UDRP arrived. I need support.

**krisblade** · 03-20-2003, 03:29 PM

Yesterday I received an email from The National Arbitration Forum.
Dallas Basketball Ltd. wants my domain "mavsgear.com" (which I have no proble to transfer), and they say is confusing similar with their TM "Mavericks" (or something like that).

What I have to do now? I got that domain from a package of names that I bought from another seller, I donÂ´t even care about the name (I bought the package because of 5 names on it that generates good traffic, mavsgear was one of the "rest" just for complete the list).

I have no problem to transfer the name and avoid any extra procedures, but I donÂ´t know what to do next.

One of their lawyers contacted me, and I explain to him that I did not know it the word mavsgear was a TM (me and my problem with the english language). Anyway, the lawyer was kinda happy because I wanted to cooperate and transfer the name, but they still have not sent the transfer info, but instead they keep spaming my email box with UDRP documents, etc.

Fellow members, help, I need some advise here from any one of you with experience in these kind of cases.

**pljones** · 03-20-2003, 03:34 PM

Call up the attorney for the complainant and ask them directly. They should be able to work this out with you.

**krisblade** · 03-20-2003, 03:50 PM

ThatÂ´s my problem, my english sucks, I can write but I talk very bad. I will try to get a translator to call the lawyer.

I sent another email to him, asking for the info to start the transfer, but still nada. :(

**beatz** · 03-20-2003, 04:19 PM

Have you looked up if they even have a TM for "mavsgear" at all and if so, when did they get it in comparison to when was your domain registered?
Second, i highly doubt that a WIPO panel would find the term "mavsgear" to be confusing similar to the term "Mavericks".

Don't let em fool ya

**Anthony Ng** · 03-20-2003, 04:27 PM

Yes, don't let them trick you. Every name could be a COMMON LAW trademark. So when their attorney said that it's a trademark, ask if it is a REGISTERED trademark, and let them know that you are not a newbie. (Of course, they will then tell you that it doesn't matter and some court cases have granted common law trademark owners the name.)

**RON2** · 03-20-2003, 04:35 PM

Mark Cuban, the billionaire owner of the Dallas Maverics and a really interesting guy, launched www.MavGear.com in 2001. I'm suprised they didn't come after this one sooner.

You might be able to work out a settlement that involves reimbursement for the cost of the domain, and maybe a little more.

**beatz** · 03-20-2003, 04:42 PM

According to

http://tess2.uspto.gov/bin/gate.exe?...ate=8gbh1t.1.1

there is no TM for "mavgear","mav gear", "mavsgear", or "mavs gear"

Not to say this is evidence there indeed is no TM, as there are other ways to obtain a TM.

Still, if that's the case, then the only case they have is your domain might be similar to one of their *domains* - which i doubt is the same as if your domain was similar to their *TM*.

I'd ask the lawyer to send my a copy of their TM registration.

Only imho of course, and i'm not a lawyer.

**RON2** · 03-20-2003, 05:04 PM

UDRP comes down to these three items. If you lose on all three questions, you lose the name. I think they'l win on all three if the proceeding happens.

**GT Web** · 03-20-2003, 05:21 PM

lol, good work -rj-

**beatz** · 03-20-2003, 05:39 PM

Don't forget krisblade *bought* the domain, so the register date you see in the whois might be just the one when he transferred the name while the original registration date might be from waaay back.
Also - "Commonly known as the Mavs"?
Where? - Maybe in the US, in germany the term "Mavs" is as unknown as can be...it might be unknown in China as well, btw.

**RON2** · 03-20-2003, 05:43 PM

Originally posted by beatz
Also - "Commonly known as the Mavs"?
Where? - Maybe in the US, in germany the term "Mavs" is as unknown as can be...it might be unknown in China as well, btw.

Try typing the word "mavs" into any search engine.

Including yes, Yahoo Germany :razz: I don't know about China yet. hehe..

**jberryhill** · 03-20-2003, 05:45 PM

Folks,

Krisblade already said he/she does not want the domain name. Fight your own battles.

Krisblade,

The primary problem here is that the domain name cannot be transferred - it is locked because of the UDRP. The registrar will generally not transfer the domain name unless they get a green light from the NAF.

So, you should do the following. Email the complainant's attorney at the address shown in the complaint, and also copy the NAF case manager (either Michelle Schaber or Steve Lewis). Tell them that you want to transfer the domain name to the Complainant. It is also helpful to copy the dispute manager at the registrar.

They will tell you that they can suspend the proceeding in order to transfer the domain name, and they have a form on their website for this purpose. Fill out the form and fax it to the complainant's attorney at the fax number shown in the complaint. As the attorney to sign it and fax it on to the NAF.

When the NAF issues the notice of suspension, then tell the registrar and the complainant's attorney to exchange whatever information they need in order transfer the domain name.

Who is the registrar for the domain name?

**krisblade** · 03-20-2003, 07:27 PM

Originally posted by jberryhill
Folks,

Krisblade already said he/she does not want the domain name. Fight your own battles.

Krisblade,

The primary problem here is that the domain name cannot be transferred - it is locked because of the UDRP. The registrar will generally not transfer the domain name unless they get a green light from the NAF.

So, you should do the following. Email the complainant's attorney at the address shown in the complaint, and also copy the NAF case manager (either Michelle Schaber or Steve Lewis). Tell them that you want to transfer the domain name to the Complainant. It is also helpful to copy the dispute manager at the registrar.

