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08-31-2005, 05:30 PM
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#1 (permalink)
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Last Online: Today 04:29 PM Join Date: Aug 2003
Posts: 1,842
DNF$: 1,232 Location: San Diego, CA
Country: | A Lawyer gets SM on my .com AS a .COM!! The name is 'law' and 'sharks' with .com at the end. I'm avoiding typing the name all togther so that it isn't listed in the search engines.
History:
- The name was owned by a lawyer in Colorado in the late 90's.
- The name dropped and I bought it in mid 2002. I listed it for sale.
- A lawyer from Los Angeles is awarded a registered service mark on the exact domain name with extension (ex. "TheName.com") July 15 2004!!!
Serial Number 78451545
Filing Date July 15, 2004
Published for Opposition June 21, 2005
Owner (APPLICANT) (his name, address)
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE
- The LA Lawyer in mid 2004 because making offers below asking price. I accepted, and he failed to make payment
- The LA lawyer is now threatening to take the name (via telephone)
So... is it legal to apply for a service mark on something you KNOW do not own, then harrass the owner for it? Should I sue this guy for devaluing MY property since I can't sell it to others without an issue? Perhaps this should be taken to the California Bar assn, since we're both in California?
__________________ The only domain reseller BRAVE enough to post prices: TheNameStore.com  ] [ |
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08-31-2005, 05:43 PM
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#2 (permalink)
| | 888-MRDELETED
Name: Joseph Slabaugh Last Online: 12-31-2008 09:58 PM Join Date: Jul 2004
Posts: 2,941
DNF$: 0 Location: youtube.com/mrdeleted
Country: | Re: A Lawyer gets SM on my .com AS a .COM!! that is called reverse hijacking, and if you get a lawyer, you'll win |
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08-31-2005, 05:48 PM
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#3 (permalink)
| | Platinum Lifetime Member
Last Online: 12-24-2008 06:21 AM Join Date: Jan 2005
Posts: 2,033
DNF$: 0 Location: USA
Country: | Re: A Lawyer gets SM on my .com AS a .COM!! I , without a doubt, would take this to the cal. bar assoc. , I don't see how this dirtbag could get a service mark on a domain he does not own , maybe a few lies in the paperwork? oh , that would be nice wouldn't it.
Last edited by Searchsix.com; 08-31-2005 at 05:48 PM..
Reason: oops
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08-31-2005, 06:20 PM
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#4 (permalink)
| | DNF Regular
Last Online: 10-18-2008 07:15 PM Join Date: Dec 2004
Posts: 830
DNF$: 4,630 Location: World | Re: A Lawyer gets SM on my .com AS a .COM!! Contact JBerryHill here in the forums. He is an expert in this area. |
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08-31-2005, 06:55 PM
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#5 (permalink)
| | Acro.net Αdministrator
Last Online: Today 08:42 PM Join Date: Feb 2004
Posts: 19,854
DNF$: 7,997 Location: USA
Country: | Re: A Lawyer gets SM on my .com AS a .COM!! "An opposition is now pending at the Trademark Trial and Appeal Board."
Did you appeal the mark or someone else did?
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08-31-2005, 07:20 PM
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#6 (permalink)
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Last Online: Today 04:29 PM Join Date: Aug 2003
Posts: 1,842
DNF$: 1,232 Location: San Diego, CA
Country: | Re: A Lawyer gets SM on my .com AS a .COM!! Quote: |
Originally Posted by RADiSTAR "An opposition is now pending at the Trademark Trial and Appeal Board."
Did you appeal the mark or someone else did? | That's interesting -- I see that somone HAS filed against it, and it wasn't me! I also found that his application is online, and includes this:
Declaration
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.
Signature: /123-4567/ Date: 07/15/2004
Signatory's Name: Victor Valleau
==========
This could get interesting. I can't imagine a clearer case if violation.
__________________ The only domain reseller BRAVE enough to post prices: TheNameStore.com  ] [ |
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08-31-2005, 07:22 PM
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#7 (permalink)
| | Acro.net Αdministrator
Last Online: Today 08:42 PM Join Date: Feb 2004
Posts: 19,854
DNF$: 7,997 Location: USA
Country: | Re: A Lawyer gets SM on my .com AS a .COM!! Hammer away - I would contact the office immediately if I were you.
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Acroplex.com • Professional Web & Graphics development |
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08-31-2005, 07:46 PM
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#8 (permalink)
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Last Online: Today 04:29 PM Join Date: Aug 2003
Posts: 1,842
DNF$: 1,232 Location: San Diego, CA
Country: | Re: A Lawyer gets SM on my .com AS a .COM!! I didn't realize that I could access all of this information was available on the www.USPTO.gov site!
Apparently a 4th party (not me, not the owner from the 1990's) is fighting for this trademark. It's a legal publishing company from Canada. http://ttabvue.uspto.gov/ttabvue/v?p...&pty=OPP&eno=2
There is going to be "testimony taken" between Sept 8 2005 and March 7 2006, with the whole process wrapping up Sept 2006! Click the links on the right and you're taken to a 5 page legal document where the Candian firm argues their case... THEY'VE BEEN USING THE MARK SINCE 2003, and received a Canadian trademark in 2004!
