Need some help or advice

[wmlagna]

Last week I received a complaint from ChevronTexaco for the name Chevron.biz. I had been in communication with them - they contacted me originally with a legal threat if I did not transfer the name to them. I said that I would consider transferring the name. I realized they have a trademark, albeit generic, and they have application for the name. I felt that I might be able to purchase another name for my purpose.
And what is my purpose? Well, I am ( and have always been) employed by the Army, and the chevron is the universal insignia of rank within DOD (and Coast Guard, police and fire). I have prepared several websites on the history and purpose of the chevron for the military. Naturally, I wanted to display some of the information for the benefit of any interested party, with much additional information, such as on the Service Relief Act, and how to take advantage of it to protect against creditors while on active duty. Display generally useful information about rank and other info for families that have members abroad. This would seem to me to be legitimate purpose. On the top of my preliminary web page, I had a box to click if the visitor in fact wanted to go to ChevronTexaco. Though I considered transferring the name to Chevron if I was reimbursed for my expenses, it seems to me (after receiving this complaint) that I am being bullied into the transfer. ChevronTexaco claims that I am a cybersquatter even though I have never offered for sale any of my small list of names, all of which I have in use or have plans to use. An attorney friend said that under the circumstances, I should claim Reverse domain name hijacking in my response.

Also, a quick search indicated that many businesses not related to ChevronTexaco use the Chevron name, and some are registered as trademarks for their specific type of business. So it seems to me that Chevron has no lock on this dictionary term. At any rate, it is a VERY common term in the military, as every soldier is required to display his chevrons while on duty.

Does anyone have any advice?

Thanks.

 

[DomainPairs]

It's time these businesses stopped taking over english words and thinking they own them. If they want a word to trademark then make one up, otherwise live with the general use of your company name as long as someone is not trying to pass off as you. Microsoft's claims to windows is appalling especially as they pirated the concept in the first place.

 

[jberryhill]

"I said that I would consider transferring the name."

Have you?

"I realized they have a trademark, albeit generic,"

No, they do not have a generic anything. "Chevron" is not a generic word for "big-ass oil company that can crush you like a bug".

"And what is my purpose?"

Which is a great question. Because if you read the contract you entered when you registered a .biz domain name, you will find that you agreed to conditions which are substantially different than those for .com and .net. .biz is a chartered TLD, not a generic TLD. Specifically, you agreed you would use your .biz domain name for conducting a business of some kind.

It is certainly true that the word "chevron" does have an ordinary meaning. The mystery here is what sort of business you are conducting, having registered the domain name a year ago, and having put it to no discernible use thus far.

Another question is what sort of business you intend to conduct using a .mil email address, which likely has a user policy that excludes the use of such an email address for conducting a private business of any kind.

 

[wmlagna]

Thanks for the comments. I have not transfered the name as their offer does not cover my purchase cost, much less the cost to acquire another acceptable name. It does not seem reasonable to lose money on this transfer.

And yes, I agree that they could crush me like a bug. But their complaint will not likely meet all of the 3 criteria which they must meet. The chevron is the official display of rank in the enlisted armed services. And the trade of chevrons, especially among members of the chevron clubs(retired enlisted military) is a real business, and generates large interest.

And yes, my intent was to consider some sort of trade or sale of chevrons, insignias, symbolic flags, military memorobilia and other items valuable and significant to the military.

I was not aware that there was any time limit for implementing a site.

Interesting that you noticed that I have a .mil email address. I often use it to communicate (allowed), but generally use the [email protected]nsion specifically for private business. The email extension should be indicative that my intent for the site was reasonable.

Interestingly, ChevronTexaco has not pursued some other users of their trademarked name, like Chevron Incorporated, makers of truck beds, or Chevron.org ( after a television show) or even the Chevron LLC insurance company that not only uses their name but also uses their chevron logo (same shape, size, colors) though they are not affiliated in any way, as they claim in tiny print on their site. With these and other businesses and organizations using the chevron name in a legitimate way, it would seem that my use is equally legitimate, and certainly not harmful to ChevronTexaco.

