Just got an inquiry, And their trademark is shown as Dead, what should I do????

[charles]

John,

Thanks for these valuable insights. If only people leavened their enthusiasm with a little common sense. But that's about like wishing people would always use spray paint artistically.

Chas

 

[jberryhill]

"So you see, inserting a lawyer into your transaction can even insulate you from a claim of bad faith. "

In addition to the counterexample in my post above, here is another golden UDRP moment:

http://arbiter.wipo.int/domains/decisions/html/2001/d2001-1090.html
The fact that the Respondent's attorney wrote in his letter to the Complainant "If you wish to consider purchasing the domain, we will seriously consider any reasonable offer" illustrates his willingness to sell the Domain Name to the owner of the PRADA trademark. In the above-mentioned letter, the Respondent's attorney states "If you elect to file a UDRP claim, rest assured that we will defend it vigorously, that it will cost you $ 1,500 (US) plus legal fees which are not recoverable should you not prevail, and there is no guarantee that you WILL prevail". This statement is surprising in view of the fact that the Respondent's response which was filed weeks after the deadline is limited to a three paragraphs email. This seems to indicate that the Respondent intended to inflate the price it hoped to obtain for the Domain Name rather than to communicate its conviction as to the merits of its case.

 

[charles]

JB:

Do you think it would help if lawyers making these kinds of proposals added a specific statement referring to the Federal Rule of Evidence 408, which provides:

Evidence of (1) furnishing or offering or promising to furnish, or (2) accepting or offering or promising to accept, a valuable consideration in compromising or attempting to compromise a claim which was disputed as to either validity or amount, is not admissible to prove liability for or invalidity of the claim or its amount. Evidence of conduct or statements made in compromise negotiations is likewise not admissible. This rule does not require the exclusion of any evidence otherwise discoverable merely because it is presented in the course of compromise negotiations.

The rationale for the rule was not to stifle settlement of litigation by making an offer to compromise admissible evidence on liability. The ACPA seems to do just that.

 

[jberryhill]

I think it is important to reach an understanding with the lawyer for the other side before anyone starts talking settlement, since nothing in FRE 408 is required to tie the hands of a UDRP complainant or panelist.