Remember, I've owned the name since 2002, and the mark is for my precise name with the ".com" in the mark.
I tried to file an opposition online, but I get an error that the deadline has passed. I tried to file a cancellation, but it says the serial number (78451545) is invalid (it's not!). Not sure what to do.
Apparently neither company bothered to look up the ownership before filing tons of legal documents?
__________________ The only domain reseller BRAVE enough to post prices: TheNameStore.com  ] [
Last edited by JuniperPark; 09-01-2005 at 01:18 PM..
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08-31-2005, 08:42 PM
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#9 (permalink)
| | Platinum Lifetime Member
Name: Dave Zan Last Online: Today 05:56 AM Join Date: Aug 2004
Posts: 1,634
DNF$: 0 Location: Manila | Re: A Lawyer gets SM on my .com AS a .COM!! You could also use the mess.com UDRP as an example.
But that tidbit you found in USPTO is an even better bet.
__________________ Dave Zan says Vidi, Vici, Veni! :-D DaveZan.com - My Blog |
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08-31-2005, 08:59 PM
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#10 (permalink)
| | Philadelphia Lawyer
Last Online: Yesterday 10:22 PM Join Date: Oct 2002
Posts: 2,497
DNF$: 4,007 | Re: A Lawyer gets SM on my .com AS a .COM!! Quote: |
So... is it legal to apply for a service mark on something you KNOW do not own, then harrass the owner for it?
| The question is not necessarily that simple. However, the short answer would appear to be a violation of the federal perjury statute has ocurred.
(that is the import of 18 USC 1001 referenced in the standard declaration)
__________________ John Berryhill Ph.d., esq.
John-AT-johnberryhill.com
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08-31-2005, 09:01 PM
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#11 (permalink)
| | Acro.net Αdministrator
Last Online: Today 08:42 PM Join Date: Feb 2004
Posts: 19,854
DNF$: 7,997 Location: USA
Country: | Re: A Lawyer gets SM on my .com AS a .COM!! It appears that the domain was owned before, between 2000 and 2002.
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Acroplex.com • Professional Web & Graphics development |
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09-13-2005, 09:38 PM
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#13 (permalink)
| | Platinum Lifetime Member
Last Online: 12-30-2008 05:44 PM Join Date: Sep 2002
Posts: 1,107
DNF$: 738 Location: Brooklyn, New York
Country: | Re: A Lawyer gets SM on my .com AS a .COM!! Quote: |
Originally Posted by dtobias | I read your article Dan. Great stuff, but it had me so angry at the incompetence of these judges.
__________________ WAL*BORG - Resistance is futile. You WILL shop here. |
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09-13-2005, 11:08 PM
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#14 (permalink)
| | Acro.net Αdministrator
Last Online: Today 08:42 PM Join Date: Feb 2004
Posts: 19,854
DNF$: 7,997 Location: USA
Country: | Re: A Lawyer gets SM on my .com AS a .COM!! Quote: |
Originally Posted by dtobias | Where is a link to the paint.biz decision? It doesn't come at at http://arbiter.wipo.int/domains/search/
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09-13-2005, 11:16 PM
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#15 (permalink)
| | 888-MRDELETED
Name: Joseph Slabaugh Last Online: 12-31-2008 09:58 PM Join Date: Jul 2004
Posts: 2,941
DNF$: 0 Location: youtube.com/mrdeleted
Country: | Re: A Lawyer gets SM on my .com AS a .COM!! http://www.arbforum.com/domains/decisions/112596.htm
If you click on the link in the article that should come up |
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09-13-2005, 11:24 PM
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#16 (permalink)
| | Acro.net Αdministrator
Last Online: Today 08:42 PM Join Date: Feb 2004
Posts: 19,854
DNF$: 7,997 Location: USA
Country: | Re: A Lawyer gets SM on my .com AS a .COM!! Thanks Joe.
But that was done using the NAF, not the WIPO.
To be honest, I am not aware of the NAF's role and legtimacy over WIPO. Why would one file a case with NAF over the WIPO?
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Acroplex.com • Professional Web & Graphics development |
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09-14-2005, 08:10 AM
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#17 (permalink)
| | Gold Lifetime Member
Last Online: 12-12-2006 09:36 PM Join Date: Sep 2002
Posts: 588
DNF$: 105 Location: Boca Raton, FL | Re: A Lawyer gets SM on my .com AS a .COM!! NAF and WIPO are both ICANN-accredited dispute resolution providers under UDRP. There were some others, but I'm not sure any of them are still operating. |
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09-15-2005, 01:21 AM
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#18 (permalink)
| | Gold Lifetime Member
Last Online: 10-26-2008 11:37 AM Join Date: Dec 2002
Posts: 35
DNF$: 647 Location: Kuwait | Re: A Lawyer gets SM on my .com AS a .COM!! Perhaps someone like Dan or JB could correct me if I'm wrong, but I thought the purpose of using NAF over WIPO for UDRP was that statistically their 'experts' were more likely to side with the 'mark' holder in cases of dubious legitimacy?
Or am I reading too much into the results of a small sample of really bad cases? |
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09-15-2005, 01:26 AM
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#19 (permalink)
| | Acro.net Αdministrator
Last Online: Today 08:42 PM Join Date: Feb 2004
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