They will tell you that they can suspend the proceeding in order to transfer the domain name, and they have a form on their website for this purpose. Fill out the form and fax it to the complainant's attorney at the fax number shown in the complaint. As the attorney to sign it and fax it on to the NAF.

When the NAF issues the notice of suspension, then tell the registrar and the complainant's attorney to exchange whatever information they need in order transfer the domain name.

Who is the registrar for the domain name?

Thanks jberryhill and thanks to all of you guys.

The registrar is stargate.com

I think I can even create another account on stargate and give them the user and password, (I think).

I have emailed the complainant attorney with a copy to the NAF and the Registrar.

Thank you VERY MUCH jberryhill for your support (nice to know youÂ´re around)

**Banned: timechange.com** · 03-20-2003, 09:22 PM

If you ask, Stargate.com will delete the domain (if not locked).

**krisblade** · 03-21-2003, 01:58 PM

I signed and faxed the joint request to stay the proceeding so the name can be unlocked and transferred.

This is what they sent to me;

---------------
Mr. Chena,

Unfortunately the domain name arbitration complaint has already been filed. However, it is simply an arbitration proceeding, not a court action. We will stay the proceeding, and if the domain name is transferred we will withdraw the complaint. You should have no decision adverse to you
on the record once the complaint is withdrawn.

Thank you for sending the signed joint request to stay the
proceeding. I will file it today and we should be able to transfer the domain name very soon.

Kind regards,
----------------------

Guys, whatÂ´s the damage when a complaint has been filed?

**jberryhill** · 03-21-2003, 04:34 PM

"Guys, whatÂ´s the damage when a complaint has been filed?"

I don't understand the question. What do you mean?

In any event, what you need to do now is to follow up with the registrar to make sure that the registrar gets the information it needs in order to carry out the transfer (after the NAF issues its notice of suspension to the registrar).

Sometimes the complainant believes that the domain name will somehow magically transfer itself.

You will, in your prior email from the NAF, find the specific email address your registrar uses for receiving email relating to UDRP disputes. After the notice of suspension issues, use that address (and copy the complainant's attorney) to tell them (again) that the parties have agreed to a transfer and that the registrar should correspond with the complainant's attorney in order to obtain the needed registration data for a transfer.

After that, you should be done.

**DaddyHalbucks** · 03-23-2003, 10:36 PM

The damage is you will be a convicted cybersquatter, perhaps not by a court, but for practical purposes since the UDRP decision can be cited against you in future UDRPs and future court actions. It is mud on your name.

Don't let them trick you about "withdrawing" the UDRP. Get a committment from the arbitrator that they will honor the withdrawal request of the complainant.

I agreed to transfer a domain in exchange for the complainant withdrawing the UDRP, and WIPO wouldn't honor the agreement, and I may have to take legal action against WIPO.

WIPO sucks!!!

**DomainGoon** · 03-24-2003, 01:07 AM

Originally posted by DotComCowboy
The damage is you will be a convicted cybersquatter, perhaps not by a court, but for practical purposes since the UDRP decision can be cited against you in future UDRPs and future court actions. It is mud on your name.

Don't let them trick you about "withdrawing" the UDRP. Get a committment from the arbitrator that they will honor the withdrawal request of the complainant.

I agreed to transfer a domain in exchange for the complainant withdrawing the UDRP, and WIPO wouldn't honor the agreement, and I may have to take legal action against WIPO.

WIPO sucks!!!

If the case is suspended before it is ruled on by the panel, then there should be no finding of fault, right? I believe I have seen cases that show that they were dropped or suspended. There is no admission of guilt there that I've seen.

Were you found to be in the wrong by a panel before you reached an agreement with the other party?

**jberryhill** · 03-24-2003, 12:45 PM

"If the case is suspended before it is ruled on by the panel, then there should be no finding of fault, right? "

That is correct. In Hal's situation, he apparently believed that reaching an agreement with the complainant *after* the decision had already been posted, would somehow require WIPO to make the decision disappear.

The dispute resolution providers are *required* to post UDRP decisions, and there is nothing in the rules that allows them to "retract" a decision after it has been posted.

There are cases where a panel has reached its decision, and both parties have requested that the decision not be published:
http://arbiter.wipo.int/domains/deci...002-00270.html
"Finally, as a matter of unique interest, Complainant and Respondent requested that the Panelâ€™s determination not be published. "

**krisblade** · 03-26-2003, 06:16 PM

Originally posted by jberryhill
"Guys, whatÂ´s the damage when a complaint has been filed?"

I don't understand the question. What do you mean?

In any event, what you need to do now is to follow up with the registrar to make sure that the registrar gets the information it needs in order to carry out the transfer (after the NAF issues its notice of suspension to the registrar).

Sometimes the complainant believes that the domain name will somehow magically transfer itself.

You will, in your prior email from the NAF, find the specific email address your registrar uses for receiving email relating to UDRP disputes. After the notice of suspension issues, use that address (and copy the complainant's attorney) to tell them (again) that the parties have agreed to a transfer and that the registrar should correspond with the complainant's attorney in order to obtain the needed registration data for a transfer.

After that, you should be done.

I have made the ownership transfer, using the info that the attorney emailed to me, I even created a new account on the Registrar for them to manage the name.

Once the transfer was made, I emailed the attorneys with copy to the Registrar and the Arbitration Forum, but 2 days have been passed so far, and no response yet.