New TM going after old DN

[lgolding]

Need advice on chances of wining at WIPO.

I think I'm fine.
I own a dot net, registered some time ago, no TM's then. Clearly was not registered in bad faith. The domain word was just awarded a TM, and they own the dot com, and are now sending C&D letters and threats of WIPO filings to every alt TLD and ccTLD.

The domain word is rather generic, 'digi' + word, there are several businesses and products using the word in different markets worldwide, I'm surprised the TM was awarded. It is similar to Intel getting a TM for 'microchips'. A google search of the word returns over 5000 results, very diluted. They never had a website up at the dot com, still don't, are not ready with their product, are admittedly in 'stealth mode', are selling nothing yet so I can't compete, the mark is not well know at all. This is all preemptive buy them and attempting to retroactively gain all versions of the domain.

My domain has always been for sale, never had a website other than forwarding to the general for sale site, ChoiceNames.com.

We have spoken on the phone, they called and offered out of pocket, and I said I'd get back to you. I have no problem selling the DN for a reasonable fee of $1200 or so, more than out of pocket for 3 years of registration, but not the 7k asking price. I am not 'offering' to sell it to them; they are a TM holder after all.

I'll be glad to give details on the board or privately, I'm a 5-year DN vet, but new to the board.

Thanks in advance for any advice.

[Prowler]

im NO legal pro...but i have held TM names so ive done alot of research for myself..

you should win a wipo dispute..read up in the wipo cases im sure theres plenty of these disputes..

seems to be the new trend..people think they can file a TM then take the doman from the original owner with claims of squating and bad faith..even though the domain was registered before the TMs in question.

Dont sweat it..for any kinds of wipo threats id raise my price to 100k..nothing is worse than having a TM name and not owning the domain..hehe

good luck

P.S. there is also some threads on this board about this..search it out!

[jberryhill]

"The domain word was just awarded a TM"

What does that mean?

It was just registered? It was recently applied for? In what country? What is their first date of use claimed in the application? What have you been doing with the domain name....

"They never had a website up at the dot com, still don't, are not ready with their product, are admittedly in 'stealth mode', are selling nothing yet so I can't compete, the mark is not well know at all. "

If they are "selling nothing", then what makes you think they have a trademark? Trademark rights are only accrued by use of the term in commerce. In order to register a trademark in the US, if that is what you mean by "awarded a TM", then they had to submit a specimen showing how the mark is used, and they also had to allege their first date of use.

The various pieces of the question do not fit together coherently.

And this is precisely why questions relating to a specific problem are best pursued in consultation with an attorney who can walk through the various facts, and there are many, that may or may not be important in a specific factual situation.

[lgolding]

Thanks, agreed I must clarify.

Apologies for being so cryptic, not sure if I should give the domain on a board.
Lets say for this post that the TM is 'digiphone', and the domains are digiphone.com and net.

The 'word' digiphone was in common use in describing potential new products and the like for years. I registered the dot net speculatively; there were no TM's for digiphone. The subject TM holder had registered the dot com just prior to my registration of the net, the failed to take the net. The dot com did not resolve to a site. Research at archive.org shows that until last month it only resolved to a two word 'under construction' page. Now it shows their logo (with 'tm'), nothing more.

I have never used the domain, have only offered it for sale to startups or such, resolves to a general non-domain specific for sale page.

The dot com registrant was granted a USPTO TM some time after my registration of the dot net. It is for 'digiphone' in connection with software/hardware; software for communication between PC's and their hand held hardware, they are going to manufacture portable devices. One of my key questions is is the time of their TM issuance versus my domain registration important? Is this a defense against registration in bad faith?

They have a trademark as evidenced by the USPTO searchable website when entering the word digiphone, issued in 2000, live.
Currently they are not offering any goods or service from their website. They say they are a start up, 'everything is in place' for a nationwide launch soon, but not currently, at the time I was made aware of their existence by their contacting me demanding the domain. Apparently there were goods and services sufficiently demonstrated to the PTO, but not via the website. Is this therefore a weak mark, perhaps because there is no product being currently sold, marketed through the website, or advertised nationally yet?

Again suggesting a weak mark, my simple google shows 5k instances of the 'digiphone' all unrelated to their company, more related to the generic product idea/concept. Some are specific to highly unrelated products made/marketed by big companies, like a large scanning device by Kodak using the same name. They claim that they are sending C&D letters to most of those and have many WIPO cases being filed.

It seems they are a legit start up by virtue of the TM, are nearing a launch of a substantial product, have legitimately obtained a US TM, but are just now rounding up all the versions of the domain name. Rather after the fact of their development and marketing strategy. How relevant is their timing of trying to diligently enforce their TM? And since they are not 'live' yet, who is to say they will actually make it to market, be successful and survive long term as the TM holder for this word and product?