I would have transfered the name if they covered my costs, but it seems that they are'prohibited' from doing so by company policy, so they say. I could not find such a limitation in their company policy. They have closed the door on further negotiation.

Now, had I registered the name ChevronTexaco, things would be quite different.

The dictionary might be used to determine the meaning of a word. No matter which version one might reference, it seems to mean the emblem of rank. I did not notice a reference to fuel and oil in any version. I do not see any type of entitlement to the word other than that specifically protected (and limited) by their trademark.

 

[jberryhill]

"And yes, my intent was to consider some sort of trade or sale of chevrons, insignias, symbolic flags, military memorobilia and other items valuable and significant to the military."

Your subjective intent is practically irrelevant. Your intent was to "consider" doing something with it, or to actually do something with it, and to take demonstrable preparations to actually do something during the course of a year or so? Yes, if an omniscient deity with the ability to look into people's hearts decided these things, then it would matter. A UDRP panel is going to want to see concrete evidence of that intent, usually expressed in the form of...

"I was not aware that there was any time limit for implementing a site."

No, there is no "time limit" per se. However, the passage of time, coupled with no substantial development activity, undercuts an unsupported assertion of subjective intent.

"The chevron is the official display of rank in the enlisted armed services. And the trade of chevrons, especially among members of the chevron clubs(retired enlisted military) is a real business, and generates large interest. "

I understand that perfectly well. It certainly is a real business. And based on what you've said thus far, it seems to be a business that does not involve you or your domain name to any discernible degree.

"With these and other businesses and organizations using the chevron name in a legitimate way, it would seem that my use is equally legitimate, and certainly not harmful to ChevronTexaco. "

You mean your "non-use", as opposed to others' actual use. Big difference.

"The email extension should be indicative that my intent for the site was reasonable. "

No, the email extension is indicative of a habit of violating policies relating to using the internet. That is precisely what I would argue if I were them. If your intent is to conduct a private business of some kind, as required by the .biz charter, then you should not be using taxpayer-supported resources to any degree at all.

My first move, if I were them, would be to draw you out into an explanation of your intent to conduct a business (as required under the .biz charter), and then bring to the attention of your email administrator and your CO that you are using military facilities for an improper purpose.

That is a standard tactic against people who use .edu email addresses as well. First, get their account yanked by pointing out a violation of the user policy to the administrator. Then, proceed to the UDRP, since they are then unable to receive or send email via the admin contact email address.

 

[actnow]

Ouch!!!
So, the procedure is for them to "cut your throat" and then ask for
an explanation. If you can still communicate.

 

[zouzas]

Originally posted by actnow
Ouch!!!
So, the procedure is for them to "cut your throat" and then ask for
an explanation. If you can still communicate.

comon fellas a fellow member is asking us what we would do if we were in his shoes ,,,me if i do plan on using the domain for military stuff unrelated to the oil or gas fields i would fight it all the way my bet he wins at udpr,,taking bets anyone else,,,,,,,,,

 

[zouzas]

Originally posted by zouzas


i would fight it all the way my bet he wins at udpr,,taking bets anyone else,,,,,,,,,

i would like to clarify that i am against so called "cybersquatters" which gives us all a bad rap,,,But this business of going after generic words regardless of tm or not unrelated to the line of business the tm is for has got to stop,,,,otherwise the big co, wil own everything,,,,,,,

 

[HOWARD]

Zouzas, you're missing John Berryhill's point. It is one thing to INTEND to do something with nothing to show for this "intent", and it is another to actually put up a working site. it generally does not take a year to do so. Though John and I are both on the side of the domain holder in most cases, this one would be extremely hard to defend when there is no EVIDENCE of the intent.

 

[wmlagna]

Again, thanks for the responses. In fact, I did have a working developmental site up but it was not yet linked to the name. I have been working on other, related projects. I sent this site, which included a complete history of the chevron in the military, to ChevronTexaco and they conveniently left it out of their response, and further ignored it altogether in the complaint, stating that the appendices which were part of the complaint represented ALL communications between the parties followed by a sworn statement. But they seemed to have left out the communications that were adverse to their case.

