TM issue

[taz]

hire security dot com

yesterday i got a letter of Trademark infringement. I had the domain name parked and i was in the proccess of developing a site.

what are the chances to loose this name?

Thanks

 

[Dale Hubbard]

Chances of losing it seem very slim indeed - what's the TM claim? Whose property are you supposed to be squatting on?

 

[taz]

i think is some health outcome studies or some patient data solution ... something like that.

i don't find any trade mark info in regard with hire security ... am i doing something wrong?

"Based on the timing of your purchase in January of 2003, we have prior use rights to the mark in 44 US states and in Canada. After we found two other companies infringing on our marks, we registered with the US Patent and Trademark Office so that we could more easily recover our attorney’s fees from the infringing parties. Our submission number is 77501199, with the effective date of the trademark reverting back to the date of filing. The trademark is listed as follows:

“MARK: HIRE SECURITY (Standard Characters). The literal element of the mark consists of HIRE SECURITY. The mark consists of standard characters, without claim to any particular font, style, size, or color.”

As you can see, the mark is quite broad. Your use of the mark as a domain name violates the Anticybersquatting Consumer Protection Act (ACPA), which prohibits the registration and trading of sites for the the purposes of profiting from the sale or transfer of the domain name. Your posts at DNForum.com on January 16 and 24, 2003, strongly suggest that this has been your intent.

The ACPA dovetails with trademark law in that it also prohibits any use that is intended or likely to confuse or deceive the consumer as to the affiliation, connection, or association of the domain name registrant, or the domain name site with the individual. Because of the similarity in the marks and goods or services of the parties, consumers would be likely to mistakenly believe that the parties are in some manner related or associated such that the goods or services share a common source. That amounts to a violation of the ACPA as well as trademark infringement.

Please understand that our approach to this dispute is not meant to offend you or denigrate any work you have done on your code. Rather, this course of action is necessary because US law requires us to pursue our rights aggressively or risk dilution of our mark (resulting in a loss of our rights to the trademark itself). I respectfully urge you to simply use your code on a different domain name rather than forcing both sides to expend the time and energy on a lawsuit and/or UDRP proceeding just to get the same result. "

 

[jberryhill]

Our submission number is 77501199

It most assuredly is not, and there is no current record of a pending application for "HIRE SECURITY" at the USPTO.

Of course, you can file an application for "I'M AN IDIOT" and nobody will stop you from filing the application, which will duly be assigned an application number, unlike the apparent situation here.

Incidentally, this is a federal criminal law:

18 USC § 1343. Fraud by wire, radio, or television

Whoever, having devised or intending to devise any scheme or artifice to defraud, or for obtaining money or property by means of false or fraudulent pretenses, representations, or promises, transmits or causes to be transmitted by means of wire, radio, or television communication in interstate or foreign commerce, any writings, signs, signals, pictures, or sounds for the purpose of executing such scheme or artifice, shall be fined under this title or imprisoned not more than 20 years, or both.

The place for reporting crimes conducted by means of the internet is here:

www.ic3.gov

 

[Theo]

A letter coming from the legal dpt. of a company would never say the following:

Please understand that our approach to this dispute is not meant to offend you or denigrate any work you have done on your code. Rather, this course of action is necessary because US law requires us to pursue our rights aggressively or risk dilution of our mark (resulting in a loss of our rights to the trademark itself).

In other words, this explanation would come from *your* hired lawyer, not from a lawyer submitting a C&D letter. This guy is pulling your leg hoping you'll relinquish the domain. Give his info to John and he will have some fun with him

 

[jberryhill]

Give his info to John and he will have some fun with him

http://www.youtube.com/v/28khv-BydeY&hl=en

 

[Theo]

LOL Blazing Saddles. Love it.
Now I know what to put on Mongo.org

 

[Domagon]

Interesting. Was it a postal letter or email?

I own some fantastic "security" domains, so will be keeping an eye out for the bogus C&Ds.

On the bright side, someone desperately wants your domain name and thus reaffirms it has much value; worth developing as you're planning to do.

Ron

 

[taz]

i was in vacation and didn't take any action but today i got this email:

"Although you have not responded to my message dated June 19, our investigator noticed that you pulled your website. I said that I would give you until July 4 to make your decision, but I am under some pressure to get this matter resolved. If you are not willing to surrender the domain name, it would be helpful if you could let me know so that I can get the ball rolling. If I have not heard from you by the close of business tomorrow then we will file our complaint on Monday.

ICANN Rule 2 requires us to use reasonably available means calculated to provide you with actual notice of the content of our complaint. Please let me know if you wish to receive the complaint at an address other than the one listed in the domain name's registration data in Registrar's Whois database. Also, if you have already hired attorneys to represent you in this case or in the related ACPA matter, please forward their contact information so that we can provide them with a courtesy copy.

