Someone trying to take your domain?

[leadology]

Just remember these three rules from ICANN:

"All elements must be satisfied before a disputed domain name will be transferred to the Complainant. If all three elements are not satisfied the request for transfer claim will be denied. The three elements are:

1. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in respect of the domain name.
3. The domain name has been registered and is being used in bad faith."

So...the comlainant must prove ALL THREE ITEMS. If they miss just one, the respondent will prevail.

 

[katherine]

Problem is, establishing bad faith is pretty much at the discretion of the panel :worried:

 

[Theo]

RegisteredInBadFaith.com is available

 

[leadology]

I personally have found the ICANN panel to be fair and unbiased. For me they have done the job they are entrusted to do. As far as "bad faith" goes, I would imagine that most folks know at the gut level what constitutes bad faith yes?

 

[flamewalker]

You simply have to ask yourself why you registered it... was it to make money off someone else's name? If so, you lose. Did you register it because it sounded like, or was exactly like, someone else's name? If so, you lose.

I think most people know when they register something in bad faith...there is room for ignorance but once pointed out what bad faith is, its not hard to figure out.

 

[rebirth]

Define bad faith. Against the law or moral? Anyway, the trademark owner will always be the winner.

 

[flamewalker]

IMO bad faith has a bit to do with both. You know that typo of the ever-popular site will bring in money, but its morally wrong (after all its not your site or name legally) and (at least technically) against the law... TM and anti-cybersquatting law.

And no, TM owner isn't always the winner... it depends on the circumstances and the facts 'on the ground' as they say. Clear bad faith and cybersquatting though (parking that typo for instance) is a good way to get a quick kick in the brass monkeys. Generally unless the complainant can show solid bad faith, they may not necessarily win, especially if the registrant can show significant non-infringing use and good faith.

One example is TM's of differing services on the same term... the same term can be TM'ed for multiple uses. Who wins at that point is up to who has more money I guess.

 

[Theo]

RegisteredInBadFaith.com is available

Not anymore

 

[Meridian66]

How about this scenario...

You registered a domain for personal use several years ago in the late 90s, and now a billion dollar company comes along in 2008 with a major project, with a budget of several hundred million dollars, that happens to be branded with a name identical to your domain. They register all related trademark and service marks.

Would the UDRP protect you from their team of extremely highly paid lawyers, or will they find a way around it?

 

[jasdon11]

Just remember these three rules from ICANN:

2. The Respondent has no rights or legitimate interests in respect of the domain name.

Is there a list of what constitues the above?

BadFaithRegistration.com is available - I'd of got it, but I don't want Acro's lawyers chasing me!

 

[leadology]

My experience has been that ALL three rules must be met just as stated on the ICANN site. The fact that you haven't developed a domain you acquired in good faith should change nothing.

Also, you might want to make yourself aware of the term "reverse hijacking" with regard to domain ownership.

As to the term "trademark" in relationship to domains. Folks tend to use the term trademark that has anything even remotely close to their name. So, it is good to know what their specific trademark covers exactly. I will just use an example like this: I trademark "pinnacle" with relationship to my business which is lending. Pinnacle is also trademarked with relationship to food delivery. Another company trademarks pinnacle with relation to rocket parts. They are all trademarked and protected but only as far as the definition of their trademark. Make sense?

It doesn't matter the size of your opponent. The three rules must be met.

My belief is that law firms know this of course but remember they are working on billable hours. If you do some research, you will see the same domains over and over have been taken away by a company but never registered by them...simply allowed to run out then become available again to the market. Further research will show in some cases that the very same law firm who won the first time also goes after the second owner. So a couple of things are happening. The client is not vigilant in maintaining the domain they said they so badly wanted and the firms are not effectively advising their clients to maintain ownership. Why? The answer seems obvious if you take a second to look at it.

 

[flamewalker]

How about this scenario...

You registered a domain for personal use several years ago in the late 90s, and now a billion dollar company comes along in 2008 with a major project, with a budget of several hundred million dollars, that happens to be branded with a name identical to your domain. They register all related trademark and service marks.

Would the UDRP protect you from their team of extremely highly paid lawyers, or will they find a way around it?

As long as your usage does not conflict with their TM, or you can show common law TM for the same use prior to them coming along, then you [/i]should[/i] be safe. Unfortunately you are at the mercy of whatever panelist might be feeling that day/week/month. Which occasionally is so bone headed its not even funny. Prior registration to the TM will help a lot though.