As for the use of my email address, the rega allow for fair and reasonable but not excessive use for individual or personal purposes. They must allow some breathing room here or all of the big boys would be in trouble. At any rate, mil net is monitored in real time and violations are reported in real time daily. Please use [email protected] if the .mil address makes you uncomfortable.

And keep on blasting me here for my other 'offenses'. I would rather get blasted here than get blasted before the panel. It is providing me a much better understanding of the processes.

 

[jberryhill]

Wait a minute, when you said "received a complaint"... you meant that they filed an actual UDRP complaint?

"[...] stating that the appendices which were part of the complaint represented ALL communications between the parties followed by a sworn statement. But they seemed to have left out the communications that were adverse to their case."

Perjury. Book 'em, Danno.

At this point, it is sounding as if you had made some kind of demonstrable preparations of some kind. Like many questions in this forum, focusing on the complainant and their trademark claim is not as critical to these disputes as focusing on why you registered the domain name, and what you can show, in black and white, you did in furtherance of your stated intent to use the domain name for purposes connected with the generic meaning of the term.

And being able to add that they knew about it and they lied to the Panel by omission, is helpful.

 

[DaddyHalbucks]

Chevron is a famous registered trademark.

.BIZ is for business.

There is scant evidence of legitimate use.

They are a huge corporation with copious resources.

It will be a steep uphill battle.

 

[zouzas]

Originally posted by HOWARD
Zouzas, you're missing John Berryhill's point. It is one thing to INTEND to do something with nothing to show for this "intent", and it is another to actually put up a working site. it generally does not take a year to do so. Though John and I are both on the side of the domain holder in most cases, this one would be extremely hard to defend when there is no EVIDENCE of the intent.

i agree with both of you but the difference comes in which is evidence that this particular person is in the military and is well versed with chevrons,,,,as opposed to someone completely unrelated to the military and has no idea what chevrons are and simply came up with the notion of chevrons to defend the case,,,the case would be much different if this person was in the automotive line of work or some other line ofm work and was trying to say he's using for chevrons for military,,,
i agree not having an active site isn;t good but looking at the circumstances of the persons background does help his case,,,,

 

[pljones]

Bill,

Find yourself capable counsel, such as John, to help defend your case. Putting up a defense and showing up in the UDRP is half the battle. Failing to show up or submitting a badly worded response doesn't do you any favors, and will most likely result in the loss of the domain name.

 

[wmlagna]

Again, thanks for your input. This whole domain dispute area is new to me, and I was hoping to avoid it altogether. But ChevronTexaco has decided to go after me. I did notice that in all of their previous cases, the respondent failed to show, and they won by default. I am not pursuing this with religious fervor, and perhaps I should be. I do understand the complainants' point of view, but I am not particularly sympathetic to their choice of trademark names. All of the other mega corporations understand the value and use of a frivolous or novel mark, as opposed to the use of an extremely common word, or so it is within the military. It seems to me that they might eliminate all of this sort of thing by using their new name, ChevronTexaco. At any rate, there are over 300 companies doing business under the Chevron name in the United States. There should be room for another, especially one selling chevrons under the chevron name. It seems to me that one can sell shoes, or furniture, or buttons or cars under each of the common but trademarked terms. So why would it be that one can not sell and trade in chevrons under the chevron name? I find this concept most unusual.

Comments are appreciated.

 

[jberryhill]

"such as John"

Count me out on this one. Based on the wording of his initial post, it appeared to me that he had gotten some kind of a letter and was mulling over hypothetical ways in which a UDRP could play out.

The relative strengths and weaknesses are sketched out in the discussion above. Ultimately, these things often boil down to a credibility contest. Going in with a mark of the variety where nobody has to scratch their head and think, "Gee, I wonder who the complainant might be", then it is clear that the Respondent has to offer something of substance - and preferably something that can be independently confirmed.

 

[dtobias]

My intuition is that having an actual web site up under the domain, which makes sensible and noninfringing use of its name, would be vastly better for a UDRP defense than citing some vague plans to develop one in the future.

