Being the evil C&D guy :) - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**Steen** · 07-03-2003, 05:29 AM

Ok, here is my Q.

I just incorperated and am registering a trademark.

I am in Canada (have a presence [mailing addy] in the USA) but I am reging a TM in CAN, and possibly the USA, maybe.

Now, lets say I own Steen Inc. The TM is Steen (can I TM names, since its not poular.. ) I did not think you could TM names now that I think about it.

Anyways,

Steen.com is already a company, but lets pretend its a personal webpage. Now, can I legally scare them with a C&D? I will use an eBay one as a template

And if I scare them with a C&D, is that allowed (i jsut asked that lol.)

Now, the domain is quite valuable to me and my Corp so $the $2 +/- fee for WIPO (or is it URDP) isnt that bad.. What are my chances?

And since i just regged my TM, does it make a diff since they owned it before my TM rights.

And also, what if the buy if in Malasia, can I do anything since my TM is in CAN. And same thing, what if this guy is in USA but I only regged in CAN?

Thanks alot.

PS: as you may have noticed, I am not too informed on what WIPO and URDP are. I thought WIPO was the board that made the decisions as of who gets the domains when a case is filed.. Who is URDP?

Thanks again.

**pljones** · 07-03-2003, 09:05 AM

Maybe John Berryhill can chime in on this as well, but my understanding is that if someone has rights in a domain name prior to your registration or application for a trademark, you cannot take that domain name from the registrant. You are free to offer or negotiate a purchase of the domain name from the registrant through, if it is willing to sell.

WIPO is one of four approved dispute resolution providers for cases filed under the Uniform Domain Name Dispute Resolution Policy. The Policy is administered by ICANN. Other providers include the National Arbitration Forum, CPR Institute for Dispute Resolution and the Asian Domain Name Dispute Resolution Centre. I haven't done a great job of updating the site lately, but feel free to take a look at some of the resources up on http://www.udrplaw.net for more information.

**jberryhill** · 07-03-2003, 11:47 AM

"I did not think you could TM names now that I think about it."

Ford? Siemens? DuPont? Porsche? Do any of those names sound familiar to you?

"Now, can I legally scare them with a C&D? "

Depending on where you are, and where they are, then you could subject yourself to a declaratory judgment action; action under the false claims act (Britain, I believe); mail fraud, and maybe a few other things, if you make a frivolous claim of infringement.

"What are my chances?"

Very low.

**Steen** · 07-04-2003, 12:50 AM

Thanks for the (unfortuanate) words. I really appreciat your help on this.

Why do I have a very low chance of securing the name when other companies seem to have in made?

Is it becuase my TM is from after teh date of registration of the domain name?

**DaddyHalbucks** · 07-04-2003, 12:32 PM

You can't stop a pre-existing use with your later claim.

But if you are operating in a different field of use or a different geographic region, you may be able to use your mark concurrently.

The main point for you is that you have a legitimate use. This protects you alot.

I am not an attorney and this is not legal advice.

07-03-2003, 05:29 AM	#1 (permalink)
Steen Platinum Lifetime Member Last Online: Today 06:03 PM iTrader: (12) Join Date: Mar 2003 Posts: 4,883 DNF$: 1,808 Location: White Rock, BC Country:	Being the evil C&D guy :) Ok, here is my Q. I just incorperated and am registering a trademark. I am in Canada (have a presence [mailing addy] in the USA) but I am reging a TM in CAN, and possibly the USA, maybe. Now, lets say I own Steen Inc. The TM is Steen (can I TM names, since its not poular.. ) I did not think you could TM names now that I think about it. Anyways, Steen.com is already a company, but lets pretend its a personal webpage. Now, can I legally scare them with a C&D? I will use an eBay one as a template And if I scare them with a C&D, is that allowed (i jsut asked that lol.) Now, the domain is quite valuable to me and my Corp so $the $2 +/- fee for WIPO (or is it URDP) isnt that bad.. What are my chances? And since i just regged my TM, does it make a diff since they owned it before my TM rights. And also, what if the buy if in Malasia, can I do anything since my TM is in CAN. And same thing, what if this guy is in USA but I only regged in CAN? Thanks alot. PS: as you may have noticed, I am not too informed on what WIPO and URDP are. I thought WIPO was the board that made the decisions as of who gets the domains when a case is filed.. Who is URDP? Thanks again. __________________ Get an eNom resellers account free and instantly,click here - Automated Signup!

07-03-2003, 11:47 AM	#3 (permalink)
jberryhill Philadelphia Lawyer Last Online: 09-18-2009 01:17 AM iTrader: (1) Join Date: Oct 2002 Posts: 2,987 DNF$: 6,350	"I did not think you could TM names now that I think about it." Ford? Siemens? DuPont? Porsche? Do any of those names sound familiar to you? "Now, can I legally scare them with a C&D? " Depending on where you are, and where they are, then you could subject yourself to a declaratory judgment action; action under the false claims act (Britain, I believe); mail fraud, and maybe a few other things, if you make a frivolous claim of infringement. "What are my chances?" Very low. __________________ John Berryhill Ph.d., esq. John-AT-johnberryhill.com Please do not send private messages via dnforum.com, email me directly.

07-04-2003, 12:50 AM	#4 (permalink)
Steen Platinum Lifetime Member Last Online: Today 06:03 PM iTrader: (12) Join Date: Mar 2003 Posts: 4,883 DNF$: 1,808 Location: White Rock, BC Country:	Thanks for the (unfortuanate) words. I really appreciat your help on this. Why do I have a very low chance of securing the name when other companies seem to have in made? Is it becuase my TM is from after teh date of registration of the domain name? __________________ Get an eNom resellers account free and instantly,click here - Automated Signup!

07-04-2003, 12:32 PM	#5 (permalink)
DaddyHalbucks Domain Buyer Name: Hal Last Online: 11-18-2009 11:20 AM iTrader: (57) Join Date: Oct 2002 Posts: 2,730 DNF$: 120,139 Location: Las Vegas, USA Country:	You can't stop a pre-existing use with your later claim. But if you are operating in a different field of use or a different geographic region, you may be able to use your mark concurrently. The main point for you is that you have a legitimate use. This protects you alot. I am not an attorney and this is not legal advice. __________________ www.ParkingCash.com <==Click here www.RingtoneCash.com <==and here

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07-03-2003, 09:05 AM	#2 (permalink)
pljones Gold Lifetime Member Last Online: 02-11-2004 01:21 PM iTrader: (0) Join Date: Nov 2002 Posts: 170 DNF$: 242	Maybe John Berryhill can chime in on this as well, but my understanding is that if someone has rights in a domain name prior to your registration or application for a trademark, you cannot take that domain name from the registrant. You are free to offer or negotiate a purchase of the domain name from the registrant through, if it is willing to sell. WIPO is one of four approved dispute resolution providers for cases filed under the Uniform Domain Name Dispute Resolution Policy. The Policy is administered by ICANN. Other providers include the National Arbitration Forum, CPR Institute for Dispute Resolution and the Asian Domain Name Dispute Resolution Centre. I haven't done a great job of updating the site lately, but feel free to take a look at some of the resources up on http://www.udrplaw.net for more information.

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