Threatened with C&D, help!

[randomo]

Hi folks,

I'd really appreciate some advice about my first run-in with a C&D.

I own cornerkicks.com. It gets about 1,000 type-ins a year; not a huge amount, but enough to be interesting to a soccer business.

A whois search showed that the owner of cornerkick.com [singular] is Corner Kick International, which runs soccer camps for kids. I wrote and offered them my domain for a very reasonable (three-figure) price -- less than it costs one kid to attend their camp.

After the company president had put me off for a while with promises to consider it, he had his web guy call me and threaten a C&D. They have (so they claim) a trademark on "corner kick" that covers any online usage.

That sounded unlikely to me, since it's such a generic term. I searched at www.uspto.gov and found a variety of trademarks related to "corner kick". Here are excerpts of the one I think they're talking about:

***
Word Mark: CORNER KICK

Goods and Services: (ABANDONED) IC 035. US 100 101 102. G & S: Internet website and other multimedia advertisements offering the business goods and services. FIRST USE: 19970501. FIRST USE IN COMMERCE: 19970501
***

First of all, it's "abandoned", so I doubt it's still in force (but maybe they could renew it). Second, I'm ignorant about trademarks, so I don't know if this trademark applies only to the graphic displayed in that listing or if it truly applies to the words too (I don't know the precise meaning of the term "word mark").

They can't really grab this domain from me, can they? (And does it matter whether I am using this domain for commerce? Right now, it just has soccer links. I'd rather keep it for noncommercial use than have it go to these guys, but even better, I'd rather sell it to some other soccer company!)

Thanks in advance for any advice!

 

[com]

The trademark is not live. The trade mark is for 'Corenr Kick', while you have 'CornerKicks.com'. They have nothing.

What you should not do is offer them to buy you out. Simply state that you are using the name, that you are aware of the fact that their trademark is abandoned and of the differences in the name, etc. Wish them good luck and forget about it.

 

[bidawinner]

http://tess2.uspto.gov/bin/showfield?f=doc&state=e7v97o.2.2


The problem is you offered to sell them THEIR registered trademark..+s



If you had a built a site unrelated to soccer and also didnt try and sell it to them ..then they wouldnt have a case...IMO..

Like this "Corner Kick" tm that makes cookies..

http://tess2.uspto.gov/bin/showfield?f=doc&state=e7v97o.3.1

The bottom line IMO is ..first you have soccer balls on your website then you offer to sell the plural of a register TM to the Registered TM...

Chalk this one up to a learning experiance.. and be prepared to turn the name over if they actually file.. IF they dont then use the domain for a purpose that has nothing to do with soccer .

just my opinion

 

[com]

Heh, the trademark is ACTIVE. Why did you say it was abandoned? Second, B is right, if you offered to sell it to them you are done - that is a sign of bad faith right there.

 

[sitehq]

corner kick is like homerun(baseball) , sweep right (football), fastball (baseball) or jumpshot (basketball)

its an action and the name of a rule in soccer. When the ball goes over the end line, the other team is awarded a corner kick.

doesnt the right to use a generic term like this surmount any "copyright" use of the specific way that corner kick says or images their name.

i'm not an attorney, nor do i even attempt to play one on this board.


Page Howe

 

[jberryhill]

"I'd really appreciate some advice about my first run-in with a C&D. "

The best advice I can offer is not to post the details of your legal dispute on a public bulletin board.

If you look around a bit, you might even find an attorney in this area who lives in Delaware, and drives within about a mile of your house every day.

 

[Ninurta]

:laugh: :yes:

 

[randomo]

The whole "bad faith" thing is so annoying -- it's the OPPOSITE of what happened. I searched out this random company and gave them first dibs on a name with value to them, never dreaming that they would claim a trademark on this completely generic term.

(Sigh.) No good deed goes unpunished.

