TwoWayTV

[BGray]

I registered twowaytv.net not knowing the name was trademarked. I contacted twowaytv.com asking if they were interested in the name.

They offered $100
I countered $800
They said not for now but check back in 2003

Then I got a legal letter with the whole script saying the name was trademarked and all the legal aspects of domain trademarks and bad faith.

I told them that I didn't know it was trademarked and didn't want to get into any dispute. I told them I would be willing to settle inbetween our offers and tranfer the name.

Was that a bad move? I haven't gotten a response yet? What should I do?

Thanks in advance for any help!


btw: I am an idiot. I checked to see if it was trademarked but typed in twowaytv instead of two way tv.

[BGray]

Here's the email,Dear Mr Gray,

I refer to your email correspondence with Two Way TV's Commercial Director, xxxxxxxxxxxx.

Please be advised that Two Way TV Ltd is the registered owner of UK, Community and International trade marks pertaining to the word mark TWO WAY TV. We would like to highlight that these trade mark registrations extend to the use of TWO WAY TV as a top level domain name.

As such, any third party unlicensed use of the TWO WAY TV word mark on goods and services as specified in these trade marks is likely to cause detriment to Two Way TV earlier registered rights. Your, or a third party's use of www.twowaytv.net without consent of use or a license from Two Way TV Ltd would is likely to cause confusion in the marketplace. Any third party unlicensed domain name use of TWO WAY TV is deemed infringement; where our policy is to transfer matters to ICANN's Uniform Domain Name Dispute Resolution Policy.

Unless you have a legitimate interest in the www.twowaytv.net your registration could be viewed at being registered in bad faith. We are keen to avoid any third parties taking unfair advantage of our earlier rights where we encourage you to review the Two Way TV Ltd trade marks as held on the domestic and international trade mark registers.

Yours sincerely,

[DomeBase]

Originally posted by mbg0050
btw: I am an idiot. I checked to see if it was trademarked but typed in twowaytv instead of two way tv.

You are not an idiot. That is an easy mistake to make. At least you checked.

There are good lawyer folks on this forum and I am not one, but for my two cents you do not have much of a case to contest this and they are not being as nasty as they could... If it were me I would write to them saying that you did not realize TM infringement and would be willing to transfer for free.. but would appreciate their reimbursement of registration cost.

I'll be interested to see if the legal folks give similar or different advice.

[BGray]

Thanks for the suggestion Dome!

I went ahead and sent another email even though I've got a feeling they are gone for the weekend. I just told them that I would greatly appreciate any financial consideration they could offer for the name but to aviod any legal disputes and in good faith I would transfer the name to them for free if necessary.

I hate that but it is my fault for not catching the TM before I regged it.

[DomeBase]

You're welcome.

I checked and InteractiveTV has an abandoned TM... no live one.

InteractiveTV.com and InteractiveTVs.com are long gone...

but InteractiveTVs is still available in .INFO, .US., .NET if you are interested.

[HOWARD]

If you are an innocent registrant (i.e. did not know that there was a TM and it is not really famous) NEVER offer to transfer it to the TM holder for free! Not unless you are in the charity business! At worst, tell them that if they want it they can pay the transfer costs or you'll simply deregister it and let someone else deal with them.

[DomainPairs]

Did you know that twoway.tv is registered and seems to be a live site. This is the registrant

Managing Partner (boogietvllc@yahoo.com)
Boogie TV LLC
PO BOX 120
Livingston, NJ 07039-0120
US

If this is not the company you are dealing with, it seems they do not have a unique internet presence. I don't know if this helps you.

[BGray]

Well I haven't given them the name yet so i'll check into it. I do know they have a TM on Two Way TV.

[jberryhill]

"I checked and InteractiveTV has an abandoned TM... no live one."

Incidentally, that was one of the cases I defended:
http://arbiter.wipo.int/domains/deci...2000-0358.html

...and it is a frequently cited case on the subject of generic terms, even if a trademark registration exists:

http://eon.law.harvard.edu/cgi-bin/h...udrp&restrict=

[jberryhill]

"I do know they have a TM on Two Way TV."

The USPTO doesn't think so.

If you do a search on "Two way TV" at the USPTO, then you find a couple of interesting things.

First off, you find three abandoned applications to register "Two Way TV", one cancelled registration, one registration, and one pending application.

The registration and the pending application are both for logos, and both of them say "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE 'TWO WAY TV' APART FROM THE MARK AS SHOWN".

Now, do you know why the USPTO makes people put things like that in a trademark application?

The normal way it happens is when someone submits a stylized logo or compound phrase which includes a generic or descriptive term therein which, apart from the mark as a whole, the applicant did not or could not establish distinctiveness.

What you seem to "know" appears to be directly contrary to what the USPTO seems to know about the term "two way tv".