Losing interpretation.
They have a TM (period), and I have used the identical domain in bad faith by offering it for sale to the general public. They say they don't want their competitors buying it and creating confusion. They want it and claim that by us law it is theirs, they also claim they have filed a WIPO claim, but I'm sure this is not true, yet. I am gearing up for defense of that claim.

Wining interpretation.
There was no TM at time of registration.
Term/word is/was commonly used to generically describe a device. They now wish to use that word for a product, and have been awarded a TM that will require much defending.
Their mark is weak; it is not on the market yet and is not commonly known. Registrant had no knowledge of mark until contacted by TM holder, no attempt has been made to sell to, or deny use to, TM holder. I have not been in competition with TM holder, have not diluted their mark, and have not caused confusion, or misdirected potential customers through the passive use of my version of the domain.

Sorry to frustrate by my attempts at describing facts on a board and without using the real domain/TM.

So, the obvious and overall general question, since I am new to the board and can't find the answer. Is it common to find and hire council through this board, and if so do you commonly represent Respondants for WIPO cases, and what would the fee structure be (I'm sure it depends on complexity).

Thanks in advance.

[domainduck]

I had a similar experience over a year ago.

$1,648.12 later, I still have the ( useless ) domain name.

I wonder what the .12 cents was for?


quack

[lgolding]

what was the bill for, 1/2 of a wipo fee, or council? Thanks

[HOWARD]

there are a number of good attorneys that post to this board who all defend WIPO cases. Your best bet is to privately email them to find out if they would be interested in taking your case and, if so, how much their fees would be.

[domainduck]

It all went to council... He did a good job.

Originally posted by lgolding
what was the bill for, 1/2 of a wipo fee, or council? Thanks

[domainduck]

Here is a new and relevant article from Demys:

"In no less than three separate reported domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP), decided within a day of each other, the complainant has been unsuccessful because in each case it relied upon a trademark which came into existence after the registration of the domain name."

Read the full text here: http://www.demys.net/news/2003/01/27_th.htm


quack

[options]

Originally posted by lgolding

We have spoken on the phone, they called and offered out of pocket, and I said I'd get back to you. I have no problem selling the DN for a reasonable fee of $1200 or so, more than out of pocket for 3 years of registration, but not the 7k asking price.

I don't get it. You are ready to accept $1,200 but not $7,000?

[lgolding]

BIGFART.

Your plan is exactly what I had planned for some while. However I was wanting to gauge the soundness of a defense if they balked and said no way.

The 1.2k price I suggested was exactly because it is just barely less than a single panelist wipo case fee, so they would be silly to not pursue it.

Speaking with them is what I have been planning to do, they have been waiting for me to call back, I'm taking my time. There can be no actual off the record conversation, but that is the right sentiment I need to deliver in the conversation. They would just paraphrase any thing I say and include it in the wipo claim. What I like about me calling them is that it is not likely to be recorded, as opposed to when they called be on a speakerphone.

I have found some similar cases at the wipo to reference, and combined with this thread's feedback, I should have no problem making it clear to them that is will be difficult to obtain the domain through litigation.

I of course would not offer to sell it to them literally, I can't as they are a trademark holder, bad faith trap there for sure, I will let them know I am not denying them or any other preexisting user of the word the use of the domain, they should provide me an offer if they wish to obtain it. Thanks.

DUCK

Thanks for the article link, have not read it yet but that is what I expected to find, precedence for similar cases. Great to flaunt in the upcoming conversation with them.

OPTIONS.

Well, a 1.2 k price is much more likely to be met with approval by them just to get it over with and get it out of my hair. They have obviously been aware of the 7k ask price for some time and have already chosen to threaten to litigate and go to the wipo. Ploy or not, they seem to not want to pay 7k, but are seemingly willing to pay 1350 for a wipo fee, thus the 1.2k price to quick close the deal. I could certainly hold out for more if I had the time on my hands, and the attitude, I could probably get it, but I would run the chance of getting nothing, by losing a wipo case for some reason, or worse, having to pay for defense and still losing with a wipo panel with a bad attitude. A bird in the hand.......

[chatcher]

I am not a lawyer.

Negotiations in a case like this are not always based on economics. If their ego gets in the way, they may pay more to litigate than to settle.

I tried to negotiate a settlement on a generic two-word domain name for which the other party had a registered trademark. I offered to settle for $1200, or less than their cost of arbitration (they were already paying an attorney, and I was trying to avoid doing so). They offered half, by some strange logical interpretation that we should split the cost of arbitration. I tried to make the point that $1200 to me was a sure thing, but arbitration has an uncertain outcome. They refused, and filed a UDRP complaint. I defended it myself, did not pay for additional panelists, got a sane panelist, was very lucky and and not only won but received a reverse domain-name hijacking determination. The complainant has not contacted me since, is now using the .net version of the domain, and is undoubtedly losing business and image by not having the .com. I have no idea what they spent trying to take the name from me.

I am not recommending defending your own dispute without an attorney, on the contrary if the name is worth much at all to you it would be prudent to hire one of the experienced attorneys who frequent this forum. They may quote you a very reasonable rate. In my case, I was willing to risk losing the domain name, and spent quite a few hours of my own time working on the response.