 

[Ari Goldberger]

Generally speaking, there are a number of UDRP decisions that hold that the registration of common term domain name -- even for the purpose of resale -- is not bad faith and constitutes a legitimate interest. I agree, however, that the safest course of action is never to offer trademarks for sale -- particularly to a tm owner. Let them make an offer if theyr'e interested. But be wary of reverse domain name hijackers on the prowl.

 

[bidawinner]

Originally posted by Ari Goldberger
Generally speaking, there are a number of UDRP decisions that hold that the registration of common term domain name -- even for the purpose of resale -- is not bad faith and constitutes a legitimate interest. I agree, however, that the safest course of action is never to offer trademarks for sale -- particularly to a tm owner. Let them make an offer if theyr'e interested. But be wary of reverse domain name hijackers on the prowl.

Ari + Jerry what would your opinons be if someone had a domain registered with a running website totally unrelated to a TM of the same name.. lets say the website was running for a period of time ..say 2 years and the owner is going out of business ....

That owner THEN decide's to offer to ONE of the TM owners or maybe all TM holders the chnace to aquire whats left of the business..mainly the domain.

My own opinion would be that it were a TM mark held by more than one holder..(just different uses) then to offer to al an invitation on the domain could not be seen in bad faith..pretty clear cut IMO..

BUT ..if the name had only 1 TM entity then could go either way..could still be seen as bad faith simply because the TM would not be diluted..shared amounst many holders..

Whast do you think ?

 

[Ari Goldberger]

>Ari + Jerry what would your opinons be if someone had a >domain registered with a running website totally unrelated to a >TM of the same name.. lets say the website was running for a >period of time ..say 2 years and the owner is going out of >business ....

>That owner THEN decide's to offer to ONE of the TM owners or >maybe all TM holders the chnace to aquire whats left of the >business..mainly the domain.
.................................................................


Bad faith registration under the UDRP is only properly established where a domain name is registered with the intent to sell it. The facts as you describe demonstrate a registrant who registered a name for business and only later elected to sell it. That would not satisfy bad faith registration under the UDRP.

 

[jberryhill]

"What do you think ?"

I think my name is John, not Jerry.

In a lot of these situations, you need to think separately about four things:

(1) The Truth
(2) The Way It Will Be Argued By The Other Side
(3) The Available Evidence
(4) What a Panel is Likely to Conclude

Those things don't always point in the same direction. In your hypothetical, the domain registrant isn't doing anything wrong - he is selling off a piece of the business assets at the close of operations. What you are asking is how it would be "seen". To some extent, that depends on who is doing the arguing, how well, and to whom.

If you tell me that you registered a famous trademark as a domain name because the Virgin Mary appeared to you and wanted you to sell it and donate the proceeds to an orphanage, then I would (even though I am not of that religious persuasion) suggest that you do what she tells you to do. But, is a UDRP panel going to believe you? Probably not.

 

[bidawinner]

:laugh: did it again..

I am sorry John, I look at your signature and with a fast glance it always looks like jerryhill.

I dont see how the religious person claiming his registering a TM mark with the intent to give the proceeds to an orphanage has to do with my question ?


But I would be willing to make a wager that if someone else where to register the religious TM term "FAITH" http://tess2.uspto.gov/bin/showfield?f=doc&state=4b0pld.2.22 under your scenerio (with the registered TM filing claim) ..that the UDRP panel would find for the respondent

The little voice in my head assured me of this..can't claim with certainty it was the Virgin Mary..but you cant claim with certainty it wasnt


Thanks for the discussion guys..

Originally posted by jberryhill
"What do you think ?"

I think my name is John, not Jerry.



If you tell me that you registered a famous trademark as a domain name because the Virgin Mary appeared to you and wanted you to sell it and donate the proceeds to an orphanage, then I would (even though I am not of that religious persuasion) suggest that you do what she tells you to do. But, is a UDRP panel going to believe you? Probably not.

 

[Beachie]

Originally posted by jberryhill
[BIf you look around a bit, you might even find an attorney in this area who lives in Delaware, and drives within about a mile of your house every day. [/B]

:laugh: Maybe Wilmington is a big place, but that's quite a coincidence