Received C&D email on a cityname.biz

[hugegrowth]

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

So far Godaddy hasn't been involved, I've heard about that fee they charge though. I'll post if it happens. I'll also post whatever else I can about how this unfolds.

 

[Sonny Banks]

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



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

No lol there.
I'm serious.
I have many typos of generics with traffic so I received some C&D.
But I know what domains I have one by one, I study hours before take any typo in my portfolio.
So when they send me C&D letters I know 99% they are or false or they want just buy from me the domain...in front of me now I have 3 C&D well...they all bullshit (just some guys that try to have for free the domains they let expire)
Just one time in my life a serious company writes me and in that case I just sold to them the domain for $1000 in one morning.
If you are sure what domains you have you can stay safe.
With LLL.com is another story...LLL are most dangerous.

 

[TheLegendaryJP]

WOW... I just read nearly 2 pages of horrid advice and from some members who I would thought knew more.

Firstly, you still havent specifiedif you infringed !

Secondly, city name or not.. if I had Chicago and used Chicago as my company name to offer anything, say toothpaste and had a TM on tiop of it and could prove us, filing etc. you CANNOT use Chicago to advertise toothpaste !!!!!!

So your theory is crushed, city name or not.

Ever consider the other names are untouched as they do not or have not infringed ?

Only you know these answers, I am not judging your use but I had to reply after ready 2 pages of crap.

 

[Sonny Banks]

Sorry man but if I know what domains I have, if I know I don't own any Tm domain, if I know I don't infringe nothing with all my domains can you tell me what C&D they can send me?
A crap C&D only.

 

[TheLegendaryJP]

Sorry man but if I know what domains I have, if I know I don't own any Tm domain, if I know I don't infringe nothing with all my domains can you tell me what C&D they can send me?
A crap C&D only.

I hear you but dont jump to conclusions on his past use.

Also the sad sad sad fact is now nearly no name is 110% safe even if at least parked. Should they take it further.

My advice is the same, if he is clean of infinging and thinks its justifiable to fight, good and I hope he wins. If it isnt try to at least get something more or as you said wipe your butt with it..BUT if it escalates he may be forced to spend money to defend. For a .biz ? He needs to play it smart.

 

[hugegrowth]

there is nothing to infringe on in this case, they run a city information site on the .com, I have the .biz parked using 'north vancouver' as the keywords (just like the .org and .info are doing) so it probably shows ads relating to travel, hotels, etc in north vancouver. there is no 'product' that they are using north vancouver for other than the city, and you most likely can't tm a generic name of a city for use in city things. Just like if I started a travel business and tried to trademark the word 'travel' for it, preventing any other travel business from using that word - you couldn't do it. I probably also couldn't trademark the word 'apples' if I were selling apples, preventing any other fruit grower from using the word. So no, I don't believe I infringed.

It looks like what happened is they were using the .biz to point to their .com site, forgot to renew it, it dropped, I saw it was available and regged it. because they owned it for a few years they seem to think they are entitled to have it back. I didn't know they existed, I never tried to contact them or offer the name for sale to them. I figured the previous owner dropped it because it was a .biz, which isn't a great extension to most people. I looked at it as a nice local cityname domain that I could develop for real estate or information on North Vancouver, a great keyword on a lesser extension. Even though it's a .biz I'm leaning towards defending it because it's the right thing to do. Too many domains get taken away from people that shouldn't, and I don't want this to be another of them.

If someone developped a city information site on Chicago.com, does that prevent other people from making a city info site on the .net, .org, .info, etc? That is the comparable situation to my situation.

 

[theinvestor]

do not get bullied ..fight it out

 

[Theo]

Obviously you didn't see that:

NorthVancouver.com is a portal about ...North Vancouver. The owner is pissed that the .biz implies some potential competition. His claims about a mark are ludicrous.

 

[marcorandazza]

It seems obvious that you are correct. The smart money is on hugegrowth in this dispute.

