Trademark Issue - Urgent

[Pepelux71]

Hi all,

I own website LiveScorePro.com which I registered at the end of May and since then i use it to provide Live score and results services from sports all over the world.

Further i own several similar domains which are redirected to this site (LIVESCOREPRO.NET, LIVESCOREPRO.ORG, LIVESCOREPRO.INFO, LIVESCOREPRO.BIZ, LIVESCORELINKS.COM, LIVESCOREGS.COM, LIVESCORE88.COM, WORLDLIVESCORE.COM, SPORTSLIVESCORE.COM, LIVE-SCORE.GR, LIVE-SCORE.US LIVESCORE.GS, SPORTLIVESCORES.COM and JAVALIVESCORE.COM

Half an hour ago i received a "Submission of Complaint for decision regarding LIVESCOREPRO.COM et al." from an attorney at Law on behalf of the owner of website "Livescore.com" which provides same services as my website for many years in the past till now. Owner of Livescore.com is against me for
- Domain Name Dispute Resolution Policy &
- incorporating the LIVESCORE trademark

Through the attachments of this complaint i discovered that "LIVESCORE" is
Word Mark since December 4, 2001.


Honestly this is something that i could never have considered for a such generic term and of course this is the reason i used such a similar domain for my website (a "LiveScore" domain would obviously be used for a real time score service).

Between the complaint lines i was informed also that
until i will be notified by the National Arbitration Forum (which will examine the Complaint to determine whether it conforms to the ICANN Policy, Rules, and the Supplemental Rules) I have no duty to act with regard to this Complaint.

Although i have no problem to use any other domain name for my website I need your opinion or advice on how should i consider this complaint, and if you think that this Word Mark for a generic term like LIVESCORE could stand against LiveScorePro.com or any other of my domain names.

I really need your help

[brian1234]

Hi

I don't think you've got a leg to stand on
here. Livescore, is not a generic term and
they will rightly claim that you should've
checked the USPTO d/base before regging
the name; you are also operating a very
similar service to theirs...

You regged the name in May?! My advice
is give them the name and check for possible
TM's in the future.

[Pepelux71]

I have no doubt that i dont have any hope for the name. My mistake was that i could never consider Livescore as not a generic... Why? I dont know... Just foolish. I have already react for a solution for my site.
If i dont reply do you know how long will it takes till they take it? Is there anything else i should afraid than loosing the name?

[DNQuest.com]

Unfortunately, yeah. They could take you to court and invoke the Lanham Act with a maximum penalty of $100,000 per domain along with attorney fees, all revenue gained and punitive damages. That is the worse case senario. Are they only going after the one domain or are they going after the others too?

But there is a lighter side, I would argue the term is descriptive and "livescore" is a service mark, NOT a trademark. There is a difference. You may want to talk to one of the attorneys offline and get thier opinion.

[Pepelux71]

They are going after all domains, and by that it is supposed that any xxxLIVESCORExxx dotxxxx domain can never be used for livescore service by anyone else. Is there any contact you could provide me?

[Tom K.]

It's a shame that they slapped you with legaleze from the getgo. Seems like intimidation tactic. They could've asked you nicely. You sound like someone who would cooperate.

Submiting an official complaint should be left for when being nice doesn't get results. We live in cold world.

Just my pov.

[Pepelux71]

That is since my site seemed to become competitive, not so for them (because they are really high) but for the Score Service. I would have follow the situation even if they hadn't choosen that proccedure.

[brian1234]

Submiting an official complaint should be left for when being nice doesn't get results. We live in cold world.

Not when he's already operating a service
on the internet, that infringes their TM!

I think the owner should think himself lucky
he only got a letter...

[Pepelux71]

What is the TM?

The service , the term, or any domain having that term?

There are hundrends of sites providing livescore service, which also use that term, and many of them have that term in the domain (livescores.net,livescores.co.uk,sportlivescore.co m etc..)

What's the illegal from all?
If it is the service none else could provide that service. In that case i would be in danger even with ScoresPro.com or Goalvista.com

If it is the domain, and not the service, what else could contain a domain used for livescore service other than "livescore" in it?


And what is the difference between this and a term like "fastfood"?
Can someone make Word Mark for this term and go after all other compilations of that term (Realfastfood, Cheapfastfood, tastyfastfood, fastfoodnow etc...)?

I really dont give a s**t to give all the domains and other 20 because it is not the name tha built my traffic, but honestly i can't get the idea.

[Brett Lewis]

It really depends on a number of factors. Using a domain name that is similar to a trademark is only one of the factors. If that trademark is a dictionary word, it weakens its protection, and could be the basis for a finding of legitimate rights and interests, especially where a good faith, non-competing use is being made. Another factor in your case would be how well known the Complainant is, and how widely the public associates it with the LIVESCORE mark. If, as you say, there are many other companies using live score to provide similar services, the Complainant's claims that you lack legitimate rights and interests to the domain name and that you registered it with a bad faith intent would be considerably weakened.
Of course, any evidence of a trademark registration in your country or that you knew of the particular Complainant's mark when you registered would cut against you.