On further investigation, and retrieval of the TM file, these facts are probably laid out in exquisite detail, along with the precise argument that someone might want to use - as made by a US government official.

The facts here are very similar to the interactivetv.com dispute mentioned above.

Most of the time, complainants will not tell the whole story about their trademark applications to the Panel, when they have had as many applications rejected and/or subject to disclaimers as these people have. Whatever one might think about UDRP panelists, they do not like to learn that someone is trying to mislead them.

[BGray]

Thanks John,

They emailed me today asking me to transfer the name to them as soon as possible. They also denied my request to reimburse my reg fees.

From what I understand from your post they don't acutally have TM rights to the name and only a logo. This is very interesting considering what the email they sent me (which is posted above) saying they have exclusive rights to the name.

If this is true I will fight this.

Before I do put up a fight, can anyone else that has tm legal experience also confirm John's interpretation of this TM.

I will be very aggrivated if they don't actually have exclusive ownership of this name after the emails they have sent me.

Any feedback is greatly appreciated.

Thanks again John! Where do you think I should go with this from here?

mbg

[HOWARD]

You can take John's opinion to the bank!

[BGray]

Originally posted by HOWARD
You can take John's opinion to the bank!

I had that feeling but I haven't been in this forum long.
I really apprecaite all the help.

Where do you all think I should take this from here?
They obviously want the name but it looks like I have more leverage than I thought.
It seems a bit misleading and malicious for them to tell me they have rights to the name.

Here's the most recent email,

"Thank you for your email of 15th November 2002. We note your comments and that you state that www.twowaytv.net was not registered in bad faith and that you are willing to transfer this domain name to Two Way TV Ltd. (I told them that I would tranfer the name if necessary to aviod any legal disputes)

In this instance, on the basis that Two Way TV Ltd is the rightful owner of www.twowaytv.net and any associated top level domain names containing the word mark TWO WAY TV, we are not in a position to offer you financial consideration on this occasion. I apologise, but I trust that you appreciate that as trade mark proprietors, our policy on policing and protecting our rights are very strict.

If you can confirm that you are willing to transfer this domain name to Two Way TV Ltd I will initiate the necessary formalities.

Kind regards,

[BGray]

Well I decided to mention my concern for the validity of thier Trademarks on the actual word. Here is the response I got,

The top level domain name .net is not specific to the US, (unlike .US) .net is not a top level country coded domain name. As such it is essential for any new applicant of a generic top level domain name e.g. .net .com or .org to carry out compliance at the international and domestic trade mark registers.

Further to your request for evidence of our prior rights to the TWO WAY TV word mark I would refer you to the following trade marks, all in the name of Two Way TV Limited, which extend to which extend to use of wwwtwowaytv.net

USA
75836306 Registered Design and Word Mark
76189114 Pending Design and Word Mark

Canada
1032875 Pending Word Mark
1088237 Pending Design and Word Mark

Israel
142012 Registered Word Mark
142011 Registered Word Mark
142010 Registered Word Mark
142009 Registered Word Mark
142005 Registered Word Mark

142013 Registered Design and Word Mark
142014 Registered Design and Word Mark
142015 Registered Design and Word Mark
142016 Registered Design and Word Mark
142017 Registered Design and Word Mark

Euro-Community Trade Mark
000474213 Registered Word Mark

UK
1568514 Registered Design and Word Mark
2423122 Registered Design and Word Mark
2242124 Registered Design and Word Mark

Australia
768772 Registered Word Mark

Two Way TV is also the owner of various domain names including the word mark TWO WAY TV.

These trade marks are of course the Two Way TV Limited formal rights which are held on the domestic and international Registers. I would also like to take this opportunity to highlight that Two Way TV Limited has been operating for over a decade and as such we have much evidence, in the form of unregistered rights, to show exclusive use of the word mark TWO WAY TV on the goods and services as specified in our trade marks.

As per my correspondence dated 15, November 2002, I would like to re-emphasise the following;

"Please be advised that Two Way TV Ltd is the registered owner of UK, Community and International trade marks pertaining to the word mark TWO WAY TV. We would like to highlight that these trade mark registrations extend to the use of TWO WAY TV as a top level domain name."



So does this mean I should give them the name or do I have some leg to stand on?

John, Why did you only mention USTPO?

Is USPTO all that matters to me or shoud I be concerned with these other TMs as well?

I'm a bit confused now.

mbg

[jberryhill]

"John, Why did you only mention USTPO? "

I mentioned the USPTO because it provides one of many potential things one might consider in this situation. While this forum provides a useful place to discuss various issues, if the question is "Why didn't I spend all day obtaining comprehensive facts about this claimed trademark, your situation, concurrent uses elsewhere, etc.?" the answer should be apparent.