In your case, your best defense is that you had never heard of the complainant at the time of your registration, and should not have been expected to have heard of them since they did not have a registered trademark at that time. Your biggest problem is that the domain name is not really a generic word or words but a made-up mark (a contraction of digital and telephone in your fictional example). This is mitigated by the fact that it is a term in common use by many parties unrelated to the complainant.

Again, I am not a lawyer and my advice probably isn't worth much more than what you paid for it.

[jberryhill]

"I have no idea what they spent trying to take the name from me."

Lots.

As the other attorneys here will attest, most complainant's attorneys are UDRP first-timers (at least for the ones which are not frequent fliers who file bulk template complaints for the same clients over and over, such as, for example the ones that Arent Fox cranks out for AOL).

The result is that the complainant ends up paying for their attorney's education as the attorney has to familiarize him or herself with the rules.

Even an experienced complainants' attorney will end up costing more than a defense, because in cases that could go either way, the complainants job is harder. They have to build a box, with three sides, that doesn't have a hole through which the respondent can get out. In other words, the complainant's job is to prove three things. The respondent's job is merely to undermine at least one of those three things.

In cases brought by government bodies in the US, the legal bills can be found through local equivalents of the Freedom of Information Act, since these are expenses paid by public bodies.

In the cityofsalinas.com, .net, and .org case, the bill to the City of Salinas was about $23,000. I doubt any of the attorneys here have ever gotten close to a significant fraction of that for a defense.

But one should never assume rationality on the part of the complainant, since there are often motivations such as wanting to make a point, obtaining a "deterrent" effect, attorney greed in not communicating with the client, or pure unadulterated ego, that can drive these things.

[lgolding]

You are both right!

They were all about ego and nothing more.

The said since they already had council doing so many other actions for them that this one would be 'relative' inexpensive, but that they would spend whatever it took to win the domain, well in excess of a WIPO filing. He volunteered that it is 'all about principal' and 'ego', literally. Funny, that is the same reason I wanted to defend it!

They would have had an extremely hard time proving what was needed to win; I believe it was impossible for them to win. If I teamed with council I believe we could have gotten a finding of reverse domain hijacking! He believed whole heartedly, and argued excessively that solely because he held a US TM for the word, that he was owed every domain of every extension regardless of when registered or what they were being used for. He is even going after the .jp domain. Relax and get a hobby dude.

Blowing smoke perhaps, but that was their 'stance'. But somebody straightened up the boss, and he settled to 'buy' it for $900. Fine with me. I was silently looking for $1,200, told him I needed a ‘reasonable fee’ well above the cost of goods to date, because I felt my case was very strong, their mark was very weak, brand new, terribly diluted already, there was no way to prove bad faith registration or use, and most importantly that there were several foreign businesses using the name for their goods and services that have been using the name well before his filing for the TM, and that in particular that they were my market, selling the name was valid and likely, and selling to them would not constitute selling it to his competition or denying him the opportunity to obtain the domain.

Well, blowing smoke back perhaps, but I indeed believed I could have easily won the case, either defending myself at the WIPO by sighting so many similar cases for each point, or paying council say $2,000 or so. But that would honestly have been a waste of my time; I have less time that money.

So I settled to take $900 and get it over with fast. He was steamed at having to pay anything over out of pocket, and was belligerent throughout the whole transfer r process, including trying to wreak havoc on the escrow.com system. His frustration in the end was satisfying to me. It is possible that paying only 900 versus 1,200 or even the ask of 7,000 was satisfying to him. Call it a win-win? I don't know, it was actually fun.

And honestly I did not think I could ever sell it to the other foreign businesses at present, perhaps years from now when that particular segment of the industry takes off. The domain did not receive any offers other than one in 3 years, traffic was very low, search traffic was low because it was such a particular word combo. So at present it was worth not so much to me, but may have ripened up later. It was a dot net after all, holding the dot com over the dot net TM holder would have been a very different story. I would have fought for that hands down.

Thanks to you all for your advice. Had I chosen to go to the WIPO I would have certainly contacted the lawyers who contribute here. It would have been fun and easy I suppose, but I would have been left with a domain that I would have needed to try hard to sell at present, and been a little poorer, but satisfied none the less. I’ll be back here next time a situation pops up, ready to go at it with council because of ‘principle’.

[chatcher]

I am glad it worked out for you.

I have been in a similar situation several times and it is impossible (at least for me) to be completely unemotional about it. I know exactly what you mean when you say it was fun. That may sound strange or improper to some, but when you are trying to negotiate with someone who thinks their trademark gives them a universal monopoly over the use of common language it feels good to make a little headway.

I don't consider myself a cybersquatter by any means. It isn't that I purposely register a name with the intention of extorting money from a trademark owner, rather that so many generic terms with so many potential uses have been registered as trademarks.