Name Transfers During a Dispute

[1234567]

The following is extracted from URDP:

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8. Transfers During a Dispute.

a. Transfers of a Domain Name to a New Holder. You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded; or (ii) during a pending court proceeding or arbitration commenced regarding your domain name unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator. We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph.

b. Changing Registrars. You may not transfer your domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded. You may transfer administration of your domain name registration to another registrar during a pending court action or arbitration, provided that the domain name you have registered with us shall continue to be subject to the proceedings commenced against you in accordance with the terms of this Policy. In the event that you transfer a domain name registration to us during the pendency of a court action or arbitration, such dispute shall remain subject to the domain name dispute policy of the registrar from which the domain name registration was transferred.

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Anyone know what's "Transfers During a Dispute"? When is the START of 'Dispute'? Is it the timing :

a. the complainant formally file the case to Provider (a dispute-resolution service provider approved by ICANN)?

b. the timing the the Provider inform the case to Respondent?

c. or simply the complainant send a legal letter to domain holder?


If it's c. it seems very ridiculous as anyone claiming they have right on others' names can send a legal letter to stop others transferring.

If it's a or b, so when one receives a legal letter, he can still legally transfer the names to others?

 

[Theo]

Definitely not C. It's most likely B.

If it's a or b, so when one receives a legal letter, he can still legally transfer the names to others?

Legally, yes - unless there is a contract that explicitly states there is no pending C&D with regards to the domain.

Ethically, no.

 

[1234567]

Definitely not C. It's most likely B.

Legally, yes - unless there is a contract that explicitly states there is no pending C&D with regards to the domain.

Ethically, no.

Thanks for comment. And what do you mean by 'there is a contract to state there is no pending C&D" ( i guess it' Cease and Desist)? Contract between what parties?

And ethically no?? Do we have to consider someone claims to have rights on the names when they are just yelling?

 

[Dave Zan]

Anyone know what's "Transfers During a Dispute"? When is the START of 'Dispute'?

You can't transfer the domain name to anyone anywhere while a UDRP for it
is going on. The domain name's locked the moment the registrar receives the
UDRP notice and gets around to it.

 

[Theo]

Thanks for comment. And what do you mean by 'there is a contract to state there is no pending C&D" ( i guess it' Cease and Desist)? Contract between what parties?

And ethically no?? Do we have to consider someone claims to have rights on the names when they are just yelling?

When you try to sell a domain e.g. on Sedo, the agreement states that no pending litigation or dispute over the domain exists. It's part of the contract terms in order to facilitate the sale.

 

[1234567]

You can't transfer the domain name to anyone anywhere while a UDRP for it
is going on. The domain name's locked the moment the registrar receives the
UDRP notice and gets around to it.

The pt is 'while a UDRP for it is going on'. So when one just receives legal letter claiming they have the rights on the names and want the name themselves free (or at registration cost), does it mean:

a. UDRP is not yet started (as the complaint hasn't been formalised by the claimant)

b. there is not yet litigation going on, as it's just legal letters and not court summon, writ etc.

By transferring the name, it's not intended to transfer the risk to others, but to transfer the name from a natural person to a limited co with limited liability controlled by the person, in preparation of the possible claims to minimise personal risk.

 

[Theo]

1234567,

Your last post makes it a bit more clear about what you're inquiring about. However, I believe that if you transfer a domain to a limited liability entity while a C&D has been received, you risk increasing the chances of losing a potential UDRP. In fact, there have been cases that a UDRP was won by the respondent, who then later transferred the domain to an LLC - only to be hit by a UDRP - eventually losing the name.

 

[1234567]

1234567,

Your last post makes it a bit more clear about what you're inquiring about. However, I believe that if you transfer a domain to a limited liability entity while a C&D has been received, you risk increasing the chances of losing a potential UDRP. In fact, there have been cases that a UDRP was won by the respondent, who then later transferred the domain to an LLC - only to be hit by a UDRP - eventually losing the name.

But will it be more risky to sit here and exposed to unlimited risk? What's the consequence of losing a URDP? Just surrending the name? And how about if the claimant goes for other civil claims not URDP? Would it be more risky in case of losing the case?

And the names are NOT trademarked although some may associate the name to the claimant's giant co, but there are also other small cos using the IDENTICAL names as part of the co name. So by transferring (or selling) the names to such other cos, or new cos having such name (as it's not trademarked), is there still risk? Remember it's not trademarked name and we can simply ignore the claims of the giant co as many other cos are using the name as part of the names.

Any thought?

 

[DNQuest.com]

So basically, a person was contacted and they had it under a personal name and wants to transfer it to a LLC to protect assets. It think it could easily be argued the LLC is being used fraudulently and that personal assets could still be attached since that is where the domain was being held at the time of contact. The alleged TM holder would show it was transfered after contact and that they should be able to after after personal asssets. Also to concider, the alleged TM holder could go after the original registrant (personally held) and the new registrant (LLC) and could go the ACPA route and claim twice the damages (That is 100,000 per plus all the monetary relief they provide) since they are two seperate entities. So if you want to play games, they can do it too. Just keep that in mind.

I will question one thing...

Who says it is not a TM? You say:

And the names are NOT trademarked although some may associate the name to the claimant's giant co

Isn't that what a TM is? Gains secondary meaning through usage. Or do you mean it is not a registered mark (listed USPTO)?.

 

[1234567]

They are not registered trademarks and some other cos are using them as well as part of their co names. And another name is a wealthy man's name and there are at least 5000 people having identical names. Are there case strong?