Nevertheless, if I can offer any advice at all it should be this: Always be willing to see any possible weakness in your own case. The more objective you can be about evaluating your case, the better decisions you will make.

There are times to stand on principle and to throw logic out the window. However, that is rarely the case when it comes to something like a domain name. I'm not saying to throw in the towel. But, the greatest way to make bad decisions is to get overly emotionally involved in what is ultimately a very small commercial dispute.

 

[allroundguy]

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.

It is perfectly possible to win a UDRP with WIPO and then get imprisoned for TM infringement.

Trademark indeed grows from use.
Registration is advised, but not requested or imposed.
Registration needs to be granted.
http://www.uspto.gov/web/offices/tac/doc/basic/register.htm

There can only be one.
If there there are domains with equal generic-only SLD and different TLD's, there should be no problem.
If it is about domains with equal non-generic or mixed (generic + non-generic) SLD with different TLD's, it should be enough to have one of them in use for a business to get TM protection.

Principles of Common Law can be accepted to prove or disprove necessary elements in cases before any office, including the USPTO.

People who conduct some activity while not lawfully registered if that is compulsory in their state, are busy illegally and cannot obtain a trade mark.

So, unofficially exploiting a domain via a web i.e. without the required registrations/permissions etc. can be an element to prove bad faith over the whole line.
TM and UDRP issues are probably lost before they even started.

Some lecture:
http://www.businesswire.com/news/google/20050829005397/en
http://tess2.uspto.gov/tmdb/tmep/1200.htm#_T120903m
Scroll down to "domains"

IMHO there is no reason why city names can be considered to not represent legally registered activity.
So city names are all TM'ed.
However, I found no evidence that it is forbidden to add generic terms to any title conatining a city name, provided that it does not give the intention to represent the city or an office of that city.

IMHO it is not allowed to use city names if not mixed with terms that clearly make difference from the city.
The accent may not be on the city.

In this thread it is about a "City" SLD and not about a "City + generic term" SLD.
I would not recommend to challenge the city in question.

And, yes, the www is infested with TM infringements.
That probably means that the rightful TM owners are not aware of why they have less return than possible/expected or that they simply did not take the effort to file a claim.
IMHO an avalanche of TM and WIPO cases could appear any moment.

Domain trading (like any other business) requires homework.
Some people seem to prefer to have their homework done for free.
Who can't pay a lawyer, should (self!) read the rules of ICANN, IANA, W3C, WIPO, USPTO, etc.
That's free ...

 

[hugegrowth]

The city doesn't own or run the .com site, it's a media company - look at all the advertising. They call themselves the 'official' site of North Vancouver, but the actual city has their website at http://www.cnv.org

------------

Registrant:
c/o CLR Communications Ltd
100 Park Royal
Suite 200
West Vancouver, BC V7T 1A2
CA

Domain name: NORTHVANCOUVER.COM

 

[marcorandazza]

Also at northvancouver.ca

 

[tricolorro]

Here is the email I received, the domain is a cityname.biz. Do you think they have a case with a generic city domain? I bought this domain as a fresh reg when I saw it was available, and it's currently parked. Looks like they own the cityname.com and used to own the .biz
---------------------

I represent the principals of XXXXXXX Ltd., the rightful owners of “cityname.com”, and the original owners of “cityname.biz”. My clients view this domain as integral to their brand, and wish to reclaim this domain to which you have usurped. My clients are willing to prove that they have been lawfully using this site since 2001, to which you now registered and squatting on. This is evident by your use of this park page:

http://www.namedrive.com/contact_owner.php

Before they escalate this matter, they (the principals) wish for me to communicate this issue with you and perhaps come to a mutual resolution without litigation. In return for the transfer of the URL back to their domain, they will compensate you for the registration fee of $10. These terms are not negotiable.

You have until September 3rd, 3:30pm to respond before further actions are taken. You can reach me at the number below or via email.


