Leading DN seller offering my TM DN for sale

[RoToHead]

I started and incorporated my business in California in 1996. I incorporated the name, secured the company name as the DN, and have a solid and successful business going since (ttL). I filed (1996) and was granted Registration (1999 and 2001) of the TM, or Service Mark, from the USPTO more than 5 years ago. I paid hard-earned money to get good counsel, set things up correctly and to build the business name!

I recently saw that an exact extraction of my DN is being offered for sale by one of "the worlds leading" domain name (re-)sellers.

I called and then sent a C&D letter with a copy of the TM Registration - gave them 14 days to C&D and respond - no written response – now after two weeks and the name is still being advertised for sale and used to link to similar businesses as mine from their site.

Their own TOS define this behavior as a violation.

As I have been reading, it seems that the UDRP can help resolve this, but does agreeing to use UDRP limit or forego my chances for relief under TM infringement action?

I appreciate your time and consideration!

 

[Ubiquitous]

I believe you can approach the issue in several ways and don't think it would hurt your chances of the TM action you take. The TM is just one part of the violation and it's not just about the domain name. It will probably be a while before it's all resolved, however, you obviously did your homework when you incorporated/trademarked your business/name and in all likelyhood you are going to come out on top. Good luck with your issue and it's unfortunate that you have to spend the time and money dealing with it.

Regards ~

 

[DNQuest.com]

No, it does not limit you. But if you are looking for restitution, then I would forgo UDRP and directly file with the courts. The reason for UDRP is to make it cheaper to get your name back rather than wasting legal fees and time fighting in court. So if you plan to go to court, do that directly.

 

[beatz]

an exact extraction of my DN

What exactly does that mean ?

Like, the same domain as yours, just with a different extension ?

Also, is your domain/TM a generic term or a made-up word or a combination of both ?

Btw - a lot of people seem to instantly forget all they know about domains, UDRP, TM etc as soon as they're on the other side of the fence.

Meaning, besides the question of how generic or not generic your name is, another question is how the allegedly "squatting" domain is used - is it used for a PPC, is it used for the same products/services that you are offering, is it used at all etc etc.

Also - have you checked if the registrant of the domain in question does not own a TM for the same term/name as well ?

In other words - just to own a TM for a certain term doesn't equal exclusive rights to the respective domain.Neither does it automatically equal bad faith registration by someone else for a similar domain.

So you might have a chance to get that domain - then again, you might have not.

It all depends.

 

[DNWizardX9]

Also TM's only go in one field. If you have the TM in the computer field someone else can have a similar name in the medical field.

 

[RoToHead]

Thanks for the input!
If smashing atomic particles were my business, and I already own the Registered Trademark for the name The Atom Smasher, and I owned the domain of TheAtomSmasher.com Then someone ("worlds largest domain name seller") comes along and is trying to sell AtomSmasher.com (w/o 'The')when they know I have the Registered TM for The Atom Smasher.

This example is a pretty close analogy.

 

[RoToHead]

Kingpin
Thanks for your note

Good luck with your issue and it's unfortunate that you have to spend the time and money dealing with it.

I was told - if you don't want to run with the Big Dogs, stay on the porch.

 

[actnow]

You also have to remember that the big boys have the best lawyers.

Plus, the big boys get threats everyday. So, you can't bully them and hope they say
"Ok. We didn't know. We must be wrong. Here is the domain."

Not asking you to disclose the domain. But, is it your exact company name?

Something like - CalifCompany.com And, yours might be Californiacompany.com ?

Or, is it the .net, .us, .biz of your .com?

I'm not trying to discourage you. However, most of the major domain resellers have
deep pockets that they will use to protect their position.

If you think you want to pursue this. Contact a Trademark lawyer for the best advise. But, first ask if they represent the company in question before
disclosing your case.

Do not hire a lawyer that is not a TM specialist. You will end up paying for his education.

 

[dtobias]

If smashing atomic particles were my business, and I already own the Registered Trademark for the name The Atom Smasher, and I owned the domain of TheAtomSmasher.com Then someone ("worlds largest domain name seller") comes along and is trying to sell AtomSmasher.com (w/o 'The')when they know I have the Registered TM for The Atom Smasher.

Although, you might have some difficulty getting a trademark on "The Atom Smasher" for a device that in fact smashes atoms; that might be viewed as generic, or at least descriptive.

But, assuming you did obtain such a trademark registration, you still might not be able to prevail against somebody who uses the name "The Atom Smasher" in a context other than atom-smashing machines; like, for instance, as the name of a comic book superhero, or of a rock band. Those would be in different lines of business and would probably be seen as non-infringing.

 

[RoToHead]

Although, you might have some difficulty getting a trademark on "The Atom Smasher" for a device that in fact smashes atoms; that might be viewed as generic, or at least descriptive.