 

[EnricoSchaefer]

If you register before someone has trademark rights, you win - slam dunk - no issues.

 

[steveatvillas]

If you register before someone has trademark rights, you win - slam dunk - no issues.

You couldn't be more wrong with your statement:

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0062.html

 

[EnricoSchaefer]

According to the decision you cite, the Respondent acquired the domain name after Complainant had established trademark rights.

While the initial registrant registered the disputed domain name in advance of the Complainant establishing trademark rights in CREDITKEEPER, he apparently made no active use of the disputed domain name for more than three (3) years following its registration, and then only after the Complainant had launched its “mycreditkeeper.com” website. The disputed domain name was then used to direct internet users to a pay-per-click website advertising credit-related products or services that appear to compete with those offered by the Complainant.
Approximately eight (8) months after the launch of the website to which the disputed domain name resolved, the Whois registrant information for the disputed domain name was changed to cloak the identity of the actual domain name owner. Within weeks of this change, the Respondent acquired the disputed domain name under the cloak of the privacy service for the not insubstantial sum of $48,000 (USD). The Respondent continued to operate the pay-per-click website, advertising credit-related products and services that competed with those of the Complainant. Unable to determine who the actual domain name registrant was, the Complainant sent a cease and desist letter to WPPSI on or about September 27, 2006, which neither WPPSI nor the Respondent ever acknowledged or responded to. Eventually, on January 16, 2007, a Complaint was filed with the Center, naming WPPSI as the respondent. Within days of the filing of the Complaint, another change in the Whois registrant information was made, with Domain Manager replacing WPPSI.

The initial domain registrant registered 3 years before trademark rights. The UDRP Respondent purchased the domain after Complainant launched its “mycreditkeeper.com” website (which arguably created trademark rights in the domain).

The Panel is not persuaded from the record of the case that the Respondent could have formed a good faith belief that the disputed domain name’s value was attributable to its generic or descriptive characteristics. The domain name <creditkeeper.com> is not itself a dictionary word, and even a cursory search on search engines like Yahoo! or Google would have shown that CREDITKEEPER was the Complainant’s trademark.

The UDRP requires bad faith intent exist at the time the registrant registers the domain, as well as bad faith use. Note that WIPO, for instance, shows that there are no decisions for transfer without registration in bad faith.

 

[flamewalker]

If you register before someone has trademark rights, you win - slam dunk - no issues.

Wrong. Definitely not a slam dunk in many cases. Most cases maybe... but most likely, you will be ok. Depends on your usage. For instance if you have a name and use PPC, and someone comes along and gets a trademark for the same term, you better make sure you verify/change your ppc to not display competitive ads for their TM, or they very well may have a case. Unless of coarse its something along the lines of diamond.com for diamonds, or apple.com for apples etc.

Oh, and don't try to sell that TM name to the owner!

 

[steveatvillas]

Well, I suppose I take issue with your rather broad brush statement that a domain reg before a trademark reg is a "slam dunk" with "no issues".

It just isn't as simple as that.

And the respondent in the above cited case might have prevailed if his/her actions would have been different. Take, for example the instance wherein an entity has common law rights to a mark through usage.

I believe it is safer to say that each arbitration has specific determinations, based on the evidence presented and the panels' interpretations of that evidence.

Moreover, as panels decide more cases, there is being built now a body of law and precedents that do not favour the casual, or professional, domainer...rather the trademark holder. It's becoming a bit more tricky these days, IMHO.

But, hey, that's just me.

[QUOTE Oh, and don't try to sell that TM name to the owner! [/QUOTE]

Too right, mate. Them days is gone fo'evah.

 

[EnricoSchaefer]

Flamewalker: You are correct that there are still things you can do to put yourself in a potential bad faith situation. But registering before trademark rights exist is still as safe a position as you can be in for most domain names. And there is always the prospect of a bad panel decision.

 

[Meridian66]

Oh, and don't try to sell that TM name to the owner!

Too right, mate. Them days is gone fo'evah.

From the TM owner's perspective then, how could they acquire the domain without resorting to further legal action? If a domain owner is fearful of selling it to the TM owner due to the significant risk, wouldn't this encourage a serious TM owner to continue to pursue expensive legal options when they really would have been happy to just pay a good price to the owner and purchase the domain without any additional hassles?

 

[flamewalker]

Yeah its a sticky spot... anyone know if there are any implications of a TM owner offering an amount less than UDRP proceedings or even the registrant's cost, and if rejected then going to UDRP? IE - does it hurt their claim at all?