Legitimate use ,whats best case to refer to ?

[domaingenius]

I have just had the Complainant in a UDRP file substantial amount
of additional material. The primary aim of that is to aver that I
do not have any legitimate rights to the name. Could someone
kindly point me to any useful UDRP cases that could refer to
that are helpful on that point ?.

Let me give brief summary;
1. Domain was regged and dropped .I caught it and also at same time a cc
tld dropped and regged that.
2. Set up proper website for the 2 domains to sell various goods.
3. 1 month later received letter offering $$$$ or they would issue
UDRP I declined and told them I was applying for TM.
4. They called me offered more $$$ and I declined
5. I applied for TM
6. They filed UDRP.
7. IPO office told me no problems with my TM application at all.

Any help appreciated as to specific UDRP that might help on
legitimate use. Might be academic as lawyer is preparing to file
but want to try anyway.

Thanks
DG

 

[fab]

I highly doubt anyone can actually answer this properly with the amount of info you provided, furthermore, if you've hired a lawyer he should be more qualified then most of the mebers here, excluding the lawyaers, although without the actual case facts, they probably won't be able to help too much either.

1. Legitimate use. Creating a web-site for apples, apple.tld is legit, but you can't file a t, for that.

 

[domaingenius]

I highly doubt anyone can actually answer this properly with the amount of info you provided, furthermore, if you've hired a lawyer he should be more qualified then most of the mebers here, excluding the lawyaers, although without the actual case facts, they probably won't be able to help too much either.

1. Legitimate use. Creating a web-site for apples, apple.tld is legit, but you can't file a t, for that.

I am not particularly looking for a case specific advice, I am simply asking
if there are any known or well known UDRP decisions that might assist in supporting a claim for legitimate use. I have not hired a lawyer to deal
with the UDRP only to pursue legal actions. I am sure there are enough
facts stated to give an idea of what UDRP decision may support
a legitimate use claim .

DG

 

[dvdrip]

3. 1 month later received letter offering $$$$ or they would issue
UDRP I declined and told them I was applying for TM.

That alone should be enough for you to win. That is if you get a decent panelist.

 

[domaingenius]

That alone should be enough for you to win. That is if you get a decent panelist.

Not waiting for WIPO result. Heard form German lawyer today and he
is filing case in Germany tomorrow and we are going to fight all the
way. So tomorrow WIPO and Complainant will both get copy of
the sealed case document. If this works out then am maybe moving
some domains to Germany for protection from future WIPO's as well
since this lawyer is happy to do on "special basis" for me. Maybe
we should form a club for protection of domains and base them where
the jurisdiction is good and where can get these "special basis" ??.

DG

 

[jberryhill]

So tomorrow WIPO and Complainant will both get copy of
the sealed case document.

That's a poor strategy:

http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1122.html

Paragraph 18(a) of the Rules gives the Panel discretion to suspend or terminate the UDRP proceeding where, as here, the Domain Name is the subject of other legal proceedings:

“(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”

Under paragraph 18(a) of the Rules, the legal proceeding must be “in respect of a domain-name dispute”. That is partly the case here. Count II of the Complainant’s Amended Complaint and Request for Injunctive Relief in the federal litigation alleges that the Respondents SESCO and Parker-Chillemi engaged in cyberpiracy in violation of federal law by registering and using the Domain Name. Paragraph 7 of the Prayer for Relief in the Amended Complaint demands that those Respondents be ordered “to turnover custody, control, ownership and title of <WFLI.com>, WesternFloridaLight.com and WesternFloridaLighting.com to the Plaintiff”.

However, in the circumstances of this proceeding, the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation (see Policy, paragraph 4(k)).

A decision to deny the UDRP Complaint would obviously not prejudice the Respondents, nor would it bar the Complainant from continuing to seek judicial remedies. Conversely, the Respondents could suspend the effect of a UDRP transfer order by filing a judicial claim in the applicable jurisdiction within ten days (Policy, paragraph 4(k)). If they did not choose to do so, a UDRP transfer order might still have only a temporary effect, as the court in the pending federal litigation might ultimately rule against the Complainant. In the interim, the record suggests that a temporary loss of control over the Domain Name (if a transfer order were found by the Panel to be warranted under the Policy) would not be significantly prejudicial to the Respondents: the Domain Name does not currently resolve to a website, and none of the Respondents claims plans for using the Domain Name in any way. On the other hand, if the UDRP proceeding resulted in a transfer order that was not subsequently overturned by a ruling in the federal litigation, the Complainant would have more expeditious relief as intended by the Policy. The Complainant could then make its own decision about continuing with the lengthier and more costly federal litigation that it initiated, as could the Respondents in relation to whether or not they wished to initiate their own lawsuit in an applicable jurisdiction pursuant to paragraph 4(k) of the Policy, or otherwise.

Therefore, the Panel exercises its discretion to proceed to a decision in this proceeding.

Just out of curiousity, is the registrar located in Germany, and was that the mutual jurisdiction chosen by the Complainant?

The request in your OP is much too broad. There are thousands of UDRP decisions addressing the subject of legitimate rights, and WIPO provides a topical index of selected decisions.

While you believe that simply filing your German civil complaint will have some sort of dramatic effect, I can assure you that attorneys in general, and that includes UDRP panelists, do not find the ability to file a civil complaint to be all that impressive a thing. Depending on the overall merits set forth in the Complaint, the absence of a response from you, and a bare copy of a civil complaint is likely to convey the impression that you have nothing to say in your defense, and that you filed a lawsuit simply to be an obstructionist jackass.

Now, I'm not calling you names, but just telling you in a way that you cannot objectively consider, how your behavior comes across to people who are not emotionally invested in this dispute, about which you've posted the question du jour to DNForum for about a month running.