Respectfully,
"

 

[gariben]

probably bogus..... very amateur writing style

wait for the FEDEX letter

 

[flamewalker]

The writing looks to be either that of a kid or non-english speaking person...

Just make sure your email is correct in whois if they really do want to spend the $5k+ to pursue the domain on what appears to be frivolous claims, so you will get proper notification.

IMHO, just a scam.

Word Mark HIRE SECURITY
Goods and Services IC 045. US 100 101. G & S: Consulting and legal services in the field of privacy and security laws, regulations, and requirements; Pre-employment background investigation services
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 77501199
Filing Date June 17, 2008
Current Filing Basis 1B
Original Filing Basis 1B
Owner (APPLICANT) Jones, Jeffrey Ryan INDIVIDUAL UNITED STATES 122 Waterberry Drive Tarpon Springs FLORIDA 34688
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

If I am not mistaken, 1B is Intent to use? Be prepared to fight the tm during the period they allow for contesting it...so check it frequently if you intended to use the name and mark for the same/similar purposes.

Do you have anything you can show that you have intended to use the name for that purpose long before them? Do you have anything functional? Almost looks like a reverse hijacking attempt to me...

 

[taz]

so the filing date for the TM is June 17, 2008 and he emaild me on the 18th.
....

 

[jberryhill]

If I am not mistaken, 1B is Intent to use?

Indeed 1B is intent to use.

 

[draggar]

http://www.youtube.com/v/28khv-BydeY&hl=en

I have a new found respect for you (like I didn't have enough before).

So, is this how reverse-hijacking starts?

 

[flamewalker]

So... they intend to use the tm, and are threatening you even though you have the name prior... not sure what the next step would be but development asap may help your case... but I will defer to jb on whether that will help or not...

 

[jberryhill]

Your posts at DNForum.com on January 16 and 24, 2003, strongly suggest that this has been your intent.

As long as jackass Jones is following the thread, then he should also understand that not only has he violated the wire fraud statute, by falsely claiming to have a registered mark, but if he meant to file the application on behalf of his company instead of on behalf of himself personally - as listed in the application data - then he has also violated 18 USC 1001, the administrative perjury statute, when he executed the oath required to file.

Let's have a look under the hood, shall we:

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.


Signature: /Jeffrey Ryan Jones/ Date Signed: 06/17/2008
Signatory's Name: Jeffrey Ryan Jones
Signatory's Position: Applicant

Turning back to the original threat letter, he claims to be aware of DNForum posts from January.

Then, on June 17, he swears an oath under penalty of perjury, that to the best of his knowledge no one else is using the subject term.

What? Did he discover the domain name the evening after he filed?

I doubt it.

It's hard to get that much wrong into one letter.

It is absolutely clear that the application itself was filed for the improper purpose of advancing his fraudulent scheme.

We've seen this kind of crap before:

http://domains.adrforum.com/domains/decisions/751622.htm
On November 16, 2004, clearly having been aware of the prior registration of the domain name, Mr. Aylward applied to obtain a federal trademark registration for services having nothing to do with the Respondent’s use of the domain name. Complainant then waited until after the registration issued to bring this proceeding.

The only question here is whether Jones was born stupid, or if he had to work at it.

 

[Theo]

Jackass Jones dot com is available

 

[jberryhill]

Just so you can appreciate the sheer immensity of stupid here, consider this paragraph:

Based on the timing of your purchase in January of 2003, we have prior use rights to the mark in 44 US states and in Canada. After we found two other companies infringing on our marks, we registered with the US Patent and Trademark Office so that we could more easily recover our attorney’s fees from the infringing parties. Our submission number is 77501199, with the effective date of the trademark reverting back to the date of filing.

Now, the filing date is June 17, 2008.

This guy really just hit one right clean out of the ballpark there, by admitting, in a single paragraph, that the domain name pre-dates "the effective date of the trademark" by five years.

One of my all-time favorite movie lines comes from Major Kong in "Dr. Strangelove" when he says, "Well I've been to one world fair a picnic and a rodeo and that's the stupidest thing I ever heard come over a set of earphones."

It most assuredly is not, and there is no current record of a pending application for "HIRE SECURITY" at the USPTO.

And, also to be clear, the application was filed on the 17th, and that comment was made on the 19th. There is some latency time in the database.

Jackass Jones dot com is available

I'd recommend against registering it, because this idiot would definitely have a proprietary right in that one.

 

[flamewalker]

I'd recommend against registering it, because this idiot would definitely have a proprietary right in that one.

LOL for sure... some people are so mind boggling stupid it makes my head hurt... and believe me as a PC Technician, I deal with a lot of 'dumb' people.

 

[domaingenius]

In the UK at least under such situation whereby someone threatens legal/other actions
you, the threatened party, may issue proceedings to have the Court determine the
issue . You might like to counter threaten that if he persists with such threats that
you will have your lawyers issue proceedings against them for ....hmm harassment ?

DG