Please help me - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**manju-domain** · 11-26-2007, 06:58 PM

Dear domain friends ,

Three years ago I had registered domain name www.li-fi.com and back then there was no Trade Mark registered with this word.

Six month back one person approached me and asked for selling price and I let him know my asking price.

week later , he obtained Trade mark for this word and now he is threatening me to take action against me at court in new-york if I do not transfer domain name to him.

I need your expert advice please , what should I do now ?

Thanks

**dolansco** · 11-26-2007, 07:54 PM

http://en.wikipedia.org/wiki/Reverse_domain_hijacking
Send him this link ....
and tell him its not for sale anymore ... and redirect to goatse

**Dave Zan** · 11-26-2007, 08:12 PM

Quote:

Originally Posted by manju-domain

week later , he obtained Trade mark for this word and now he is threatening me to take action against me at court in new-york if I do not transfer domain name to him.

Is this the other party in question?

Quote:

Word Mark LI-FI
Goods and Services IC 041. US 100 101 107. G & S: Personal coaching services in the field of life coaching and fitness coaching; Personal training services, namely, strength and conditioning training; Physical fitness conditioning classes; Physical fitness consultation; Physical fitness instruction; Providing fitness and exercise facilities; Providing information in the field of exercise training
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 77127845
Filing Date March 11, 2007
Current Filing Basis 1B
Original Filing Basis 1B
Published for Opposition September 11, 2007
Owner (APPLICANT) Halevy, Jeff INDIVIDUAL UNITED STATES #907 88 Greenwich St New York NEW YORK 10006
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

At the very least, they don't have a trademark registration at USPTO just yet.
They could try to demonstrate common law, although it's an open question as
to when they started using it as such and if it pre-dates the domain name.

What you described happens a lot, though not everyone tells about it online.

One suggestion is showing that link dolansco posted. Another suggestion is to
tell them to forward their communications to your attorney, if you have one.

Yet another is to simply ignore them but keep their emails and what not, then
be ready to dispute their dispute if push comes to shove. You'll never really
know what they'll do, but that doesn't mean you shouldn't take precautions.

**manju-domain** · 11-26-2007, 08:26 PM

dolansco and Dave Zan

Thanks for your advice

**jberryhill** · 11-26-2007, 08:44 PM

Quote:

At the very least, they don't have a trademark registration at USPTO just yet.
They could try to demonstrate common law, although it's an open question as
to when they started using it as such and if it pre-dates the domain name.

No, it's not an "open question".

Do you see where it says: "Current Filing Basis 1B"?

Folks, all of these lines MEAN SOMETHING.

1A - application based on use.

1B - application based on intent-to-use

Do you want to re-phrase that, Dave?

**damage** · 11-26-2007, 08:58 PM

so what would you suggest here Jerry? I mean, it's completely BS if the fellow is trying to con the domain off of manju_domains, by initially contacting "her" and then trying to con "her" out of a name that "she" owns knowing that there were no TM issues at the time of purchase.

I do hope that Manju_Domains has proof of all the emails.

**NameGuy** · 11-26-2007, 09:28 PM

see: lificoaching.com

Domain Name.......... lificoaching.com
Creation Date........ 2007-02-11
Registration Date.... 2007-02-11
Expiry Date.......... 2009-02-11
Organisation Name.... Jeff Halevy
Organisation Address. 342 Broadway
Organisation Address.
Organisation Address. New York
Organisation Address. 10013
Organisation Address. New York
Organisation Address. UNITED STATES

Halevy, Jeff
http://www.zoominfo.com/search/Perso...nID=1010022360
http://www.linkedin.com/pub/0/97B/116

The Garr Group
http://www.google.com/search?hl=en&s...egarrgroup.com
http://www.bizjournals.com/philadelp...14/focus4.html

**Dave Zan** · 11-26-2007, 11:08 PM

Quote:

Originally Posted by jberryhill

No, it's not an "open question".

Do you see where it says: "Current Filing Basis 1B"?

Folks, all of these lines MEAN SOMETHING.

1A - application based on use.

1B - application based on intent-to-use

Do you want to re-phrase that, Dave?

John, the open question part I'm referring to is the party's ability to show he
has a common law trademark apart from USPTO. But...I'll give it a try.

At minimum, the party in question has filed an application that might or might
not be eventually granted trademark status by the USPTO. Beyond USPTO,
they can still try to demonstrate common law since trademark rights arise via
use in commerce rather than registration.

Oh, manju-domain, forgot one more suggestion: talk to an attorney with real-
world experience in these legal matters. Then again, that's really the sensible
"advice" you can get around here.

**mediawizard** · 11-27-2007, 08:44 AM

Why dont they go after lifi dot com. As it is hyphenated names dont really appeal...

Maybe because they think manju_domains is an easier target?

Are you sure you didn't approach them offering to sell... then its a problem. Also, parking is generally not accepted as first use in commerce.

**DNQuest.com** · 11-27-2007, 09:27 AM

Dave, with it's own application, they are stating they are not using the name in commerce yet. The "intent to use" means they plan on using but are not using as of yet. So up to the filing date, the term has not been used in commerce.

Right now the domain predates the filing date for intent to use. What ever you do, do not change the usage of the domain in the field of life coaching. If there was references there already, make sure you can support prior usage of it.

**jberryhill** · 11-27-2007, 09:46 AM

Quote:

I mean, it's completely BS if the fellow is trying to con the domain off of manju_domains, by initially contacting "her" and then trying to con "her" out of a name that "she" owns knowing that there were no TM issues at the time of purchase.

It happens all of the time, though not always out of nefarious intent. There are people who genuinely believe that filing an intent-to-use application with the USPTO provides them with the right to a domain name, regardless of the chronology.

Dave, read what DNQuest wrote. Let me know when the lightbulb turns on.

Quote:

so what would you suggest here Jerry?

I'd suggest calling me John.

**BILLBO** · 11-27-2007, 09:59 AM

Quote:

Originally Posted by jberryhill

I'd suggest calling me John.

That just made me laugh!

**damage** · 11-27-2007, 10:57 AM

Quote:

Originally Posted by jberryhill

I'd suggest calling me John.

My bad John

.

**Dave Zan** · 11-27-2007, 08:09 PM

Quote:

Originally Posted by DNQuest.com

Dave, with it's own application, they are stating they are not using the name in commerce yet. The "intent to use" means they plan on using but are not using as of yet. So up to the filing date, the term has not been used in commerce.

Well, there's that lightbulb moment John mentioned. Thanks, both of you.

**manju-domain** · 11-27-2007, 08:30 PM

Thanks to all for your help