The observation that a trademark application was filed after these people first complained to you about the domain name was discussed in another thread.

And, another fact which is going to certainly weigh on the Panel's mind here is whether or not you have been the subject of prior UDRP proceedings and what, if any, commentary might be in those decisions about how you handled the proceedings, let alone what the substantive outcomes were.

 

[dvdrip]

John I don't think he cares about the UDRP anymore.
He thinks he is going to lose anyway because WIPO sucks.
He is just filing at court before the decision. That's it.
He could have filed after the decision. Doesn't make any difference.

 

[domaingenius]

John


Thanks for your useful response, Let me give some bullet form replies and
info so position is clearer;

1. I have lodged a response, a full one, to the UDRP.
2. The domain was regged in Germany and Complainant chose
Germany as the jurisdiction in the UDRP. I guess because with
myself being in UK they thought that would be prob for me.
3. This legal case is not so much a strategy as a determination
to keep the domain name.
4. Believe me I do definately know that filing a case does not
impress many lawyers ,I have a long involvement with
such matters ,unfortunately.
5. As DVDrip says, I definately do not believe any WIPO will be fair
and thus my preemptive launch of legal action.

DG

That's a poor strategy:

http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1122.html



Just out of curiousity, is the registrar located in Germany, and was that the mutual jurisdiction chosen by the Complainant?

The request in your OP is much too broad. There are thousands of UDRP decisions addressing the subject of legitimate rights, and WIPO provides a topical index of selected decisions.

While you believe that simply filing your German civil complaint will have some sort of dramatic effect, I can assure you that attorneys in general, and that includes UDRP panelists, do not find the ability to file a civil complaint to be all that impressive a thing. Depending on the overall merits set forth in the Complaint, the absence of a response from you, and a bare copy of a civil complaint is likely to convey the impression that you have nothing to say in your defense, and that you filed a lawsuit simply to be an obstructionist jackass.

Now, I'm not calling you names, but just telling you in a way that you cannot objectively consider, how your behavior comes across to people who are not emotionally invested in this dispute, about which you've posted the question du jour to DNForum for about a month running.

The observation that a trademark application was filed after these people first complained to you about the domain name was discussed in another thread.

And, another fact which is going to certainly weigh on the Panel's mind here is whether or not you have been the subject of prior UDRP proceedings and what, if any, commentary might be in those decisions about how you handled the proceedings, let alone what the substantive outcomes were.

 

[jberryhill]

John


Thanks for your useful response, Let me give some bullet form replies and
info so position is clearer;

1. I have lodged a response, a full one, to the UDRP.
2. The domain was regged in Germany and Complainant chose
Germany as the jurisdiction in the UDRP. I guess because with
myself being in UK they thought that would be prob for me.

Ah, that's much clearer. From the OP and your other posts, it appeared that you had merely sent the court complaint as the UDRP response, and that the domain name had been registered elsewhere.

The cello.com dispute spawned three court cases, a UDRP and an appeal before the dust settled.

 

[domaingenius]

OK the Case documents have been served by my German lawyers on WIPO
and Complainant and Registrar. What usually would happen now ??.

DG

 

[dvdrip]

Nothing probably. They will issue a decision and then your court case will stop the transfer if you lose.

 

[jberryhill]

Nothing probably. They will issue a decision and then your court case will stop the transfer if you lose.

So long as the registrar understands the rules, that is correct.

However, dg doesn't mention whether he sent a court-stamped copy of the complaint to the registrar.

UDRP 4(k):

The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.

 

[domaingenius]

John


My reading of that is that it refers a a generic "complaint" ,i.e.
the legal proceedings and particulars of claim relating to the
domain name in question , NOT a copy of the UDRP complaint ?.

The documents have been properly paid for and sealed by
the Court with the Official Seal/Stamp and the document
refers to the domain that is subject to the UDRP. Those
sealed documents from the Court have been served
on all parties including the Registrar themselves.

Is that OK ?.

DG

So long as the registrar understands the rules, that is correct.

However, dg doesn't mention whether he sent a court-stamped copy of the complaint to the registrar.

UDRP 4(k):

The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.

 

[dvdrip]

It's OK. But are you sure that you are going to lose?
Is it a one member panel?

 

[domaingenius]

It's OK. But are you sure that you are going to lose?
Is it a one member panel?

Nope not sure I will lose but not going to hang around and wait.Had
enough of WIPO crap and in future ,especially if this one goes
the right way, will litigate.

DG

 

[lordbyroniv]

And, another fact which is going to certainly weigh on the Panel's mind here is whether or not you have been the subject of prior UDRP proceedings and what, if any, commentary might be in those decisions about how you handled the proceedings, let alone what the substantive outcomes were.

What do prior UDRP proceedings brought against the same Respondent actually demonstrate?

Do multiple complaints against a Respondent demonstrate element of "bad faith" in of itself by the Respondent as to being a cybersquatter? Is such evidence considered by most panelists as persuasive, compelling or irrelevant ?

or does it show something else? a different element i am missing

do these prior UDRP claims goes to "legitimate use" or "bad faith", or something else ?

 

[jberryhill]

Do multiple complaints against a Respondent demonstrate element of "bad faith" in of itself by the Respondent as to being a cybersquatter? Is such evidence considered by most panelists as persuasive, compelling or irrelevant ?

It will tilt a close case against you:

http://www.icann.org/en/udrp/udrp-policy-24oct99.htm

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

...

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;

While the rule, expressly stated, refers to a pattern of "such conduct" - i.e. a pattern of registering domain names comprising the particular complainant's mark in order to prevent them from registering an appropriate domain name; the rule is casually interpreted to refer to a "pattern" of registering domain names corresponding to marks. Hence, prior adverse UDRP decisions are frequently cited as "pattern of bad faith" evidence.