: Entertainment services, namely, a website providing users links to entertainment websites that are adult in nature. FIRST USE: 19971100. FIRST USE IN COMMERCE: 19971100
Mark Drawing Code (1) TYPED DRAWING
Serial Number 76384221
Filing Date March 15, 2002
Owner (APPLICANT) Tommys Bookmarks, Inc. CORPORATION NEW YORK PO Box 152 Kings Park NEW YORK 11754
Attorney of Record Charles B. Kramer, Esq.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

 

[Bob]

Mole - can you post a link to where you see your TM info? The place I looked had the mark as pending and not live.

Thanks!

-Bob

Originally posted by mole



Similar enough to Tommys's Bookmarks imo >

--------------------------------------------------------------------------------
Word Mark TOMMYS BOOKMARKS
Goods and Services IC 041. US 100 101 107. G & S: Entertainment services, namely, a website providing users links to entertainment websites that are adult in nature. FIRST USE: 19971100. FIRST USE IN COMMERCE: 19971100
Mark Drawing Code (1) TYPED DRAWING
Serial Number 76384221
Filing Date March 15, 2002
Owner (APPLICANT) Tommys Bookmarks, Inc. CORPORATION NEW YORK PO Box 152 Kings Park NEW YORK 11754
Attorney of Record Charles B. Kramer, Esq.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

 

[David G]

Sorry John, it appears to be an open and shut case you are 99% certain to lose based on what I have read from their letter.

I suggest you give them the name. Perhaps they would pay you $100 or so for the transfer.

Here is a website with a link to do your own trademark searches -

www.PatentAndTrademarkOffice.com

 

[abrams1117]

Sorry John, it appears to be an open and shut case you are 99% certain to lose based on what I have read from their letter.

----------------------------------------

Actually its Joe's domain.
He asked me to post the eMail, something to do with his computer.
I stay away from TM problem DN's.
One of the first 10 I regged got me a similar email from Prudential.
I just gave them the domain.

BTW If Joe asked for '$100', wouldn't he be 'profiting' from the name???

thanks

 

[mole]

http://tess.uspto.gov/bin/gate.exe?f=tess&state=r02voe.1.1

You are correct that it pending, but the application was made before Joe registered the .info version.

Search : tommys bookmarks

 

This is a total squat...the kind that gives legitamate domain investors and developers a bad name.

You don't need a registered TM to win via the UDRP, as shown in many cases.

Personally, I feel this is the worst sort of cybersquatting...trying to leech profits from someone else's hard work.

Sad.

Miles

 

[mole]

Originally posted by Namethink
This is a total squat...the kind that gives legitamate domain investors and developers a bad name.

You don't need a registered TM to win via the UDRP, as shown in many cases.

Personally, I feel this is the worst sort of cybersquatting...trying to leech profits from someone else's hard work.

I totally agree miles. Some bludy .com cybersquatters think they can leech off traffic from webmasters using the more meaningful .info and .biz extensions just because they hold the "default" extension

 

Originally posted by mole
I totally agree miles. Some bludy .com cybersquatters think they can leech off traffic from webmasters using the more meaningful .info and .biz extensions just because they hold the "default" extension.

1) I can't imagine a developer registering a .info/.biz without regging the .com, if it was available. Therefore, the ".com" holder in such a case would have had his domain first, so this is not cybersquatting.

2) "tommys-bookmarks" is clearly a unique, non-generic name. Regging this in another extension is text-book cybersquatting, an attempt to infringe upon intellectual property.

I'm surprised that you could compare your example to the grossly unethical domain registration made by "Joe."

Miles

 

[mole]

Originally posted by Namethink

1) I can't imagine a developer registering a .info/.biz without regging the .com, if it was available. Therefore, the ".com" holder in such a case would have had his domain first, so this is not cybersquatting.

2) "tommys-bookmarks" is clearly a unique, non-generic name. Regging this in another extension is text-book cybersquatting, an attempt to infringe upon intellectual property.