You have already told them you were going to transfer the domain name, so your only real question is whether you are a person who does what they say they are going to do. Discussing what you might have done, or discussing what arguments one might have made in a dispute over this domain name are purely hypothetical at this point, since their best argument in reality would now be "He said he would give it to us for free and then he didn't".

Did you make a contract? One the one hand, one might argue that a gratuitous offer unsupported by consideration does not lead to a contract. On the other hand, it would appear that you offered the domain name in exchange for their forebearance in taking legal or administrative action against you. I believe the latter view is probably the stronger argument.

But for the purpose of general discussion here, my only point is that it is often useful to find out what the trademark claimant *isn't* saying, as well as to verify what the trademark claimant *is* saying. And for the purpose of discussing a purely hypothetical situation, I reserve the right to limit the time and effort put into it.

"So does this mean I should give them the name or do I have some leg to stand on?"

On the trademark issue, or the breach of contract issue?

Well, let's see... You told them you would transfer the domain name to them. And now you want to know whether you should do what you said you were going to do. I consider that to be as much a moral question as a legal one. I guess it depends on your upbringing.

[mole]

Originally posted by jberryhill
[BI guess it depends on your upbringing. [/B]

My upbringing says "Sue the bugger for harrassment". I have no time for the sick legal games others play.

UNderstand the law, and play by the rules always. Ignorance is not an excuse in some legal constituencies, but not worldwide. gTLDs are worldwide rights.

Many people will continue to be bullied and intimidated of their names by the vultures looking for a cheap feed. That's the internet today.

ALWAYS SHOW AND EVIDENCE GOOD FAITH for your good names.

Positively, the law continues to change in the face of this new unexpected phenomenon called REVERSE CYBERJACKING. There are a lot of backstabbing opportunists out there. This is a fair warning.

http://www.wipo.org.uk

[BGray]

What?

I bought this name thinking Two Way Tv was a type of media such as the internet and did a trademark check before regging it.
(I typed the name in wrong and didn't see TwoWayTV, I already mentioned this.)

John,

I agreed to transfer the name to avoid legal action, based on the facts that they told me (which you disputed in this forum).

That is why I am asking. I'm not going to back out from what I said being they are telling me the truth. I will not however, trasfer it based on deception. That is my issue.

Not once during this whole process have I had any bad faith. I could not find a TM so I regged it. I am willing to transfer the name if they have a TM. I haven't had to do this before and my second thoughts are based purely on the fact that John mentioned they don't actually have TM rights to the name.

Just to clear things up.

[mole]

If your motives were not one of :-

1. Obvious cybersquatting to capitalise on the hard built fame of another. Notice the term "obvious"

2. To resell for a profit purely on the name alone and not any busines intent (that, you need be honest with yourself cause noone else can)

Then, you will need to provide EVIDENCE of 1 and 2.

Should a person challenge you with high-powered lawyers paid $5,000 an hour to dig out your deepest secrets, then evidencing 1 and 2 is your only defense.

Chances are for most names, nobody bothers.

But if you truely value a name for reasons 1 and 2, make sure you understand the techniques of skilled snakes.

[BGray]

Thanks for all your comments and suggestions. I'm not going to mess with this any longer.

btw: does anyone know how to unregister a name with enom?

Thanks,

mbg

[jberryhill]

"My upbringing says "Sue the bugger for harrassment". "

Which is fine. And I hope you keep my phone number handy. But the point was that mbg0050 told them he would transfer the domain name for free in order to avoid a dispute.

I would take that to mean that he intends to transfer the domain name for free in order to avoid a dispute.

Now, had he decided not to avoid a dispute, there are some things here that are certainly disputable, one of which being that the USPTO provides some evidence to suggest that the claimed rights are very weak.

But the time to decide whether or not to put up a fight is not AFTER you have made a statement to the other side which, all by itself, provides a sufficient independent basis for them to demand transfer.

However, then mbg0050 comes back with:

"John mentioned they don't actually have TM rights to the name.

Please read what I wrote. I said the USPTO doesn't think they have TM rights to the name. That's not conclusive, but it provides some fodder for an argument *if you had wanted to engage in a dispute* with them. There are plenty of domain name disputes where merely having a trademark did not produce a win for the complainant.

The entire question of whether they were truthful, correct, or whether there any basis for questioning their claim flew out the window and became MOOT when you told them that you would transfer the domain name for free in order to avoid a dispute. If you had any questions about their claims, then the time to address those questions was before you made a promise to them.

But if you had wanted to argue with them, then that is another story. You are then "disputing", which is what you told them you didn't want to do.

Saying "i will fight this" after you had told them that you would give them the domain name to avoid a fight, doesn't make a world of sense, regardless of whether their claim is strong or weak.