UDRP bad faith

[domaingenius]

I am working through reading a UDRP at the moment and couple
of important questions arise.

1. A Company has existed for 30 odd years with a name that
is one of the 2 words of my domain. The complainant is
claiming that it has rights in that same 1 word name PLUS
rights in my 2 word name.

Can they, rightfully, use an alleged un registered trademark/rights that
in reality infringe on an existing use of that same name ?.

2. With regard to bad faith. I was asked whether I would sell the
domain name and I replied that I would not sell as I was developing it.

Is that bad faith or will it weigh in my favour.

Thanks for any advice

DG

[draggar]

That all depends. Some companies (Google, Dell, Microsoft) have gone after multi-word domains (DellFinancialServices.com is one) but "bad faith" all depends on how you're using it.

If it is a generic term, then you might be able to get away with it as long as you aren't infringing on their trademark. For example, if I owned Windows.com I could use it to sell windows (glass, car windshields, etc..), have ads on it pointing to companies that sell windows or accessories (shutters, staining, tinting) and there isn't much Microsoft could do about it. But, the second I put on a service related to computers, software, operating systems, etc.. then Microsoft could file a WIPO and get the domain.

If it is a brand (say Toyota Motors and your domain is ToyotaMotorsForum.com) then they would have a much easier time getting the domain from you since it is clearly you registered the domain with them in mind (although that hasn't been the case for Nissan Motors, but that's because it is the guy's last name, too).

[domaingenius]

Draggar

Thanks for your advice. The position is this. They do not have any
registered trade marks. They have used the first of the 2 names
in a secondary way i.e. by saying for example "First Name Initiative" .
They use the first name with a local domain tld. They have now
applied for trademarks for both the first name and the first and second
name together.
I have [U]not[U] used the domain to sell anything at all that
could be considered in anyway in there area of business. I parked
the domain and served up some unrelated adverts, which I guess
is the same class of use as Google had adsense TM for.

Does this sound like I have a chance ?.

DG

That all depends. Some companies (Google, Dell, Microsoft) have gone after multi-word domains (DellFinancialServices.com is one) but "bad faith" all depends on how you're using it.

If it is a generic term, then you might be able to get away with it as long as you aren't infringing on their trademark. For example, if I owned Windows.com I could use it to sell windows (glass, car windshields, etc..), have ads on it pointing to companies that sell windows or accessories (shutters, staining, tinting) and there isn't much Microsoft could do about it. But, the second I put on a service related to computers, software, operating systems, etc.. then Microsoft could file a WIPO and get the domain.

If it is a brand (say Toyota Motors and your domain is ToyotaMotorsForum.com) then they would have a much easier time getting the domain from you since it is clearly you registered the domain with them in mind (although that hasn't been the case for Nissan Motors, but that's because it is the guy's last name, too).

[EnricoSchaefer]

"unrelated adverts" is going to help you. I think it comes down to the strength of their common law trademark rights. If the 'first word' is generic or descriptive, then that helps. If the added "send word" which put together with the first makes up their also-claimed trademark, then again, it probably comes down to trademark strength of the first word. There is a big difference between the word "microsoft" and "software." Feel free to send me some info privately. Your answer that you are developing will help insulate your from further calism of bad faith. Their primary claim will be the adwords. You will defend by noting they are in different markets.

I would be happy to give you my off the cuff

[domaingenius]

Thanks Enrico, email sent.

Regards

DG

Enrico thanks for your email. Only small but important thing I need
to be sure of is "word count" I see that it says on the response
form;
[In completing this Section III., do not exceed the 5000 word limit: Supplemental Rules, para. 10(b).

Now there are 2 parts to the reply, there is the reply to their complaint
and then there is the evidence in support of my position.

Does the 5000 words include both parts or just the reply to complaint ?.
Does it include the words already on the pre printed form for reply ?

Boring but necessary questions to which I hope someone can
reply,

Thanks
DG

[dvdrip]

It includes both the reply to the complaint and your position.
It doesn't include annexes.

I think that it includes the preprinted words, but I am sure you can go 10% over and they will not object.

[domaingenius]

Thanks ,I have now completed it and ready to send tomorrow in
time for deadline, thank god.