But, assuming you did obtain such a trademark registration, you still might not be able to prevail against somebody who uses the name "The Atom Smasher" in a context other than atom-smashing machines; like, for instance, as the name of a comic book superhero, or of a rock band. Those would be in different lines of business and would probably be seen as non-infringing.

Yes it was difficult and took several steps and stages with a skillful senior trademark attorney, and we did obtain the Registration of the same url DN as our Inc. name, like, The Atom Smasher. com
They (the world leading DN seller) are offering to sell "AtomSmasher.com" (without "The") on the same site where they also have multiple links to other sites like Flattenedsubatomicpartices.com and like AtomSquash4sale.com in the same industry, providing competative services to (ours) those who can benefit from all the neurons and positrons that are freed in the squishing of atoms. In bad faith trying to make money selling the DN and on links to the same smashing business as ours.

Do deep pocket, big name DN resellers hold themselves out to be above the ICANN UDRP and TM laws and plead ignorance (or incompetence) if adequately pressed on the issue of knowingly offering a TM'd DN for resale?

Is their a way to view the cases challenged in ICANN bya certain DN seller - to see if there might be a pattern and practice?

 

[beatz]

the issue of knowingly offering a TM'd DN for resale?

Once again as you don't seem to get it:

Just because you have a TM on what seems to be a quite generic term, it doesn't automatically equal to you have *exclusive* rights to that term - be it as a TM or be it as a domain.

Here's an example:

Say you indeed got a TM for "The Apple Sellers" and your business is indeed that of selling apple fruits.So you also own theapplesellers.com

Now, that does not mean someone else can't use the domain applesellers.com - they might sell apple computers, they might be a band called Apple Sellers or they might have plans to use the domain in the future.

Now here comes the tricky part: What if they want to use the name for selling apple fruits just like you?

I'm no lawyer but here i think is what might be a problem:
Normally TM's are not granted for generic terms that exactly describe what the main business is.Like, no problem for Apple Computers to get a TM for "Apple" because the term does not describe what they do (building computers).But it indeed would be a problem for an apple farm to get a TM for their apple fruit products.

The reason is very simple - to prevent *anyone* in the apple fruit business from gaining exclusive rights to that term because it's generic to that business and to protect other apple fruit businesses.

Remember - we're still talking about TM's here.Of course an apple fruit seller has the right to register *the domain* appleseller.com for their business as domains are basically a first come first serve thing and you in contrary to TM *are* allowed to use a descriptive/generic domain that matches 100% what your business is.

Soo...if - although it should never happened - you were indeed granted a TM that is descriptive for your business it was first of all your choice to decide for a generic term as a company name.And you were lucky you got that TM.

BUT: That does *not* wipe out existing TM law, and it doesn't mean just because your TM application slipped through the loophole everyone else in the atom smashing business is now actually forbidden to use the term "atom smashing" etc for their products, for instance through the use in a domain name.

I also doubt your business (name) has received such fame that everyone would know about you and that your name is TM'ed btw.

Of course this is all just for the case your TM is indeed a somehow generic and descriptive one as assumed.

Should your TM in fact be quite the opposite, say "GUXAYIOLXYZ" (in other words a totally madeup name that is non descriptive) it would be a whole different situation of course.

My 3 non-lawyer cents.

 

[RoToHead]

Beatz:
Thanks for your assessment "you don't seem to get it" you may be correct and I welcome others input too! Maybe I am off base, here is my understanding.

Although Al Gore may believe he invented the internet, I believe that ICANN and the CyberSqatting Act followed copyright and trademark law, not the other way around.
The USPTO is the Chicken and CyberSqatting is the egg on the face of those infringing on TM registration.

Once the USPTO evaluates, challenges, clarifies and if eventually certifies a "secondary" meaning of generic terms...like Micro and Soft... they have the legal authority to issue a Service or Trademarks granted USPTO. Generic terms when used in commerce may take on a secondary meaning, others like

Holiday Inn
Fruit Loops
The Clock Works
Micro Soft
Quaker Oats

I have read most of the dnforum legal posts (very good – it takes time to go through them, but worth it) and have tried to get up to date since a "Leading DN seller is offering my TM DN for sale" they simply removed the "The" off my name. These sites have been helpful to me and seem authoritative.

http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm

is an informative site as well as the USPTO.gov

I am a novice here so I know that I may have a narrow focus - especially since I am looking at this from my own interest and perspective

Thanks for hearing me out.

This is how it all came about. I started and incorporated my business in California in 1996. I incorporated the name, secured the company name as the DN, and have a solid and successful business going since (ttL). I filed (1996) and was granted Registration (1999 and 2001) of the TM, or Service Mark, from the USPTO more than 5 years ago. I paid hard-earned money to get good counsel, set things up correctly and to build the business name!

I recently saw that an exact extraction of my DN is being offered for sale by one of "the worlds leading" domain name (re-)sellers.

I called and then sent a C&D letter with a copy of the TM Registration - gave them 14 days to C&D and respond - no written response – now after two weeks and the name is still being advertised for sale and used to link to similar businesses as mine from their site.

