Demand to transfer domain due to a trademark

[lucubrator]

Hello everyone,
it's a shame to start on this interesting forum with this sad topic, but I need now
some good advices. I am pretty new to domain business, just few years now and
still a lot lot to learn

So my story begins this way:
- I registered around 3 years ago a .biz domain, mainly because I was willing
to create a fan site for a game. After all I never had enough time to start it,
so it was used for making subdomains and other such fun stuff

- I had eventually listed the domain to sell it at sedo.

- I recently got from sedo a message that they'll remove it from the listings because they had received a complaint of potential trademark infringement from someone.

- I sent an email to ask for the details etc. from Sedo, I never got anything else but a short reply telling me about the same as the original message, no name of who made the complaint.

- But it didn't took long time before I got an email from the actually maker of the complaint. He had somehow managed to register the trademark in http://oami.europa.eu. Which is something like patent handler of European
Union. And he did this according to the site, not more than a few months ago on this year.
EDIT1: Oh and I forgot to mention, that this new trademark registrant had
nothing to do with the game company etc. just more likely trying to benefit from the
dropped trademark or so...

- In the email this person told that he made the complaint to Sedo and he told me that
I shall provide him the auth code for the domain to transfer it to him.

- So I registered domain over 3 years before and then some guy gets a trademark,
I didn't ever even have idea of this guy's existence. Even my last renewal of domain
has been still when there was no legal conflict with anything.

- Now, wait a minute? This can't be right, or can it be? How could a person know
that a few years after he/she registers a domain someone registers a trademark of the word.

- There was also other domain at Sedo, with the same name but differend tld, it wasn't mine but I checked that it had been suspended from the Sedo listings as well. So I guess this person has sent the same message to the owner of that domain aswell.


So, this is really something new to me. I talked about this with my friends and they
thought that it sounds just an attempt of so called Reverse Domain Hijacking. What do you experts think?

I understand Sedo's point of view removing the domains from the listing since the trademark of this person covers "Internet Marketing" which Sedo does with the parked pages. Well the income of the parking was probably like 0,1€ so there's nothing really to gain of that and I never even intended.

But please, some sophisticated advices to all green domainer

To add some more of my thoughts: I would with my pleasure to hand the domain
to this person, if he would have had at least offered some kind of a compensation
but for free it feels very wrong.

[Brett Lewis]

So, this is really something new to me. I talked about this with my friends and they thought that it sounds just an attempt of so called Reverse Domain Hijacking. What do you experts think?

In my opinion, that's exactly what it is. It is not possible to register a domain name in bad faith three years before the complaining party ever used or registered a similar trademark. Unless, of course, you consulted Dionne Warwick on the psychic friends hotline and registered the domain name with the intent to profit off of the as-yet non-existent use of the purported trademark.

DISCLAIMER: Lewis & Hand, LLP is not sponsored or affiliated with Dionne Warwick or the Psychic Friends Network, in any way. The views expressed in this posting are not necessarily the views of Lewis & Hand, LLP. If you require additional clarification, please consult a psychic.

[Salient]

Unless, of course, you consulted Dionne Warwick on the psychic friends hotline and registered the domain name with the intent to profit off of the as-yet non-existent use of the purported trademark.

DISCLAIMER: Lewis & Hand, LLP is not sponsored or affiliated with Dionne Warwick or the Psychic Friends Network, in any way. The views expressed in this posting are not necessarily the views of Lewis & Hand, LLP. If you require additional clarification, please consult a psychic.

Oh my.

[nametrader]

lucubrator you can safely ignore anything and everything from the real party. If what you are saying is true, that is you own this domain 3 years prior to the trademark date.

If the person who is trying to take away the domain from you had applied for this TM before you registered this domain and got the TM registered today in his name he still might have right to it. If his application date is after you registered your domain, then he can only negotiate for some amount and settle with you but can't force you to give away.

As to sedo I don't believe they have looked deeply into your name it's history, The trademark it's applied and registered date etc etc etc, they just sent you suspension email as they received the complaint. If this name is valuable to you tell sedo the whole story get them activate your name again, otherwise move on to another parking company.

But the 0.1 Euro earnings is it per day or per month I guess instead of parking it you might just put information about some of your favorite games on there. Whatever I rest.

[lucubrator]

Thanks a lot for your opinions friends! I really appreciate them!


It indeed is so that I had registered
this domain over 3 years before this dude getting his trademark, even
the renew date is before registration of his trademark. As I said, if he would
have just been polite and offered some money, I could have considered to
sell it to him also. But this kind of way that he tells me lies and tries to
"test if the ice is thin" really makes me angry.