In all, I would need to know more, but it seems that you have a valid defense. Winning and losing is another matter. To predict that, I need more facts!

Of course, deciding whether to fight is another matter, and if these domain names are unimportant to you, you might just as well not, but you should avoid having a UDRP entered against you if you can. That creates a record which can be used against you in the future.

Best,
Brett E. Lewis, Esq.
Lewis & Hand, LLP
www.lewishand.com

[Domainpreneur]

Livescore was registered on the USPTO Principal Register on December 4, 2001. It is owned by an individual from the Czech Republic. There are various UDRP decisions that hold that a mark on the Principal Register is inherently distinctive and not generic. Various other cases have also addressed the issue of "constructive" and "actual" notice of a mark. Because the mark was registered in 2001, the owner will probably argue that you had actual notice of the mark and thus were aware that someone else had rights in the mark.

I would first check who the complainant is and whether the individual or company is the actual owner of the mark. There have been instances where rights are alleged by a company, but the trademark rights actually belong to an individual who is not the complainant. If that is the case, the complainant does not have standing to adjudicate the claim under the UDRP.

If you settle the dispute with the complainant, do not admit liability and ask that the complaint be dismissed with prejudice. The UDRP does provide a mechanism to withdraw the complaint before proceedings begin.

UDRP and lawsuits can be very costly. Unless you are confident about your position, you should consider alternative means to address this matter.

[Pepelux71]

" Until you are notified by the Forum that a proceeding has commenced, you have no duty to act with regard to this Complaint.

• The Forum will examine the Complaint to determine whether it conforms to the ICANN Policy, Rules, and the Supplemental Rules.

• If the Complaint conforms to those standards, the Forum will forward an official copy of the Complaint to you.

• Once the official Complaint is forwarded to you, you will have twenty (20) calendar days to submit a Response to both the Forum and the Complainant in accordance with the Policy, Rules, and Supplemental Rules.

• You may seek legal assistance to represent you in this administrative proceeding."

Ok lets say that i dont want to stand against this thing and i really dont care about the domains, should i do anything at all?



[6.] REMEDY SOUGHT

Complainant requests that the Panel issue a decision that the registrations for LIVESCOREPRO.COM, LIVESCOREPRO.NET, LIVESCOREPRO.ORG, LIVESCOREPRO.INFO, LIVESCOREPRO.BIZ, LIVESCORELINKS.COM, LIVESCOREGS.COM, LIVESCORE88.COM, WORLDLIVESCORE.COM, SPORTSLIVESCORE.COM, SPORTLIVESCORES.COM and JAVALIVESCORE.COM be transferred to Complainant, pursuant to Paragraph 4(i) of the UDRP.

[Domainpreneur]

If the complaint is deemed to be valid and you wish to settle this dispute without an actual proceeding, you should contact the complaining party to reach an amicable solution. You do not want a ruling against you on the record, which could happen if you do not file a response. Some UDRP cases have held that failure to respond to an UDRP complaint is an indication that you do not have legitimate interests in a domain name.

However, make sure that the complainant actually has rights in the Livescore mark. You do not want to be bullied into transferring names to a party that has no rights.

[Pepelux71]

Word Mark LIVESCORE
Goods and Services IC 041. US 100 101 107. G & S: PROVIDING REAL-TIME SCORES FOR SPORTING EVENTS, NAMELY SOCCER. FIRST USE: 19980731. FIRST USE IN COMMERCE: 19980731
Mark Drawing Code (1) TYPED DRAWING
Design Search Code
Serial Number 76161033
Filing Date November 7, 2000
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition September 11, 2001
Registration Number 2514933
Registration Date December 4, 2001
Owner (REGISTRANT) ********* IndividuaL
Attorney of Record ***********.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE


It is Marked, but God i cannot get it..... Unless my english doesn't allow me with a simple translation of the words to realize the real meaning of this compilation.


It just seems generic to me. Could i Mark the same way SCORESPRO? With the same description?

[Dave Zan]

I don't remember if a service mark will make a difference or not. But I did see
this tidbit from what you posted.

Their use:

Goods and Services IC 041. US 100 101 107. G & S: PROVIDING REAL-TIME SCORES FOR SPORTING EVENTS, NAMELY SOCCER.

Your use:

I own website LiveScorePro.com which I registered at the end of May and since then i use it to provide Live score and results services from sports all over the world.

Big uh oh.

Trick question for you: is "realtor" generic or not? (don't answer that, guys,
it's for the OP. :-D)