Best Regards,

---------------

Hi,

I won't deem to tell you what to do but I will share what I would do if
I was in your place.

I would not respond.

Here's my thought process as I read your posting of their email.

"Here is the email I received,the domain is a cityname.biz. Do you think they have a case with a
generic city domain?"

I know they are bluffing and don't have a legal leg to stand on.
I know they are trying to intimidate me.
--
"'and the original owners of “cityname.biz'.

Both your clients and you are misinformed.
You cannot own a domain name.
You can only get control for the period of time that you have a paid for registration.
If you do not pay for the registration or the renewal, you lose control.
There is NO ownership.

Yes, your client was the original Registrant (owner).
They let the domain expire.
I am the new Registrant (owner).

Your client was in effect Foreclosed upon.
They lost the house.
Someone else is now living there.
--
"My clients view this domain as integral to their brand..."

And I consider this domain integral to my plans.
-----
"..."My clients"...wish to reclaim this domain to which
you have usurped."

Unfortunately , your clients let the domain expire.
I did NOT usurp the domain.
I registered a freely available domain that was available for any and all to register.
-----
"My clients are willing to prove that they have been lawfully using this site since 2001..."

And I am also lawfully using the domain since I legally and lawfully registered it.
---
"and squatting on."

Look up the definition of squatting.
I control the domain.
I can not possibly be squatting on it...unless your client had
exclusive trademark rights, either registered or through
common use...which they do not.

Your client cannot register or claim NorthVancouver as a trademark if referring to the city itself.

It's been tried before...and failed.
See Barcelona.com case.
----
""...squatting on." "This is evident by your use of this park page"

The Parked page is temporary until I finish my current projects.
Additionally, it has been declared in numerous WIPO decisions that
parking a domain per se is NOT evidence of bad faith domain registration.
---
" In return for the transfer of the URL back to
their domain, they will compensate you for the registration fee of $10."

The domain is Not For Sale.
Your client was never approached with an offer to buy this domain.
-----
"Before they escalate this matter,..."

You have until September 3rd, 3:30pm to respond before further actions are taken.

Proceed as you wish.
---

As I said I wouldn't respond.

I have received these type of threats before and I felt certain I did not register an infringing domain.

If I felt they were right, I'd transfer the domain to them without any
charge whatsoever.

There are so many trademark over-reachers, covetous late-comers
and those that let their domains expire that will unrightly try to take
domains you control through intimidation, arbitration or the courts.

If I had your domain I believe their only tactic is intimidation.

Unless they are stupid or extremely arrogant , they have to know
they have no legal standing

Be fair when you are wrong...but vigorously protect yourself when
you are right.

Just IMHO,
Patrick

 

[Sonny Banks]

Hi,

I won't deem to tell you what to do but I will share what I would do if
I was in your place.

I would not respond.

Here's my thought process as I read your posting of their email.

"Here is the email I received,the domain is a cityname.biz. Do you think they have a case with a
generic city domain?"

I know they are bluffing and don't have a legal leg to stand on.
I know they are trying to intimidate me.
--
"'and the original owners of “cityname.biz'.

Both your clients and you are misinformed.
You cannot own a domain name.
You can only get control for the period of time that you have a paid for registration.
If you do not pay for the registration or the renewal, you lose control.
There is NO ownership.

Yes, your client was the original Registrant (owner).
They let the domain expire.
I am the new Registrant (owner).

Your client was in effect Foreclosed upon.
They lost the house.
Someone else is now living there.
--
"My clients view this domain as integral to their brand..."

And I consider this domain integral to my plans.
-----
"..."My clients"...wish to reclaim this domain to which
you have usurped."

Unfortunately , your clients let the domain expire.
I did NOT usurp the domain.
I registered a freely available domain that was available for any and all to register.
-----
"My clients are willing to prove that they have been lawfully using this site since 2001..."

And I am also lawfully using the domain since I legally and lawfully registered it.
---
"and squatting on."

