C & D for Generic - UNION.US

[DNS Kidd]

Council for this company send a letter demanding ownership of union.us.

TESS resources seem to indicate application is recent, after I obtained the name. Lawyer indicates TM owner has been using the name since 1990 for pre-paid calling card services. Filed as TM and SM.

http://tarr.uspto.gov/servlet/tarr?r...entry=76387638

TESS shows 34 live TM for the word "union".

I will put the C&D letter online later, will be at rec.us/union.txt

Union.com is regged and listed "Not for Sale" on a parking page. union.org does not resolve, and union.net is listed for sale, looking for $12k, bidding presently at $6k.

What reply would be best for this? Polite decline based on recent TM and generic status? Offer of sale for some amount?

[Banned: bidawinner]

Ignore it...they are just to the game and are trying to scare you...

extremely lame approach...

[DNS Kidd]

I'm not sure I want to ignore this, but instead consider it an offer to sell.

Here is a big company, ($1.5 billion ) looking to own something that they have a questionable claim to. If they want it, they have to pay a reasonable fee. They had the chance to get the name during sunrise with a pending TM, and they didn't.

I don't believe their TM guarantees ownership of everything "union".

That is apparent by the other union domain names being not under their control.

Any legal forum members interested in commenting on this? The letter is located here:

rec.us/union.us.pdf

I would be interested in knowing the experience and track record of this Washington D.C. firm as far as UDRP and ACPA goes.

I was doing my best to stay away from TM names, and here is one with 35 active TM on the word!

[Banned: bidawinner]

Originally posted by DNS Kidd
I'm not sure I want to ignore this, but instead consider it an offer to buy.

Here is a big company, looking to own something that they have a questionable claim to.

I don't believe their TM guarantees ownership of everything "union".

That is apparent by the other union domain names being not under their control.

Any legal forum members interested in commenting on this? The letter is located here:

rec.us/union.us.pdf

I would be interested in knowing the experience and track record of this Washington D.C. firm as far as UDRP and ACPA goes.

Welll in that case..yes I agree with you..consider it an offer then.
I was under the impression you were worried about their C&D.

I certainly would NOT make an outright offer to sell it.they do have a TM and offers to sale can be viewed as "bad faith"

I know what you are saying..but just tread lightly and wisely..

[Banned: bidawinner]

My disclaimer: JMO of course.

[jberryhill]

It's generally inadvisable to post specifics of your situation, but this is the kind of thing that really makes my blood boil. A few things are worth pointing out, in order to explain how this attorney has engaged in a felony, specifically the federal crime of mail fraud.

1. IDT does *NOT* own a federally registered mark for "UNION"

2. Frankel *KNOWS* they do not.

3. Frankel has intentionally lied to you, and done so through the US Mail for the purpose of depriving you of a thing of value.

These three things add up to a federal crime.

The application in question is an "intent to use" application. That is the type of registration application one files when one has not yet begun use of the mark, but one plans to do so at a future date. As yet, no statement of use has been filed, and no trademark will be registered unless and until the statement of use is filed. So, his line about use since 1990 is pure BS as well.

The application has recently been published for opposition, and is not anywhere near registration (see paragraph above).

As I said, I normally do not comment on specific situations, and I believe it is a tremendously dumb thing to post your specific facts in a public forum. However, when I see a crime in progress, that's another story, and that is what you have here.

You should notify the postal inspector for the zip code from which the piece of mail originated and file a complaint against this hopefully soon-to-be-ex-attorney.

[DNS Kidd]

Wow! John, I hoped you would comment on this thread, I didn't think it would get you riled up as it seemed to.

Can I send you a request regarding the handling of this letter?

[jberryhill]

The other thing you should do is to contact the attorney of record for the several registrations owned by Western Union for pre-paid calling cards, and alert them to the fact that this application will be published for opposition on February 25, 2003.

Western Union owns several registrations for "Western Union" for pre-paid calling cards:

1899177 WESTERN UNION PHONE PAY
1835672 WESTERN UNION PHONE CARD
1866559 WESTERN UNION PHONE CARD

...and I sincerely doubt they will want to see someone else register "UNION" for the same goods and services. They may be inclined to oppose registration of that mark, and that will save you the effort of putting these idiots where they belong.

[mike]

Originally posted by DNS Kidd
Council for this company send a letter demanding ownership of union.us.

TESS resources seem to indicate application is recent, after I obtained the name. Lawyer indicates TM owner has been using the name since 1990 for pre-paid calling card services. Filed as TM and SM.

http://tarr.uspto.gov/servlet/tarr?r...entry=76387638

TESS shows 34 live TM for the word "union".

I will put the C&D letter online later, will be at rec.us/union.txt

Union.com is regged and listed "Not for Sale" on a parking page. union.org does not resolve, and union.net is listed for sale, looking for $12k, bidding presently at $6k.

What reply would be best for this? Polite decline based on recent TM and generic status? Offer of sale for some amount?

Unfortunately, I think this is typical of the reaction YOU would get if YOU approached almost everyone having a perceived TM claim on this name. No doubt, UNION is a seriously big political/business word coveted by many entities in the U.S..

On the other hand, if you had an ATTORNEY (like jberryhill, for instance, he obviously has a sense of this url's value AND your right to own and sell it), on a contingency fee basis, contact the 34+ ATTORNEYS of the TM records for this name and other obvious interested parties by mail or e-mail (like the Teamsters and Steelworkers Union attorneys, First Union's attorneys, etc.), your ATTORNEY could assert your rights to own and/or sell union.us and at the same time inform all these prospects of a SET TIME in the future for the auction sale of union.us, here at dnf, for instance . I'd set the starting bid at like 5k or so.