If he tries to scare me with
his lawyer or something I don't care since I have found a real good IT-lawyer
company which I could use.

It is really so, that when other person tries to put you in hierarchy under him/her
it's really something I can't tolerate. In this case this guy is simply keeping
me stupid.

[Dave Zan]

I don't care since I have found a real good IT-lawyer
company which I could use.

Hopefully that lawyer or so is familiar with domain disputes like Brett or any of
the others here.

[lucubrator]

Hopefully that lawyer or so is familiar with domain disputes like Brett or any of
the others here.

They're one of the only technology law firms in my country, they're pretty young fellows,
but they've been a lot also in local media because of the many successful cases where
they've defended people against big companies and such.

But hey, actually I didn't first realize that some of the people who answered to this
thread are actually working in a law firm, such as Brett appears to be

If I return to this case a little bit, it was the guy himself who contacted me, the email
was short, he just mentioned the removing of this domain from sedo (I guess in order to use that as a deterrent). Then he just told that I am not allowed to use his trademark in a domain name and I shall send him the auth code to transfer it to him.

If this guy tries to threaten me with court or he sends his lawyer to send me some
kind of deterrent message, maybe I should contact this Brett's firm after all.

[dotNetKing]

Just to stir a bit, don't forget that a trademark can exist before it is registered. I don't know if this is the case here or not. And even if the trademark did existe earlier, that in itself is not enough reason for you to give up the domain.

Another point to perhaps consider is whether or not your website now infringes on the scope of the registered trademark or not.

If it doesn't infringe on the scope they have less of a leg to stand on. If your use does infringe on the scope of the trademark, I understand that some UDRP panelists look on this negatively.

There is still the element of whether the domain was registered in bad faith or not, and if in bad faith, whether this can be "proved".

I also understand that some UDRP panelists require both registering and use in bad faith, and others will be quite happy with just one of those (although the UDRP terms seem to say both are required for a successful complaint).

These are just my thoughts on the matter. I am not an expert in the matter!

[lucubrator]

Thanks for your opinion dotNetKing. If there was a trademark before it was ages ago
owned by the game company and hadn't exist for some years(?) now. This new trademark owner registered the trademark with differend details but same thing as "word". Current trademark owner seems to just try to benefit from the well known game.

As I said earlier, I recognized that also the corresponding .com-domain had been taken down from sedo. I am pretty sure that this fellow has also sent some email to dotcom-owner aswell, it is anyway sexier than .biz, so I guess he would like to hijack that also

But well, the .com-owner has just changed the nameservers, and not anything else,
so I guess he is realizing the same as I (with your help - thanks for that).

[cyberlaw]

I'm a bit late on this, but I don't think this is necessarily an open and shut case. Any attempt to sell a domain that may be protected by a trademark is a bit of a red flag to arbitrators if it gets that far. While I agree that lucubrator is probably OK, I would be a bit careful about totally ignoring the trademark owner.

[lucubrator]

I hear you cyberlaw. Though I haven't anyway placed the domain anymore anywhere for sale. This case would have been a lot easier if the person would have offered me some kind of compensation, I've anyway used money to it for several registration years. On those years when I registered the domain I knew nothing about whole domain "scene".
Would be kind of a humiliation to give it out for free. And as long as I see that none of the other tld owners for this specific word does nothing I will do neither, I am not gonna be the only one who is bullied.

From this point I could still add one more question, how does the fact that where a trademark is registered affect on things? Like, if there's a trademark in EU but not in the USA, what does it practically mean in the case of domains?

[Tia Wood]

- I registered around 3 years ago a .biz domain, mainly because I was willing
to create a fan site for a game. After all I never had enough time to start it,
so it was used for making subdomains and other such fun stuff

- I had eventually listed the domain to sell it at sedo.

This can be seen as cybersquatting/trademark infringement on your part depending on what the game was....

As far as what happened with the guy, I'm not sure it depends on who registered what first. If you took advantage of that trademark with an intent to profit from that popularity, I think that would still be considered infringement, would it not?

Let's say I register FlyingCouches.com and 3 years later, a company registers and trademarks the name FlyingCouches, INC. If I then took the domain and put FlyingCouches, INC product keywords on my PPC page, that could be considered trademark infringement. So really, I don't think it matters who registered what first. Just make sure you're not showing bad faith.

Tia

[lucubrator]

Yes Tia, I see what you mean. But the case with the old game was, that the trademarks and domains had been abandoned by the game company already long time ago, and all the domains were in use of the hobbyists.

