HELLLLP PLEASE - Legal Question

[mjreine]

*

[centerpoint]

Ive owned a small auction site for a couple of years now and have been buying up domains related to auctions. On pool.com a few months ago I made a purchase of the domain XBID.com for a sizeable sum as I liked the domain.

Now a guy from Massachussetts calls me up and says he is from the XBID corporation and supposedly has a registered trademark for this name. He however cant seem to find it on the uspto.gov website. Im not say he doesnt have it but im not saying he DOES either at this point.

Well there is a trademark for X BID Register Feb 03

Goods/Services: Internet auction site providing goods and services to the general public in order that they may buy and sell everyday items with fluctuating cost

http://www.nameprotect.com/cgi-bin/F...PTO&ss=x%20bid

It seems to fit with what they said, although I find it funny he couldn't find his own mark

[sasquatch]

Well, the obvious choice is 3.

If you're not willing to sell for $2500, than don't worry about it. That other guy who is claiming he is from "Xbid Corporation" (what a "name" for corp. and who claims he has a trademark on the term Xbid??, which can not be found on USPTO.gov, might be some crooked schmuck who is trying to pull a fast one on you. Remember, he might be a pissed of bidder who lost it from under you, and this story is his way of trying to gain the control of domain he couldn't pay for.

If u r really so "sold" on that name, and anticipate to be using it for a while, why don't you make register a trademark claim of your own, and then you will be "safe" from alike "kind" in the future?

[sasquatch]

.

[mjreine]

!

[Peace]

http://tess2.uspto.gov/bin/showfield...ate=ki6ppd.2.1

Registration Number 2683658
Registration Date February 4, 2003
Goods and Services IC 035. US 100 101 102. G & S: Internet auction site providing goods and services to the general public in order that they may buy and sell everyday items with fluctuating cost. FIRST USE: 19981113. FIRST USE IN COMMERCE: 19981113

I am sorry to say, that you may have to transfer the name to him...however, you can use the name to something else other than for an auction site and you would be safe.

Goodluck

[mjreine]

(

[Peace]

I am sorry to hear that you have spent a lot of money for this...but you should have checked the trademark database before buying the name.

Talk to a trademark lawyer before you make any decision thou.

[RMF]

Just a thought. The guy that contacted you and offered $2500 might actually be the people at the XBID Corporation trying to either get the name at a lower price, or catch you at trying to sell the name.

RMF

[mjreine]

)

[actnow]

We have 3 or 4 excellent TM lawyers on this forum

I suggest you contact them immediately.

And, stop doing all of this guessing.

"The wolf might be outside of your door and you don't know it yet."

[mjreine]

actnow... do you know the ids of these TM lawyers on here? Id like to send them a private message on this. Thanks. -Matt

[actnow]

There id's are

jberryhill , HOWARD , ESQWire.com , pljones

In no particular order. And, they are very nice and informative.

Also, remember. The only thing they have to sell is
their time and their knowledge.

[mjreine]

actnow... thank you. I will try and be respectful of them and their time. -Matt

[jberryhill]

First off, one the things that Marksmen does is to "smoke out" offers to sell domain names, in order to use the communications as evidence. They specifically market their services to trademark attornies this way.

Read these:

------
WIPO Domain Name Decision: D2000-1336

... not show a listing for Eurostar, the administrative contact Alex Vorot or "Free Domains Parking" (See Exhibit G to Complaint, report from Marksmen, private investigator). The Complainant submits that by using the domain names "king5tv.com" and "king5news.com" the original ...
http://arbiter.wipo.int/domains/deci...2000-1336.html 04/24/03,
24231 bytes

WIPO Domain Name Decision: D2002-0896
... in January 2002, because of an asserted failure of the Registrar to have deactivated the names. Complainant retained an investigative firm, Marksmen, "to take steps to acquire the disputed domain names from Respondent" (id., para. 1 & Exhibit 6). According to the Registrar’s Verification ...
http://arbiter.wipo.int/domains/deci...2002-0896.html 03/22/03, 39962 bytes

Twentieth Century Fox Film Corporation v David A. Risser - Case No. 93761

... pages." (Risser Decl., p. 2). When the Complainant learned of the domain name registrations, it retained the trademark investigation firm of Marksmen, LLC, to investigate their registration and use. KierstenVanhorne of Marksmen spoke to the Respondent by telephone. The Respondent revealed that ...
http://www.arbforum.com/domains/decisions/93761.htm 11/04/02, 23336 bytes


WIPO Domain Name Decision: DBIZ2002-00204

... trade mark registration number 1158609. The Response has exhibited to it affidavits from an investigations manager and an investigative analyst with Marksmen, a trade mark investigation firm. The investigations undertaken by these deponents indicate that graphic trade mark registration number 1158609 ...
http://arbiter.wipo.int/domains/deci...002-00204.html 03/22/03, 13575 bytes

WIPO Domain Name Decision: D2001-0970

... ;Domain Manager", Complainant suspected that Respondent was another entity concealing itself behind the CostNet entity, and Complainant hired Marksmen, an investigating company, to contact Respondent and determine Respondent’s true identity. Marksmen tried numerous times to contact Respondent via ...
http://arbiter.wipo.int/domains/deci...2001-0970.html 04/24/03, 42262 bytes
------

Secondly, did anyone notice, or care, that the trademark registration is for a design, and includes a textual disclaimer?

Third, does anyone notice, or care, that the ACPA refers to "profit", and that the UDRP refers specifically to "out of pocket" expenses for having registered a domain name?

[actnow]

John, that is why you are the legal pro. And, I'm not.

There is an old saying "never try to beat a guy at his own game". You will lose everytime.

[Acro]

Third, does anyone notice, or care, that the ACPA refers to "profit", and that the UDRP refers specifically to "out of pocket" expenses for having registered a domain name?

What is the definition of "out of pocket" in the aftermarket? If one has bought the domain, their "out of pocket" expenses are not simply a registration fee!