how can we get our domain?

[jberryhill]

considering it is a legal issue and you claiming to be an attorney and clearly being a paying part of this community maybe posting helping words or not posting anything at all would be better then thread bashing.

Minor correction: I'm not a "paying" part of the community, but I have done work for the owner and the former owner of DNForum.

No attorney can or should provide specific legal advice on a forum. Attorneys are encouraged to help promote knowledge of the law, and attorneys will sometimes comment on issues raised in a forum thread. But to actually advise a client in public would be malpractice since any attorney-client communication is required to be maintained in confidence by the attorney.

In fact, in at least four of the UDRP disputes I've handled in the last year, the Complainant used print-outs of threads from DNForum as evidence.

Trademark disputes tend to be fact specific, and in the overwhelming majority of instances where someone posts about a specific concern of theirs, there are usually incomplete facts. Among the reasons that problems are incompletely defined is that what may or may not be relevant isn't known to the person posting the question.

This thread is a good example of a common misconception widely held among DNForum members, and of people mixing up what might or might not be relevant issues.

To illustrate I'll start with the question as initially posed:

"We own a trademark on a name"

Now... that can mean a number of things to a number of people, and what that statement means can depend on what country you are in. For example, the common misconception at DNForum is that trademark rights are determined entirely by registration. This is shown in the comment above stating:

1. He registered the domain before you registered the TM - domain not registered in bad faith.

Notice that the comment refers to "before you registered the TM" when you had not mentioned whether or not your TM was registered. Trademarks need not be registered to be legally effective. What someone else had asked was "Does your trademark predate the registration of the domain?"

There's a difference there, and there's no way of telling, in your answer, whether or not you are or are not referring to the date of registration of your trademark, or an earlier date by which you may have had legally effective rights. The real headscratcher in the conversation is this passage:

Is the trademarked term generic/descriptive?

very descriptive.

There is a significant difference between "generic" and "descriptive" as those terms are used in trademark law. But a word is not "descriptive" in a vacuum. A word or phrase is only "descriptive" in the context of that to which it is applied. From this answer, one can't tell if you consider the term to be "very descriptive" as applied to your goods and services, or whether you mean the term is "very descriptive" as applied to the way the domain registrant is using it.

No chance of a court of law turning it over if we sue and he does not show up to court? He does not live in the USA.

Whether or not the domain registrant is in the US is not determinative of whether a court in the US would be able to exercise jurisdiction over the dispute.

If it is a .com name for example, the .com registry is in the US, and you didn't mention where the registrar is, where the name is hosted, and any of several other facts on which jurisdiction in the US might be premised.

In any event, my comment was not "thread bashing". My comment was merely intended to point out that the level of knowledge in the "community" is tremendously uneven, and that basing a business decision on the input of random members of it is not a good idea.

[jsonline]

Thank you very much for clearing that up and as I said I would not take what was said here and base legal decisions on it.

Talks with this guy are over I have to just walk away from the domain and hope he later does something to step on toes and mess up. The domain in question is my second business name and the trademark is my business name. He has done some research on my personal name and found my 1st business so now he thinks I have tons of money to throw at him for this .com so I am just going to walk away from it and keep an eye on it and only hope he messes up.

Thank you all for your time.

by the way the domain is with eNom and hosted with them as well in Washington state.

[fab]

In fact, in at least four of the UDRP disputes I've handled in the last year, the Complainant used print-outs of threads from DNForum as evidence.

Uh, Oh; good to know we're getting some international legal recognition. Hope no ones been subpoenaed yet.

[jberryhill]

hope he later does something to step on toes and mess up.

What a way to live.

[BLazeD]

Originally Posted by jberryhill

What a way to live.

My thoughts exactly

[Downloads]

Originally Posted by jberryhill

What a way to live.

That may be, but I think you've come in with a bit of an overly negative attitude.

You are entitled to your opinion, but don't think it's gospel. The people on these forums are VERY knowledgeable about domain issues and whilst it doesn't repace getting professional advice, professional advice costs and if one wanted to avoid those costs then getting the very good advice on offer here first is a good start I think.

[Dave Zan]

Originally Posted by Downloads

The people on these forums are VERY knowledgeable about domain issues and whilst it doesn't repace getting professional advice, professional advice costs and if one wanted to avoid those costs then getting the very good advice on offer here first is a good start I think.