Their own TOS define this behavior as a violation.

As I have been reading, it seems that the UDRP can help resolve this, but does agreeing to use UDRP limit or forego my chances for relief under TM infringement action?

 

[namestrands]

You basically have to prove that the domain is being used in bad faith, the registration of the domain was in bad faith, the domain name is identical or similar enough to cause confusion.

People have already mentioned that because you own a trademark, it does not give you exclusive rights to a domain name especially more so if the domain name is one of a Top Level Domain name like .com or .net for example. Top Level domains are Generic and non country specific.

ICANN states first come first serve, and then its up to you to prove that you have more right to the domain than anyone else.

I know its frustrating and from experience it makes you sick, at the end of the day you have to decide if its all worth it. C&D letters might scare of some, but I am sad to report the "some" are few and far between.

You have 3 options now.

1. Offer to buy the domain, and save yourself time and expense.
2. File a UDRP. You might win, but if you lose then you run the risk of your mark being diluted.
3. Take the matter to a court and file under the anti-cybersquatting law. (expensive and can take years)

Best of Luck.

 

[RoToHead]

Thanks Bishop:

To clarify my question, I have the TM and the DN using both in my real business (been incorporated too) for 9+ years:

like TheAtomSmasher.com

The reseller registered or bought it and advertising it for resale (only change is dropping 'The':

AtomSmasher.com

I believe the reseller shows bad faith demonstrated by:
purpose is to make money on resale
the domain name is identical - always comes up in USPTO simple search
causes confusion if someone searches for my company


The big name reseller knows better and their own TOS says so.

Am I myoptic?

 

[maroulis]

why don't you DISCLOSE the domain and your business name so we can have a more fruitful discussion? geez

 

[RoToHead]

I am trying trying to keep the ROT as high as possible...

I have invented a the economic term "ROT" - you saw it here first

- the Ratio: Revenue over Traffic - ROT

$7 per real customer is better than $0.70 even with the 10 X volume

Ya think?

 

[namestrands]

Does the webpage have PPC links or Advertising on the site that could be deemed as your competitors? If so then I would start to take some screenshots now.

However if the page has totally unrelated content, then your example if far to generic.

I can give you an example. In the uk their is a company and website called TheRange they own the domain therange.co.uk and they of course own the trademark. However they would have little to no luck in going after the domain therange .com or even the domain Range.co.uk or Range.com

This is also true for something like TheBlackSwan and BlackSwan, the owner of theblackswan has no rights to the domain blackswan, its all just too generic.

I would not say that you are "myopic", but perhaps you are a little too close to it all.. I would advise you letting your lawyers evaluate this, and even try seek advice from a trademark lawyer.

I agree you have to protect your trademark otherwise you could lose it if it gets diluted enough, and a UDRP shows that you are actively protecting your name.

Offering a domain for sale is not bad faith, would you call buying a house for the sole purpose of reselling it for a profit bad faith? or would you say buying an old computer for $10 and then selling it on Ebay for $10,000 bad faith?

Of course you wouldn't, in business people make things or buy things for the sole purpose of reselling for a profit, be it goods or services.

If someone was searching your company name on a search engine and the name of the other website came above yours then you can not argue confusion, however if someone was to search for a product of yours and the other domain came above yours, then you could argue confusion and bad faith if the other owner had no related business and was just using it to lure your customers away to one of your competitors... then I would say get a lawyer, take screenshots and pursue the domain.

 

[RoToHead]

Is there more to it?
The Leading DN seller is now offering full return of my TM DN - I had posted here: "Leading DN seller offering my TM DN for sale " on 8/31/06.

TheAtomSmasher.com was the example, when a Big Name National DN Seller Corp (bnndnsc for short) was offering the DN for AtomSmasher.com for sale (less "The").

I had the Registered Trademark for 9 years and an active business and website.

I sent a C&D to bnndnsc, and gave 10 days for full release of DN to me as TM and DN owner - they would not return phone callsor respond to served letters - for two weeks - then, today a call from bnndnsc Legal, then I received a pdf offering the DN be transferred to me, as D&C requested, in exchange for signed agreement not to pursue TM infringement, Cybersquatting or other action against bnndnsc.

Good Karma? The Right Stuff? Believe it? Other considerations?

 

[Bashar]

so the domain is going to be yours, congrats

whats the name?

 

[actnow]

= today a call from bnndnsc Legal, then I received a pdf offering the DN be transferred to me, as D&C requested, in exchange for signed agreement not to pursue TM infringement, Cybersquatting or other action against bnndnsc.

Boy, are you good !!!

Congratulations on making them seeing it your way.

I think what also helped is that the "Brand Name Reseller" is trying to position
themselves to go public. And, under full disclosure (red herring) they don't want
to list pending lawsuits.

That is why they are also dumping all of their sexual domains.

RoTo, I am pleasantly surprised that they cooperated.

Fooled me !!!