 

[wmlagna]

Actually, I had developed a web site on this topic and it was up on the .mil net. DOD closed the .mil net to increase security (most of it is off limits to all but certified users), so my intention was to move it, at least in part, to the .biz name. But I have been working on other sites and this was a lower priority.

After Chevron contacted me, I sent them the site, which they ignored in their UDRP complaint. However, I have the record of sending the site, and there was no mistaking the content. There is a recent ruling against trademark holders that do not fully disclose such information.

Also, there is a recent ruling (beech-nut) that states that it is understood that it takes time to develop and apply a domain site, and any progress toward this end prior to the complaint is sufficient to demonstrate the lack of bad faith.

I recently came across a court ruling that stated that any trademark based on a common word, irrespective of whether the trademark is indisputable or not, is not afforded any protection whatsoever when the mark is used as a domain name (or as part of a domain name) in a legal offering of goods commonly associated with the word.

This is not my area of expertise but it is interesting. there are many other things that I would rather do than prepare a response!

 

[jberryhill]

"This is not my area of expertise but it is interesting. there are many other things that I would rather do than prepare a response!"

You are on the right track. Make sure to note where the UDRP itself refers to "demonstrable preparations to use" the domain name as evidence of legitimate rights or interests. And by "demonstrable", whatever you submit had better establish very well the date you had developed it and/or be supported by sworn statements by others.

One common mistake that a lot of self-filers make is that they assume the panelists know the Policy. There is a *reason* why complainants are required to send a copy of it with the complaint. Many panelists do not understand or follow the terms of the UDRP, because they sort of do this by the seat-of-the-pants and don't actually read the terms of the UDRP itself.

So, you should structure your response to follow the points of the UDRP in order. Depending on the circumstances, an outline I start with looks like this:

I. Overview
- just three or four sentences that encapsulate the issues of the dispute.

II. Identity or Confusing Similarity
- even in disputes where the complainant does have a trademark, it is a good entree' into the rest of the response to point out the limits of that trademark and the fact that it is a common word, aside from its trademark use.

III. Legitimate Rights or Interests
- Some panelists think the respondent has to have a trademark right to win on this point.

I always start this section with something along the lines of "The second requirement of the Policy is for the Complainant to prove the Respondent has no legitimate rights or interests in the domain name. Under this prong of the Policy, 'legitimate rights or interests' are not limited to trademark rights, but are intended to encompass any legal or equitable right, such as a reliance interest established by demonstrable preparations to use the domain name."

IV. Bad Faith
- The Policy lists a couple of non-limiting examples of bad faith. Recognize that they are examples, but walk through each of them anyway, and demonstrate that none have been proven by the Complainant. Then, you move into again explaining your purpose for registering the domain name and how it is in accordance with the generic meaning of the word.

V. Complainant's Bad Faith
- When the Complainant has done something wrong, which is not unusual, then you want to tell the Panel that they've been lied to, and explain exactly how and why the Complainant lied to the Panel in order to conceal their knowledge of your legitimate rights and interests and lack of bad faith in the domain name.

VI. Summary.

Hit each of your points with a single sentence. The complainant has failed to prove lack of legitimate rights or interests, because you have shown your demonstrable preparations. The complainant has failed to prove bad faith because you have explained your reasons for registering a common word for use in connection with its ordinary meaning. Additionally, the complainant has engaged in deliberately attempting to deceive the panel and making false statements under oath in the proceeding. For these reasons, you request that the panel deny the complaint.


Finally, you MUST request and pay for a three-member panel. The rules give you the "option" of requesting a three-member panel. Without going into a whole lot more explanation about the dramatic differences in outcomes between one and three member panel UDRP cases, I know that Ari, Howard, Steve, and the other lawyers here who do these things will tell you that defending a UDRP without a three-member panel makes as much sense as having sex with someone you just met and not using a condom. It is simply too risky.

 

[wmlagna]

Superior advice. I did notice that you included the policy as attachment 1 in one of your responses. The purpose was not at all obvious to me.

I suspect the selection of the 3 panelists is equally important.

This effort seems an uphill battle to me, but one worth pursuing. From the decisions online, it appears that in about 70% of the cases, respondents fail to respond. I noticed that the complainant has won their last 3 cases uncontested.