Yeah, well...considering some things John mentioned previously:

Originally Posted by jberryhill

Now... that can mean a number of things to a number of people, and what that statement means can depend on what country you are in. For example, the common misconception at DNForum is that trademark rights are determined entirely by registration. This is shown in the comment above stating:

Notice that the comment refers to "before you registered the TM" when you had not mentioned whether or not your TM was registered. Trademarks need not be registered to be legally effective. What someone else had asked was "Does your trademark predate the registration of the domain?"

There's a difference there, and there's no way of telling, in your answer, whether or not you are or are not referring to the date of registration of your trademark, or an earlier date by which you may have had legally effective rights. The real headscratcher in the conversation is this passage:

There is a significant difference between "generic" and "descriptive" as those terms are used in trademark law. But a word is not "descriptive" in a vacuum. A word or phrase is only "descriptive" in the context of that to which it is applied. From this answer, one can't tell if you consider the term to be "very descriptive" as applied to your goods and services, or whether you mean the term is "very descriptive" as applied to the way the domain registrant is using it.

If it is a .com name for example, the .com registry is in the US, and you didn't mention where the registrar is, where the name is hosted, and any of several other facts on which jurisdiction in the US might be premised.

This one probably stands out:

Originally Posted by jberryhill

basing a business decision on the input of random members of it is not a good idea.

Wholeheartedly agree it's not a good idea, especially if one doesn't know any
and all available facts in the specific real-world scenario.

And for someone to hope misfortune befalls that person, just to be able to get
what they want? I suppose that means several things for several people also,
but I personally wouldn't that to happen to me.

[Downloads]

I wasn't saying that I didn't think this person didn't know his stuff and I wasn't making reference to the person waiting for someone to slip up. He's obviously very good in his work. I think you missed the point. There are people here who also know their stuff and collectively will give you a good start. I would be very happy to come here and get advice before i sought a lawyers opinion for example. And I wouldn't need anyone to tell me otherwise.

[Warrior]

Originally Posted by jsonline

not looking for free but does my trademark protect me against this guy holding my name hostage for tens of thousands of dollars as he is right now?

Obviously you don't want to spend a lot of money for this domain, What I DON'T understand is where you say the owner is "holding your domain hostage" Huh? Because you have a TM on the name does not automatically qualify you as the rightful owner.

The owner of the Anaheim Angels "Arte Moreno", felt much the same way you do when he tried to acquire Angels.com, The domain owner was asking something like 300K, Moreno refused to pay it and hired his legal team instead to attempt a reverse hijacking, Moreno LOST and justice prevailed.

I own a few generic domains, and not a week goes by that I don't get inquires where buyers try unsuccessfully to name their own price.

[Banned: domain newbie]

wots the name - ill tell you

p.s. but if you've got no money for udrp, wots the point anyways

you gotto have money for udrp

[jberryhill]

There are people here who also know their stuff and collectively will give you a good start.

That's certainly true.

Now, how do you know that the domain registrant in question is not also a member of this community?

How do you know whether or not that person is one of the ones offering advice? Hmmm?

So, next year, when someone starts a thread asking, "Someone who didn't even start using a trademark until two years after I registered a descriptive domain name is trying to take it away from me; how can I best deal with the situation?" Do we say, "Sorry, it wouldn't be very neighborly of us to help you, because the other person asked first."

[italiandragon]

John, I admire you knowledge and wish once to become a lawyer, forgive me a silly question:


why domain names need to be seen still as intangible assets when the amount of money some attract are quite big and how come some TM holders can still think to go around reverse-hijacking these assets?

Comparing to realestate, and considering our industry e-realestate, then I wonder if these UDRP panels would recognise some homeowners TMing their home and pretending to get all the homes which are similar to theirs.
TO me there is a lot of crap that someone need to fix.

Why things never chnage regarding the way UDRP and WIPO work? Why Sedo, Afternic, Moniker , etc, invite us to invest in PREMIUM DOMAINS if these are not recognised PROPERTIES by those panels?

How hard is for all domainers to get together and boycott all the industry till ICANN or whoever is entitled to , does not change something?

