Received C&D email on a cityname.biz

[Carter]

????????????

In response to my posting?

Patrick

No man in response to HugeGrowt
He don't need to worry with this false C&D

[marcorandazza]

I think you're drawing a little bit of an oversimplified bright line. Back on 8-30-08, I said

"Trademark rights grow from use, not registration."

And, if you continue to read the paragraph from which you quoted:

What I am trying to get through to you is that a registration could pre-date use. Then, lets say that a company files an ITU. They get the ITU, and thus a "registration." Then, a domainer registers a domain that corresponds to that mark that has been reserved under the ITU procedure. Then, the company launches their product and gets their (R).

In that scenario, the domainer might still lose.

There are misconceptions about how ITUs relate to domain names -- but it would be improper to trade one set of myths for another. An un-perfected trademark application, if filed before registration of the domain name, will show a priority of rights.

In the NAF case you cite, a reasonable argument was put forth as to why the domainer registered xoft.com. The fact that there were two previously abandoned ITUs gave the domainer enough doubt that the third time would be the charm. With those specific facts, the panel was correct. The absence of a perfected ITU does not, without more, show that the complainant has superior rights.

Additionally, panels have embraced the concept of "analogous use" and will likely continue to do so. An allowed ITU plus open analogous use would not qualify the mark holder to receive a registration number until there had been actual trademark use. Nevertheless, I can only think of two panelists who would not say that analogous use plus an ITU does not equal "rights."

A domain registrant can not simply look on the USPTO website, see that someone has filed an ITU, and then say "it isn't a registration, just an ITU, therefore it would be impossible for them to ever show bad faith."

That is the myth I'm trying to keep from being perpetuated. The UDRP is not a checklist procedure. Para 4(b) leaves it open to the panelist to find bad faith outside the four enumerated factors, and despite David Sorkin’s lone opinion, registrants are charged with constructive knowledge of others’ rights.


Paragraph 2 of the UDRP, “Your Representations” reads:

“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”

Try this hypothetical on for size. HBO comes up with a new series idea, files an ITU. Next day, someone registers the domain corresponding to the series idea. Will the ITU show "rights?" It might very well do so.

Lets say that HBO issues press releases about the upcoming series. We now have analogous use, but no trademark use.

Given those facts, not many ethical panelists would hold for the complainant.

I am happy to see that the Aspis decision is being challenged. It needs to be. Even if the D.Ariz. loses its mind (which I've seen it do in trademark cases), the 9th couldn't possibly uphold this decision.

[msn]

Tell them to take a leap - or send me the letter and I can tell them for you.

Given those facts, not many ethical panelists would hold for the complainant.

Those exist in Switzerland?

[marcorandazza]

They exist in almost all countries represented by WIPO and NAF's lists of panelists.

[jberryhill]

Try this hypothetical on for size. HBO comes up with a new series idea, files an ITU. Next day, someone registers the domain corresponding to the series idea. Will the ITU show "rights?" It might very well do so.

In that type of situation, we are going to look to other facts about the registrant's motivation - not whether there was or was not an ITU filed. The additional facts in Xoft were not determinative to the outcome, as the panel itself notes.

In fact, I have a cleaner "Xoft" case on my desk now, which doesn't have the additional "favorable facts". It is a two-word combo, and the sequence is along the lines of:

1. ITU filed
2. Domain drops and is re-registered
3. ITU allowed
4. Time to show use extended successively to two years.
5. Use finally shown, registration issues

The entire premise of the complaint is that bad faith should be determined by the ITU filing date on a mark for which use wasn't made for some three years after that filing date.

One can always hang additional facts on a hypo to make it lean one way or the other. But what I like about this case is that it's pretty sterile.

Yes, there can be press releases and other sorts of things of which the domain registrant can reasonably be understood to have notice. But of the decided cases, when one is relying on an "anticipatory cybersquatting" theory, that connection has to be strongly made. Asking a domain registrant to consult a Ouija board to know the future outcome of an ITU filing - absent anything else - is asking too much.

I think you're drawing a little bit of an oversimplified bright line. Back on 8-30-08, I said

...and then later you said a "registration" could pre-date "use". What I like about the legal section is that posts can't be edited. It was that incorrect statement to which I was responding.

I make mistakes all of the time, and this is a casual forum. What you said is pretty clear.

What I am trying to get through to you is that a registration could pre-date use.

"Something else" might pre-date use, but a registration cannot.

The fact that there were two previously abandoned ITUs gave the domainer enough doubt that the third time would be the charm.

I don't know how clearly the arguments were reflected in the opinion. The facts of the matter are that the domain registrant had no idea of any of the applications, and no legal duty to know of US trademark filings. The point made in the argument was "Let's suppose for argument's sake that the domain registrant had conducted a search. The outcome would be that the domain registrant would see a string of abandoned applications and a pending ITU. That wouldn't be a red flag saying 'do not register this domain name'." But all of that was merely taken arguendo. There is no duty to know of pending applications or to predict their outcome.

