The USPTO is the Chicken and CyberSqatting is the egg

[RoToHead]

Although Al Gore may believe he invented the internet, I believe that ICANN and the CyberSqatting Act followed copyright and trademark law, not the other way around.
The USPTO is the Chicken and CyberSqatting is the egg on the face of those infringing on TM registration.

Once the USPTO evaluates, challenges, clarifies and if eventually certifies a "secondary" meaning of generic terms...like Micro and Soft... they have the legal authority to issue a Service or Trademarks granted USPTO. Generic terms when used in commerce may take on a secondary meaning, others like

Holiday Inn
Fruit Loops
The Clock Works
Micro Soft
Quaker Oats

I have read most of the dnforum legal posts (very good – it takes time to go through them, but worth it) and have tried to get up to date since a "Leading DN seller is offering my TM DN for sale" they simply removed the "The" off my name. These sites have been helpful to me and seem authoritative.

http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm

is an informative site as well as the www.USPTO.gov

I am a novice here so I know that I may have a narrow focus - especially since I am looking at this from my own interest and perspective. Thanks for hearing me out.

This is how it all came about. I started and incorporated my business in California in 1996. I incorporated the name, secured the company name as the DN, and have a solid and successful business going since (ttL). I filed (1996) and was granted Registration (1999 and 2001) of the TM, or Service Mark, from the USPTO more than 5 years ago. I paid hard-earned money to get good counsel, set things up correctly and to build the business name!

I recently saw that an exact extraction of my DN is being offered for sale by one of "the worlds leading" domain name (re-)sellers.

I called and then sent a C&D letter with a copy of the TM Registration - gave them 14 days to C&D and respond - no written response – now after two weeks and the name is still being advertised for sale and used to link to similar businesses as mine from their site.

Their own TOS define this behavior as a violation.

As I have been reading, it seems that the UDRP can help resolve this, but does agreeing to use UDRP limit or forego my chances for relief under TM infringement action?

 

[RoToHead]

That is true - the basis of Cybersquatting Act and ICANN was for copyright and trade maqrk infringement in the evolving internet cosmos
In the US it goes back to 1787: Based in tha U.S. Constitution:

According to Article I, Section 8, Clause 8 of the U.S. Constitution, "the Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."


1790: Copyright Act of 1790 decreed by the US Congress in 1790:
The First Congress implemented the copyright provision of the U.S. Constitution in 1790. The Copyright Act of 1790, An Act for the Encouragement of Learning, by Securing the Copies of Maps, Charts, and Books to the Authors and Proprietors of Such Copies, was modeled on the Statute of Anne (1710).

http://www.arl.org/info/frn/copy/timeline.html if you were curious

 

[JMJ]

While I understand your frustration you have to realize one thing. There's a bit of a difference between a distinct trademark and a trademark. Google is a distinct trademark for the search engine. "The Man" isn't. So if you owned the trademark on "The Man" and owned TheMan.com and I was the owner of man.com. You wouldn't have any ground to stand on aslong as I wasn't using man.com in direct competition to your business. Even then Man is a generic word so ideally we could both be sellers of mens clothing. Now if your trademark is TheGoogle.com and you were a household name and I owned google.com depending on what I was doing with that name and when I registered it you might have a case.

There are many companies around the world with the same name. You must keep in mind aswell that even though most of us in the US think our laws govern the world, they don't. Google themselves found this out with GMail.com.

I recently had a guy send me a C&D for a .info I own. He owns the .com .net and .org mabey even the .us not sure. Anyway this term is very generic. Someting along the lines of "custom wheels" so the term itself is generic and directly relates to the specific category. His arguement is he owns the trademark on that term. Even though I probably should have just ignored his email I responded back telling him exactly this and needless to say I haven't ever heard back.. Since he had no website I can only assume he was trying to bully me out of the name so he can own all TLDs. Point is just because you own a trademark doesn't give you the rights to every domain with that particular word. Some people call that reverse hijacking around here depending on the circumstance. There are companies out there who try and trademark a term just so they can obtain the .com of a name, reverse hijacking.