I'm surprised that you could compare your example to the grossly unethical domain registration made by "Joe."

Couldn't resist miles

I agree that this is a close-and-shut case. Nothing to debate/discuss/pontify here :swg:

 

[Zoobar]

Its easy to comment when your not the recipient of such a letter, but I think this is an example of reverse hijacking.

I agree with Bob, they don't have a service mark, they've applied. An application has no merit unless approved. Therefore, I would challenge there service mark with the trademark office because simply put "Tommy's Bookmarks" is awfully generic and sure to be declined with a challenge. How many Tommy's out there have bookmarks? There is nothing unique here and a first name, especially Tommy, is not worthy of a mark.

Concerning the other point.
- They own the dotcom so you can't own the dotinfo. If that were true there would only be one domain name extension.
-Links to their site. Last I heard linking to a site is not a crime. People pay to have their sites linked to genreate traffic. He is arguing he doesn't want the link. No problem. Remove the link.
-Submissions for "cool site" from users. I don't think Tommy can claim this idea as his. Also, what Joe deems to cool is different than Tommy as his lawyer pointed out. Tommy doesnt own Joe's site, who gives a flying leap if Tommy doesnt approve or meets his standards.
-Links to gambling sites? Almost implying that Joe is linking to illegal sites, sounds baseless and slanderous to me. My lawyer would have a field day with this amateur.
-Bad faith claim. Let them try and prove it without the service mark. Lost business? How many pro's here tell you traffic ALWAYS gravitates to the dotcom. Expert witness shoots that claim down if they offer any EVIDENCE of lost traffic.
-linking without permission? Its common practice on millions of sites. The letter states they don't want the link, its easy to respect their wish and remove the link.
-The rest is garbage, just refer to the above and its null and void.

My response to this letter would be:
I have removed all links to your clients site as requested in your letter. Thank you for notifying me of your clients application for mark, I intend to challenge the application. If your client is successful and is granted the mark, we can discuss a handover.

Who the hell is Tommy anyways?

 

[mole]

Zoo, like most here, I am totally against reverse cyberjacking and I will be the first person to deploy my lawyers if anyone were to do this to me.

In this specific case, evidence of bad faith can be clearly deduced, and no doubt has already been documented by the attorney in question.

Applying for a (R) name at USPTO is already a clear indication of good faith on the use of the name... and blah, and blah...

It's not worth the hassle to rant, especially not for such a third grade name.

 

[Zoobar]

Bad faith is one of the 3 strikes required. Best to leave that arguement to the parties involved. The other 2 strikes needed are not there.

 

I'd expect a udrp panelist to grant common law trademark for the purpose of any udrp dispute on the basis that the term is entirely fanciful and coined. The fact theres a pending federal registration will only compound their propensity to do this.

The fact that joe is referencing the original site shows that he was fully aware of it at time of registration - that takes care of bad faith registration and having it still there with same sort of content fulfills bad faith usage.

Lack of legitimate interest usually goes hand in hand with bad faith, the nature of joes content would be sufficient to cover this as its not related to the domain name in any manner.

In the udrp, the panelists seem to make an initial decision based on whats presented then work out how to make that fit with the rules - in this case it seems pretty clear that joe is just leeching from the .com site and there will be no compulsion to find an argument to allow him to continue doing so.

Lets be clear, this isn't reverse domain hijacking - joe registered the domain purely because of the .com sites existence and its goodwill - to claim otherwise is to give joe more credit than he deserves.

 

[Stouch]

Zoobar, Tommys is one of the biggest players out there in the adult market. Here is the Alexa rating:

http://info.alexa.com/data/details?url=tommys-bookmarks.com

An Alexa rating of 1381 & over a quarter of a million links at Marketleap should give some indication that this isnt a small player.

I agree with Safesys on this one.

 

[MattyP]

If Joe never abused his membership on the forum he would have been able to post this himself.

Maybe joe should have thought about that BEFORE he abused the forums.

Matt