Or instead, have your attorney, on a contingency fee basis again, contact and offer to sell union.us outright to the aforementioned parties for a fixed price. If a sale is made, everybody gets paid and the buyer would have a great domain.

Note: I'd suggest that you do not try and contact the named prospects yourself regarding this particular url. It's too heavy! You will only get attacked again if you are without counsel.

Just an idea.

Good Luck,
Mike

[DNS Kidd]

I would be happy to let IDT have first shot at the name. They must have expressed an interest in it, to get the C&D wheels turning.

I'll state or the record, how glad I am to have members like John B. on the forum to point out a bogus C&D letter when it arrives. I understand his comments about posting specifics of a problem, but I needed some input, from people that understand these things.

For those that haven't seen one before, here it is. Letters from law offices are usually either really good, or really bad. I hate receiving them.

John - if you are interested in the marketing / sale of this name, please contact me. Thanks again for your reply, and it would be my pleasure to work with you on this.

sales@rec.us

[jberryhill]

"John - if you are interested in the marketing / sale of this name, please contact me. Thanks again for your reply, and it would be my pleasure to work with you on this."

Thank you, but no. I don't publically comment on matters I handle, nor do I handle matters on which I've publically commented.

[ObtainADomain]

[i]Thank you, but no. I don't publically comment on matters I handle, nor do I handle matters on which I've publically commented. [/B]

John, just curious, I realize you must have a good reason for this policy but I couldn't think of what it might be. Why not handle matters on which you've publicaly commented?

[mems]

Hi DNS Kidd,

These links might give you some good info.

www.webtechniques.com/archives/2001/05/legal

http://www.chillingeffects.org/input.cgi

http://www.chillingeffects.org/

I hope this helps.

MEMS

[DNS Kidd]

I have been reading the chillingeffects.org pages for the last several days. Good information on this whole C&D / trademark thing.

[jberryhill]

Originally posted by ObtainADomain


John, just curious, I realize you must have a good reason for this policy but I couldn't think of what it might be. Why not handle matters on which you've publicaly commented?

It's a personal preference. I post here to relax, educate, and sometimes entertain. I'm not here to give legal advice, drum up business or chase ambulances. Accepting an engagement in circumstances like that just seems like sleazy grandstanding to me. Your mileage may vary.

Where lawyers draw ethical lines is also subject to individual judgment. Whenever I see some celebrity's lawyer on Larry King Live, I can't imagine why their client doesn't fire them immediately. You hire a lawyer to do what you need done in the place where it needs doing - and that place is never a TV show and or an internet a bulletin board.

I believe that people who post their specific situations and thoughts about them here are doing the dumbest imaginable thing they could do. It really doesn't matter if your intentions are pure as the driven snow. A motivated and intelligent opponent is going to take your careless words out of context and use them to defeat you.

For example, I can guarantee you that I look for public comments made by UDRP complainants and use them as well. Althought the panel in dw.com said that they did not "consider" the following statement, do you seriously think they ignored it in making their reverse domain hi-jacking ruling:

http://arbiter.wipo.int/domains/deci...2000-1202.html
Additionally, the Complainant has admitted that it does not have a legitimate basis for bringing this dispute, and has characterized this dispute as nothing more that a game. In an article in a German online magazine (Annex 11: Article in "Telepolis" - accessible on the web at http://www.heise.de/newsticker/data/chr-30.09.00-000/ at the time of this Response), Guido Baumhauser, the head of Internet operations for Complainant, characterizes the present dispute as "sportiv" (literally, "sporting" in English). The Complainant considers using the Policy to threaten the existence of a legitimate multi-million dollar business to be a "sport". The Policy is intended to address the serious issue of cybersquatting. The cynical use of the Policy as a "sport" or game by the Complainant merits the forceful condemnation of this Panel.

Now, do you seriously believe for one red-hot moment that some joker hasn't alerted the author of that c&d letter to this online discussion?

It's really, really dumb. Why would you want to discuss your case with an attorney in full view of the other side?

Just because I believe the attorney who wrote that c&d letter is an idiot should not be interpreted as an assertion that I think our original poster here is a rocket scientist either.

To his credit, Mr. Frankel has stated in email that his mis-statement of fact was due to a "mis-communication" at his end. To admit one's errors is honorable. I am not entirely convinced that he did not have a duty to know the facts, and I believe he probably did have such a duty, which is chargeable as constructive knowledge of the falsity of his allegation. After all, trademark registrations provide constructive notice of their status. I do not think a reckless falsity, given the obvious absence of any registration number asserted (which is the norm for assertion of a registered mark), and the ease of checking the facts at the uspto.gov website, gets Mr. Frankel entirely off the hook by claiming "error" here.

[DNS Kidd]

John - Thanks for your input on this. It is worthwhile for my case, and possibly more so for other members who receive a C&D for their names in the future.

[HOWARD]

The purpose of this forum as I see it, is to assist in guidelines as to what may be effective ways in generally handling legal problems with domains.

I therefore agree with John that we attorneys are not here to solicit clients or to give specific legal advice, but rather to provide some direction to all who may have similar problems and to avoid the pitfalls of "do-it-yourself" handling of what could end up being complex legal matters.

[ObtainADomain]

Originally posted by jberryhill
It's a personal preference. I post here to relax, educate, and sometimes entertain. I'm not here to give legal advice, drum up business or chase ambulances. Accepting an engagement in circumstances like that just seems like sleazy grandstanding to me. Your mileage may vary.

Ah, now I understand, this makes sense and is very honorable.