We may not justify why we have interest associated with the names, but the claimants should also not be the only one that should claim exclusive interest, that's why we wish to transfer the names to entities having similiar names of the challenged.

And what's ACPA route?

The names are know in Asia region and are idns not ASCII.

So basically, a person was contacted and they had it under a personal name and wants to transfer it to a LLC to protect assets. It think it could easily be argued the LLC is being used fraudulently and that personal assets could still be attached since that is where the domain was being held at the time of contact. The alleged TM holder would show it was transfered after contact and that they should be able to after after personal asssets. Also to concider, the alleged TM holder could go after the original registrant (personally held) and the new registrant (LLC) and could go the ACPA route and claim twice the damages (That is 100,000 per plus all the monetary relief they provide) since they are two seperate entities. So if you want to play games, they can do it too. Just keep that in mind.

I will question one thing...

Who says it is not a TM? You say:

And the names are NOT trademarked although some may associate the name to the claimant's giant co

Isn't that what a TM is? Gains secondary meaning through usage. Or do you mean it is not a registered mark (listed USPTO)?.

 

[DNQuest.com]

Basically, you admit to not having interest in the names, and you admit they do. Regardless of how you try to justify it, that seems to be the bottom line. It does not matter all of whom have rights to teh name, all that means is others can come after you to.

Usage plays an important part in this equasion too. My name could be Gerald Ford and I could own ford.com. But if I try to sell cars on the site, chances are I will lose the domain. I could be challeged by the Ford Motor Company, Apple Ford, Khirwin Ford, etc (those are Ford dealerships)...

As far as ACPA, just hope that it is not the case. UDRPs, if you lose, you lose the domain and that's it (usually), In ACPA there could be lots of monetary damages that could be awarded on top of losing the domain.

 

[1234567]

Basically, you admit to not having interest in the names, and you admit they do. Regardless of how you try to justify it, that seems to be the bottom line. It does not matter all of whom have rights to teh name, all that means is others can come after you to.

Usage plays an important part in this equasion too. My name could be Gerald Ford and I could own ford.com. But if I try to sell cars on the site, chances are I will lose the domain. I could be challeged by the Ford Motor Company, Apple Ford, Khirwin Ford, etc (those are Ford dealerships)...

As far as ACPA, just hope that it is not the case. UDRPs, if you lose, you lose the domain and that's it (usually), In ACPA there could be lots of monetary damages that could be awarded on top of losing the domain.

We don't seem to have interest if we hold it in personal names. And we dont' admit they are exclusive party able to claim the names as the names are not registered marks, that's why we sold them to cos / parties with the challenged names as their co names so we have equal rights as them, and also to protect us from further damages if we lost.

For ACPA, is it common and where can we find more information about that?

 

[DNQuest.com]

We don't seem to have interest if we hold it in personal names. And we dont' admit they are exclusive party able to claim the names as the names are not registered marks, that's why we sold them to cos / parties with the challenged names as their co names so we have equal rights as them, and also to protect us from further damages if we lost.

For ACPA, is it common and where can we find more information about that?

I am not sure I understand what you are trying to say with this one. But just to clarify, there can be a common law TM, it does not have to be a registered mark to gain TM protection. The alleged TM holder does not have to have exclusive rights to a name, but if they can prove that they rights to it, then it could be ruled that for the sake of a UDRP, it is a TM.

Here is the problem I am having, you state the following:

"And the names are NOT trademarked although some may associate the name to the claimant's giant co"

You are saying if we knew of the name, we would associate it with this "giant co", well, that can be concidered a common law TM if that name is not registered.



As for ACPA, try typing in ACPA into google, you will get more than enough info.

 

[1234567]

I am not sure I understand what you are trying to say with this one. But just to clarify, there can be a common law TM, it does not have to be a registered mark to gain TM protection. The alleged TM holder does not have to have exclusive rights to a name, but if they can prove that they rights to it, then it could be ruled that for the sake of a UDRP, it is a TM.

Here is the problem I am having, you state the following:

"And the names are NOT trademarked although some may associate the name to the claimant's giant co"

You are saying if we knew of the name, we would associate it with this "giant co", well, that can be concidered a common law TM if that name is not registered.



As for ACPA, try typing in ACPA into google, you will get more than enough info.

Most people will associate the challenged name (AB.com) to the commonly used short form "AB" of the giant co (e.g. Axxx Bxxx Development Ltd), but there are really some other cos actually using such short-form "AB" as part of their co names (e.g. AB Trading co, AB Tourist co Ltd). So is the claim for the giant co strong?

And for URDP, does common law TM applies? It says it needs to be a 'registered' mark by many WIPO decision?

 

[DNQuest.com]

Most people will associate the challenged name (AB.com) to the commonly used short form "AB" of the giant co (e.g. Axxx Bxxx Development Ltd), but there are really some other cos actually using such short-form "AB" as part of their co names (e.g. AB Trading co, AB Tourist co Ltd). So is the claim for the giant co strong?

International Busness Machines
America Online
Hewlette Packard

Any of these ring a bell? Try ICM, AOL, HP

And for URDP, does common law TM applies? It says it needs to be a 'registered' mark by many WIPO decision?

The only response to this is..... UGH!!!!!! :doh: :doh: :doh:

It does not say it needs to be registered, and yes common law TM applies, even in a court of law. Then again, if you are going to argue, at least please read what we are saying. I did say common law applies. And in UDRPs, it is pretty easy to establish TMs, much easier than in a court of law. It is just easier to prove TM if it is a registered mark.