One of my main arguments is that since Google have been granted
Class 35 TM Serving up of other companies adverts on websites,
rights for "Adsense" that I am entitled to claim that I legitimately
used the domains by serving up adverts for 2 years or so without
using adverts that compete with the Complainant.

If anyone knows whether TM 35 argument has been used before
I would be interested to know.

DG

[domaingenius]

Well here's a nice little update. I sent off the Response to UDRP last night
to WIPO and all parties including the top solicitors acting for the
Complainant (a very very rich man). I spoke with the solicitors today
to make sure they had received the copy by email and they said
"yes we have received it but havent read it yet, but would you be
willing to settle the matter out of Court/wipo....." .
I said please put it in writing. What is the situation regarding discussions
outside of WIPO ?.

DG

[Onward]

Well here's a nice little update. I sent off the Response to UDRP last night
to WIPO and all parties including the top solicitors acting for the
Complainant (a very very rich man). I spoke with the solicitors today
to make sure they had received the copy by email and they said
"yes we have received it but havent read it yet, but would you be
willing to settle the matter out of Court/wipo....." .
I said please put it in writing. What is the situation regarding discussions
outside of WIPO ?.

DG

Frankly, I would hire an attorney to negotiate the sale of the name...maybe they will do it on a percentage basis of the sale...I would get someone who knows the business well either way.

[domaingenius]

Frankly, I would hire an attorney to negotiate the sale of the name...maybe they will do it on a percentage basis of the sale...I would get someone who knows the business well either way.

Yes may well do. What I need to find out firstly though is whether discussions
at this specific stage could come back and bite me,i.e. they write and say we
will give you $xxxxx and I say no I want $xxxxxx and they send copies to WIPO
and im F'd, or am I ?.

DG

[akcampbell]

The way I would deal with the offer to settle out of Court is to say you are planning to develop the name, have no particular interest in selling it, but you will consider any unsolicited offers in writing. You don't want to haggle openly, if you don't like the offer, thank them but say you are sticking to your original plan of developing. I wouldn't hire a lawyer, they are ridiculously expensive in the UK. You can do this sort of thing yourself by reviewing UDRP case law.

[Keyword Factory]

The domain lawyers usually take a percentage and they often get a higher settlement.

Settlelment agreements are normally marked "for settlement purposes - Confidential." This often cannot be used as evidence but good lawyers know the specific procedures. If you just send e-mail yourself it may be a different story.

[domaingenius]

The domain lawyers usually take a percentage and they often get a higher settlement.

Settlelment agreements are normally marked "for settlement purposes - Confidential." This often cannot be used as evidence but good lawyers know the specific procedures. If you just send e-mail yourself it may be a different story.

Im waiting to see what they do as the UDRP response arrives today
in Geneva by Courier .


DG

[marcorandazza]

If they are already offering to settle, that's a good sign. I would be willing to bet that they were BSing you when they said they didn't read it.

[draggar]

The way I would deal with the offer to settle out of Court is to say you are planning to develop the name, have no particular interest in selling it, but you will consider any unsolicited offers in writing. You don't want to haggle openly, if you don't like the offer, thank them but say you are sticking to your original plan of developing. I wouldn't hire a lawyer, they are ridiculously expensive in the UK. You can do this sort of thing yourself by reviewing UDRP case law.

Excellent advice! A recent WIPO case (that was rejected) included the domain hero.com. One of the VPs (of the company who filed the WIPO case) emailed an offer (from his personal email) to the domain owner and that was used in the case (but left out in the report for some reason).

Here's the Hero.com case:
http://www.johnberryhill.com/hero-com.doc

It's odd how someone can offer to buy the domain from you and if you accept, sometimes (not the above time, though) it helps prove bad faith.

[domaingenius]

If they are already offering to settle, that's a good sign. I would be willing to bet that they were BSing you when they said they didn't read it.

Yes I think that also . He is apparently now waiting for instructions.
Anyway if it goes the whole way then theres nothing can do
about it.

DG

Thanks for all the advice which has been noted ,

DG

[DaddyHalbucks]

Let your lawyer handle all settlement talks.

[fab]

Let your lawyer handle all settlement talks.

Yes, I agree!