Look up the definition of squatting.
I control the domain.
I can not possibly be squatting on it...unless your client had
exclusive trademark rights, either registered or through
common use...which they do not.

Your client cannot register or claim NorthVancouver as a trademark if referring to the city itself.

It's been tried before...and failed.
See Barcelona.com case.
----
""...squatting on." "This is evident by your use of this park page"

The Parked page is temporary until I finish my current projects.
Additionally, it has been declared in numerous WIPO decisions that
parking a domain per se is NOT evidence of bad faith domain registration.
---
" In return for the transfer of the URL back to
their domain, they will compensate you for the registration fee of $10."

The domain is Not For Sale.
Your client was never approached with an offer to buy this domain.
-----
"Before they escalate this matter,..."

You have until September 3rd, 3:30pm to respond before further actions are taken.

Proceed as you wish.
---

As I said I wouldn't respond.

I have received these type of threats before and I felt certain I did not register an infringing domain.

If I felt they were right, I'd transfer the domain to them without any
charge whatsoever.

There are so many trademark over-reachers, covetous late-comers
and those that let their domains expire that will unrightly try to take
domains you control through intimidation, arbitration or the courts.

If I had your domain I believe their only tactic is intimidation.

Unless they are stupid or extremely arrogant , they have to know
they have no legal standing

Be fair when you are wrong...but vigorously protect yourself when
you are right.

Just IMHO,
Patrick

Set a good antispam filter.

 

[tricolorro]

Set a good antispam filter.

????????????

In response to my posting?

Patrick

 

[DNBA]

there should be monetary damages for making claims for reverse hijacking, if a challenge is failed.

 

[Dave Zan]

Say, hugegrowth, why not contact Zak Muscovitch? Or check his own site
dnattorney.com.

 

[TheLegendaryJP]

I agree Zak is a great lawyer and guy. Knows his stuff.

 

[NostraDomainus]

When the Palm Pilot Corp sent me a C&D (1st, an e-mail followed by Registered Mail) out of their NYC Lawyers quoting some American law (in other words, I was not infringing on their TM, as I am :canada - I responded by phoning them and leaving a message with the attached name telling them to C&D from spamming me elsewise I will report them.

Sending an E-Mail which doesn't apply to me nor is requested is deemed spam and illegal both sides of the border (I believe).

I never heard from them again.

Like many others in this thread, I am not a Lawyer (I did however, find a Domain Law Firm here in Ottawa, called them and told em I was poor (which I am) and asked for a free 15 min consultation - whereby they said the C&D didnt apply to me.) - therefore I do not recommend the above for your situation other than to give you another example with a different angle. There may or may not be parallels to your seemingly dubious C&D.

Best of Luck & Success in All Your Endeavours!

 

[jberryhill]

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."

That is not correct. One cannot obtain US trademark registration without use. Even an allowed ITU will not register until use is shown. Unless and until a Statement of Use is filed, one does not obtain a registration. Hence, it is absolutely correct that registration cannot predate use.

There are a lot of misconceptions about the law relating to ITU's and their relation to domain names. While a registration based on an ITU is sufficient to enjoin infringement that began after the date of the application, one cannot find "bad faith registration" of a domain name based on prospective knowledge on the part of a domain name registrant that a mark would eventually register or not:

http://www.adrforum.com/domains/decisions/1154179.htm

The question for this Panel is what rights had Complainant demonstrated in the mark XOFT on that date? Complainant’s earliest trademark registration is based on an Intent-to-Use application for XOFT, filed on September 16, 2004, which records a first use date of December 2005. While Complainant’s filing date is 12 days before Respondent’s domain name registration, the filing is only based on the intent to use, not enough to constitute rights superior to Respondent’s, when Complainant’s first recorded commercial use is at least 14 months later.

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).

In reference to "he" there, you seem to confuse me with my client. You'll notice from the whois for aspis.com, that the domain name is not transferred, however, and remains registered to the respondent in that case.

There is, of course, a reason for that.