Thanks and forgive me if I asked something to silly for you.

[fab]

Notice that the comment refers to "before you registered the TM" when you had not mentioned whether or not your TM was registered. Trademarks need not be registered to be legally effective. What someone else had asked was "Does your trademark predate the registration of the domain?"

Yes indeed this is one of the sticky issues here on the forum for us non-lawyers and for me in particular. I would love to see some thorough clear information about this, which I actually suggested as part of an Exclusive Newsletter.

In any case, could you please explain how does someone know whether a non-registered TM is a TM if no court has deemed so, e.g., some known by many web-site, but not known by the vast majority, excluding sites (TM) like Google & Yahoo, etc.

[Downloads]

Originally Posted by jberryhill

That's certainly true.

Now, how do you know that the domain registrant in question is not also a member of this community?

How do you know whether or not that person is one of the ones offering advice? Hmmm?

So, next year, when someone starts a thread asking, "Someone who didn't even start using a trademark until two years after I registered a descriptive domain name is trying to take it away from me; how can I best deal with the situation?" Do we say, "Sorry, it wouldn't be very neighborly of us to help you, because the other person asked first."

I don't see why.

I think this community in my experience gives impartial advice to anyone who wants it and will do so just as long as they aren't asking something that is illegal! And more often than not, something that is unethical.

[Dloganesq]

Originally Posted by fab

Yes indeed this is one of the sticky issues here on the forum for us non-lawyers and for me in particular. I would love to see some thorough clear information about this, which I actually suggested as part of an Exclusive Newsletter.

In any case, could you please explain how does someone know whether a non-registered TM is a TM if no court has deemed so, e.g., some known by many web-site, but not known by the vast majority, excluding sites (TM) like Google & Yahoo, etc.

In any case, could you please explain how does someone know whether a non-registered TM is a TM if no court has deemed so, e.g., some known by many web-site, but not known by the vast majority, excluding sites (TM) like Google & Yahoo, etc.

Now, there’s a $64 million question. I’m assuming you are referring to the treatment of such trademarks in a UDRP dispute. At the risk of oversimplifying, it is very difficult to know how an unregistered trademark will be treated by a single-member or three-member panel of WIPO or NAF.

As John Berryhill stated above, trademark issues are very fact specific. And the way those facts are considered appears to be a roll of the dice. My last UDRP dispute involved an unregistered trademark and though we had a great deal of evidence to show that Complainant could not establish common law rights (including, among other things, that Complainant used various names in reference to its business; that there are hundreds of similarly named businesses in the same geographic location; the existence of an earlier-established company with the same name- in the same geographic area providing the same exact services as Complainant; the presence of another domain name similar except with respect to the addition of an “s” at the end providing the same exact services as Complainant), the panelist appeared to ignore the evidence presented, glossed over substantive argument, summarized the facts in a manner that contained erroneous dates, appeared to rely on argument unsupported by any evidence and left 75% of the story out of the published decision, doing away with the common law trademark rights issue with essentially one sentence. Not only that, Complainant could not, and did not, prove registration and use in bad faith but those were simply summary findings as well. And ironically, this panelist is one who may even be marginally deemed friendly to Respondents from time to time. I am still disturbed with the way the decision was written knowing all of the facts submitted by both sides that were not made part of it.

So, how does someone know whether an unregistered TM is a trademark if no court has deemed it so? Before the decision in the case above and the selectively summarized facts used to support the decision, I’d have said that examination of any number of factors that may support or disprove common law rights would lead you in the right direction. I guess you just gather your evidence, submit your argument with support and cross your fingers, legs and eyes and hope your assigned panelist isn't having a bad day... ______________________________________________
Deborah A. Logan, Esq.
Intellectual Property, Internet & Technology Law
DLogan@DomainLegalCounsel.com
www.DomainLegalCounsel.com

[Downloads]

Thanks for that great post, it's all pretty much as I expected then! Roll of the dice sums it up!

[HuntingMoon]

agreed- there are quick and helpful posts here when solicited. on the flip-side though there is sometimes a bias against udrp's and tm holders rights here too. there have been a few threads where i could see a resident attorney here saving somebody a lot of money though- and with quality advice (in my non-lawyer opinion).