But as I said, the person who is demanding the domain has registered the trademark, not more than a few months ago and doesn't have anything to do with the game company. Actually I would guess that the game company would be interested in his actions, when he starts to threaten fan community by gaining access to trademark with means which are a bit unclear to me.

Oh btw, by doing some research it seems that this dude might be some kind of domainer as well, so what should I expect?

[Brett Lewis]

I'm a bit late on this, but I don't think this is necessarily an open and shut case. Any attempt to sell a domain that may be protected by a trademark is a bit of a red flag to arbitrators if it gets that far. While I agree that lucubrator is probably OK, I would be a bit careful about totally ignoring the trademark owner.

I have to disagree. If the party claiming trademark rights had no rights to the claimed term at the time that the domain name was registered, there is no bad faith. Period.
Assuming no use by the party claiming trademark rights and no trademark registration until three years after the domain was registered, I cannot see how any rational panelist says that Lucubrator is cybersquatting. The critical inquiry is intent at the time of registration. Under the ACPA, for a claim to lie, the complaining party must have a mark that is distinctive or famous at the time of registration. No mark, no violation.

I have had many clients in this exact situation who have been victimized by overly aggressive trademark holders, and, at times, bottom feeders who are looking to reverse hijack valuable domain names. It simply makes no sense that a domain holder could possibly know that, three years after registering a domain name, someone else might choose the same term for a trademark, and register the name with the intent to profit off of the, then, non-existent trademark. That's why, unless a Complainant can prove that the registrant was talking to the Psychic Friends Network,
and reached Dionne Warwick, herself, these overreaching claims should always fail.

The real issue for Lucubrator and others in his position is that a later filed trademark can potentially limit the manner in which they can use their domain names, depending upon the scope of the trademark registration, country of filing, and the domain holder's prior use, if any. Although a later-acquired trademark generally has inferior rights to a previously registered domain name, a trademark holder may acquire superior rights to use a trademark in a particular field, purely as a matter of trademark law, as opposed to domain name law.

As far as what happened with the guy, I'm not sure it depends on who registered what first. If you took advantage of that trademark with an intent to profit from that popularity, I think that would still be considered infringement, would it not?

You're mixing standards a bit. Try to think of trademark infringement as distinct from cybersquatting. Trademark infringement does not require a showing of bad faith intent (at least in the United States), but requires a trademark use and confusing similarity to an existing mark. It is possible for someone to register a domain name, say GRUUBTUBE.com, and passively hold it. If another party makes trademark use or files for a trademark before the domain holder makes a use in commerce of GRUUBTUBE as a trademark, then the second party can acquire superior trademark rights in the term. In such a case, the domain holder would be limited in its potential use of the domain name to the extent of the trademark rights developed by the other party.

[jberryhill]

I would add to Brett's insightful comments that liability for good old fashioned trademark infringement would not necessarily result in a court ordering transfer of the domain name. The court might enjoin infringing use of the domain name without ordering transfer of the domain name.

Definite answers are difficult on "dance around the bush" hypothetical questions, so anything said in a discussion such as this one may depend on facts which are peculiar to this particular name, the particular asserted mark, etc.

It is also commonly misunderstood in this forum that (a) the date of acquisition of trademark rights, and (b) the date of registration of a mark in some particular country, can be two different things.

For example, someone above states that the TM claimant may have what amount to common law rights based on use of the mark prior to the registration application. Well, that too can depend on the jurisdiction in which the mark was actually used.

Like, if there's a trademark in EU but not in the USA, what does it practically mean in the case of domains?

Could mean everything or nothing, depending on the circumstances.

But, if we restrict ourself to thinking about the UDRP, and we carefully state "if the domain name was registered prior to the acquisition of TM rights by the claimant", then (aside from a very few decisions which are a tiny minority) the overwhelming authority of UDRP decisions is that "bad faith registration" cannot be shown on those facts.

http://www.wipo.int/amc/en/domains/s.../index.html#31

3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

Relevant decisions:
John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited D2001-0074, Denied
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, Denied
PrintForBusiness B.V v. LBS Horticulture D2001-1182, Denied

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.

Relevant decisions:
ExecuJet Holdings Ltd. v. Air Alpha America, Inc. D2002-0669, Denied
Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc) D2003-0320, Transfer
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer
General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online D2003-0845, Transfer

Now what I understand (and if I correctly understand it to be Eric) to be saying is that there are still some panelists who find domain sales to be so offensive that they will ignore other well-established principles to get to a result they "like".

However, the quoted portion of the WIPO overview above, defines a situation that is as close to "open and shut" as one gets in the UDRP.

[CureCancer]

1+1=2

[Dave Zan]

if you reg the domain before tm reg.. you are sitting on a gold mine

Or a liability.