[marcorandazza]

1. ITU filed
2. Domain drops and is re-registered
3. ITU allowed
4. Time to show use extended successively to two years.
5. Use finally shown, registration issues

The entire premise of the complaint is that bad faith should be determined by the ITU filing date on a mark for which use wasn't made for some three years after that filing date.

Element 2 -- domain drops... was it registered by the Complainant or a third party?

[jberryhill]

Foodemporium.com was a similar set of circumstances....

http://domains.adrforum.com/domains/...ns/1204907.htm

Respondent contends that Complainant’s trademark registrations must be narrowly construed because its first registration merely consists of common words in a stylized rendering and its second registration post-dates registration of the disputed domain name, following five previous refusals of applications.

What was irritating about the complaint there was that the complainant finally received a 2(f) registration, and then during the UDRP process tried to claim rights back to its claimed first use date, and long before any of the evidence they used to make the 2(f) claim in the first place.

But, it was creative anyway.

[Acro]

When two legal experts argue, we all benefit

Thanks Marc and John for your continuing contributions to this forum.

[jberryhill]

Element 2 -- domain drops... was it registered by the Complainant or a third party?

It was never registered by the Complainant, and the drop was several years ago.

And while there is no rights "tacking" under the UDRP, it is typically useful to point out that the timing of the domain registration in drop cases was determined by the expiration date and post-expiration cycle of the domain name, and not "prompted" by knowledge that someone filed an ITU. Enough panelists by this point understand dropcatching to know that if someone sees an interesting name on a drop list, they aren't farming out opinion work to an attorney before deciding to register it.

It's an interesting case in that the complainant has written a good argument for the proposition that the ITU alone should establish the date of their rights - because of the confusion that arises by conflating "intent" under the UDRP, and the fact that ITU based registrations can, after issue, be effective to enjoin infringement that began earlier. But applying that principle to the question of intent under the UDRP is where, IMHO, the argument goes over a cliff, since on principle it requires domain registrants to be psychic. In the infringement context, a product can be re-branded, but seeking transfer of a domain name on the same principle strikes me as a bit off the mark.

But, as with any case, it could go either way. Nobody gets to choose their facts.

I'd also agree that, outside of the drop context, where the domain registration date is driven by the mechanics of the domain registration system, a "hand registration" on the heels of a UDRP, and no other apparent motivation for registering the domain name, is going to look "fishier" than a straightforward "Hey, cool name expiring, I'll try to get it" situation.

Edit: Should be "on the heels of an ITU filing" there.

And speaking of "fun cases", that case I talked to you about should come out any day now. Whichever way it goes, it's going to be a chuckler.

[TheLegendaryJP]

fight fight fight


btw when two lawyers fight to the death its only a good outcome when both lose.... lol j/k I couldnt help myself.

[marcorandazza]

And while there is no rights "tacking" under the UDRP, it is typically useful to point out that the timing of the domain registration in drop cases was determined by the expiration date and post-expiration cycle of the domain name, and not "prompted" by knowledge that someone filed an ITU. Enough panelists by this point understand dropcatching to know that if someone sees an interesting name on a drop list, they aren't farming out opinion work to an attorney before deciding to register it.

Word... but panels are accepting the "willful blindness" argument.

I'd also agree that, outside of the drop context, where the domain registration date is driven by the mechanics of the domain registration system, a "hand registration" on the heels of a UDRP, and no other apparent motivation for registering the domain name, is going to look "fishier" than a straightforward "Hey, cool name expiring, I'll try to get it" situation.

Word.

And speaking of "fun cases", that case I talked to you about should come out any day now. Whichever way it goes, it's going to be a chuckler.

Which one, the Adult one or the Aspis one?

[Dave Zan]

Which one, the Adult one or the Aspis one?

Oh, just wait for it. That's one of the things that makes it potentially exciting.

This is maybe oversimplifying this. But as John said somewhere, technicalities
matter...when they matter.

[marcorandazza]

When you win, it is called a successful legal theory.

When you lose, it is called a technicality.

[msn]

A win is a win is a win.-

They exist in almost all countries represented by WIPO and NAF's lists of panelists.

I guess you have never lost at a one person panel and then later had a private investigator divine the amount of money the Complainant shifted to that person.

[marcorandazza]

Not in law, it isn't.

[hugegrowth]

haven't heard anything back from them yet ...

[emark]

I would contact John Berryhill. He's a lawyer who handles domain matters like this. No doubt he can give you the right advice. He hangs out at DomainState.

You can't email or send him a PM from the site though. His contact information is listed on his website at johnberryhill dot com. He is very knowledgable and very sucessful with domain business legalities like this.

Good luck.

Sorry John, I didn't see your post.

Obviously you hang out here also.