Received C&D email on a cityname.biz

[Leading Names]

The city is "North Vancouver". The company in question is CLR communications. I really can't see their case. why don't they go after the .org and .info as well then? How can someone trademark a city name and prevent anyone else from using the city name? It would be like the owners of Chicago.com trying to take away Chicago.biz. The lawyer responded in an email that in a few days the company will start a 'filing' to get the domain back. any help or advice here appreciated.

I Checked the US and Canadian trademark database for both "north vancouver" and "northvancouver", and no records were found. If they are claiming common law trademark rights on a city name, that's flimsy as hell. Even with a TM I suspect their case is very weak.

The parked .biz seems to be pulling ads related to the city, not them - which is also good.

- Rob

 

[draggar]

I should of probably said ones sent via email are often fake. Anyone can send one. Ones sent via registered mail are more often the real deal.

I recently got one and even though it was sent in an email they also mentioned in the email that they had overnighted me a letter via DHL, which they did.

In the email was just a "sent to (address) via DHL overnight" and had a PDF document in it.

 

[DropWizard.com]

The name is completely generic and geo. Regardless of their past use of it that doesn't entitle them to unlimited future rights.

And the approach is completely unprofessional.

Never, ever ever call the lawyer or anyone who claims to represent. If you feel you must respond a simple "no" email suffices.

That way you never get into he said, she said or he asked us for money etc.

In this case a no and a request for the TM # they are basing this claim on shold be enough to alert them you're not an idiot.

Unless of course their client is north vancouver itself. Generally the cities or municipalities does have tm's on their names.

 

[wolfis.com]

and they admitted they owned the domain but let it expire - what a joke !

 

[hugegrowth]

The last few posts are basically what I think too. I just want to deal with this instead of ignoring it so it can come to a conclusion. If they try to take the name I'll be looking for a lawyer to defend me, does anyone know the costs involved, and is there a good lawyer here that could potentially take it on? If so please PM me.

 

[wolfis.com]

between $ 1500 and $ 2000 usually - if nessesary that you really need on please pm me.

 

[Deleted member 5660]

If you "usurped" it they should be able through their registrar and not involve you.

 

[hugegrowth]

between $ 1500 and $ 2000 usually

that's the same range I was thinking

 

[marcorandazza]

If you "usurped" it they should be able through their registrar and not involve you.

Depends on the registrar. GoDaddy seems to care if your name has been "usurped." eNom, on the other hand, has a complete "not our problem" policy.

 

[thevirtual]

Is there a tm for the city? If not, don't even respond.

Agreed. They are just trying to backtrack after letting their domain drop.

 

[marcorandazza]

In this case a no and a request for the TM # they are basing this claim on shold be enough to alert them you're not an idiot.

Not necessarily. Trademark rights grow from use, not registration. Requesting a TM # might make them think that you don't understand that key issue.

I agree that their rights, if any, are weak. But weak does not mean non-existent.

 

[Theo]

Depends on the registrar. GoDaddy seems to care if your name has been "usurped." eNom, on the other hand, has a complete "not our problem" policy.

Was the domain stolen? No. It expired. It was not renewed. It was abandoned.

GoDaddy will duly charge your credit card a $29 fee if a domain is challenged via the legal channels.

Not necessarily. Trademark rights grow from use, not registration.

You cannot register a mark without prior use. To prove use without any registration, that's a challenge. In the case of domains, it requires a legal process via the WIPO.

 

[marcorandazza]

Well, the word being tossed around here is "usurped." I don't know what really happened... but it looks like the North Vancouver people failed to renew it. That doesn't necessarily mean it was abandoned. Look at this case.

http://www.arb-forum.com/domains/decisions/1124467.htm

However, in this situation, it seems like the North Vancouver folks waited an inordinate amount of time before trying to do something about it. That plays in hugegrowth's favor.

Here's something you wrote that needs a bit of correction:

You cannot register a mark without prior use. To prove use without any registration, that's a challenge. In the case of domains, it requires a legal process via the WIPO.

You actually can get a registration before use under Section 1(b) of the Lanham Act. It is called an "intent to use" registration. However, these are of little weight in infringement actions. Proving use without a registration is a "challenge" but not much of one. All you need to do is show common law rights.

 

[Theo]

It's obvious that you're not a lawyer, as you pay no attention to details I said, you cannot *register* a mark without prior use. Granting a mark filed under prior use does not get you a registration.

Well damn, I hit submit too fast

I meant, "Granting a mark filed with intention to use" does not get you a registration. You cannot use the (R) mark until your use has been established.

 

[marcorandazza]

Wow, Acro. Is there any reason for such nastiness?

You are correct that you can not use the (R) until use has been established. Nevertheless, you can register the mark before it is used. See 15 USC Sect. 1051(b).

A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.

Also, you might want to consider the other half of what I said about common law rights. They aren't all that difficult to prove if you know how to do it. I learned that, and many other nifty facts in law school, in quite a few trademark cases, and I teach these nifty facts to my students now (I am not only a practicing lawyer, but I teach trademark law as well).

Any questions?

 

[Theo]

But I wasn't trying to be nasty. Sorry if you took it as such (man, if I try to be nasty you will know it LOL).

I just want to be accurate. You continue to be inaccurate in your statements: filing for registration prior to use does NOT give you a registration certificate and does NOT give you the right to say the mark is registered and you CANNOT use the (R) mark. You simply set forth your intention to register the mark and you are given a period of time during which you must use the mark in commerce in order to proceed with a proper registration.

 

[marcorandazza]

No offense taken. I think you're right, yet again, that you don't get a registration certificate. And of course you can't use the (R) since, presumably, you have no products in commerce upon which the (R) could appear!

What I am trying to get through to you is that a registration could pre-date use. Then, lets say that a company files an ITU. They get the ITU, and thus a "registration." Then, a domainer registers a domain that corresponds to that mark that has been reserved under the ITU procedure. Then, the company launches their product and gets their (R).

In that scenario, the domainer might still lose.

 

[Theo]

Thanks. I enjoy playing devil's advocate (wait till John Berryhill comes to this thread!)

The UDRP process is far from straight-forward; there are so many different decisions based on similar criteria (that you'd expect them all to have the same outcome, yet they do not.)

To complement your ITU situation, what happens when Joe Domainer registers domain.com before Corporation files for tm registration of the mark? Yet, when their mark is registered, it claims use BEFORE domain.com was registered by our friend Joe?

 

[marcorandazza]

"what happens when Joe Domainer registers domain.com before Corporation files for tm registration of the mark? Yet, when their mark is registered, it claims use BEFORE domain.com was registered by our friend Joe?"

In that case, Joe Domainer loses on bad faith registration -- if the use existed before domain.com was registered and there is reason for the panel to infer that Joe knew about the mark -- or was willfully blind as to the mark's existence. Of course, Complainant must also prove bad faith use.

Unfortunately, sometimes the domainer gets unfairly hosed regardless. Speaking of Berryhill. In this case, he truly did get unfairly shafted. http://wipo.int/amc/en/domains/decisions/html/2008/d2008-0387.html (Aspis.com case).

 

[mulligan]

Apologies HG and to those who are discussing the issue at hand in a reasonable, intelligent way ...

Hey man do like me...use all of these C&D letters to clean your *** when you are in the toilet.
They are perfect for this use.

I don't said to ignore all C&D, I only said 99% of the C&D i received are false a I use them in toilet :lol:
So it's not so hard find the 1 true and in this case...I think this C&D in this thread is false.

All .. or just 99%? *I'm supposed to put a 'lol' or something here ... Right?