UDRP suspension request

[domaingenius]

What is likelihood of my getting a suspension of a UDRP on
this basis. I have written to WIPO requesting that they
suspend the UDRP process because of my trademark application
that was filed before the UDRP was filed ?. I said to them
that if the Complainant was intending objecting to my TM
application it would be potentially prejudicial and unfair
to proceed with UDRP until that was settled, OR I invited the
Complainant to undertake in open letter not to object to
my trademark application.

What do you reckon ,will I get suspension or not ?.

DG

[jberryhill]

You will not get a suspension on that basis.

[dvdrip]

You will not get it. Suspension is for a certain amount of time. You might get a suspension for 2 weeks but how will that help you?

[Acro]

If they don't have a tm and you had filed for one, how did they win the UDRP?

[INVIGOR]

Not a chance...

[domaingenius]

If they don't have a tm and you had filed for one, how did they win the UDRP?

The UDRP has not been before a Panel yet. I filed for TM (b4 complaint)
and so have they ,for different classes. I was advised that I will not have problem with getting the TM for UK. I have German Law firm who will
issue proceedings in Germany as they submitted to that Jurisdiction.

DG

[Acro]

Who filed first?

[jberryhill]

Who filed first?

Probably not relevant. DG has spawned a variety of threads seeking the UDRP "magic bullet". Some people become fascinated by legal machinery in the same way that perpetual motion machine inventors become fascinated by engineering.

The likelihood is that DG is re-inventing the "Madonna" strategy, but has yet to discover that one can obtain a duly registered trademark in Tunisia in 24 hours.

http://www.wipo.int/amc/en/domains/d...2000-0847.html

Second, Respondent contends that it has rights in the domain name because it registered MADONNA as a trademark in Tunisia prior to notice of this dispute. Certainly, it is possible for a Respondent to rely on a valid trademark registration to show prior rights under the Policy. However, it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy.

One can certainly proffer the pending trademark application as evidence of "substantial preparations to use the domain name" in the course of the UDRP.

The Panel, in turn, can certainly consider the sincerity of those preparations.

Note that DG points out the TM application was filed before the UDRP. This is something of an interpretational error often made with the UDRP clause "prior to notice of a dispute" in connection with legitimate rights and interests.

What matters is not whether the TM application was filed prior to the UDRP, but whether it was filed "prior to notification of a dispute".

That "notification" can take a variety of forms. It might be a c&d letter notifying the domain registrant that, yes, we dispute this domain registration.

If I were a panelist confronting a hyper-legalistic response which relied on the respondent having filed a trademark application, my question is going to be "Did this guy file the trademark application out of some bona fide development of commercial interests, or did he file it as some kind of 'UDRP insurance', knowing full well that the complainant was likely to come after him?"

Judges, and UDRP panelists, are not some sort of automated data processing system. They are people, and quite often well-jaded ones at that. If the totality of circumstances suggests a substantial probability that the respondent's actions are less suggestive of "legitimate rights" and more suggestive of "gaming the system", then half-baked legal schemes wrapped in a veneer of fancy prose doesn't cut it.

[domaingenius]

Probably not relevant. DG has spawned a variety of threads seeking the UDRP "magic bullet". Some people become fascinated by legal machinery in the same way that perpetual motion machine inventors become fascinated by engineering.

The likelihood is that DG is re-inventing the "Madonna" strategy, but has yet to discover that one can obtain a duly registered trademark in Tunisia in 24 hours.

http://www.wipo.int/amc/en/domains/d...2000-0847.html

Second, Respondent contends that it has rights in the domain name because it registered MADONNA as a trademark in Tunisia prior to notice of this dispute. Certainly, it is possible for a Respondent to rely on a valid trademark registration to show prior rights under the Policy. However, it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy.

One can certainly proffer the pending trademark application as evidence of "substantial preparations to use the domain name" in the course of the UDRP.

The Panel, in turn, can certainly consider the sincerity of those preparations.

Note that DG points out the TM application was filed before the UDRP. This is something of an interpretational error often made with the UDRP clause "prior to notice of a dispute" in connection with legitimate rights and interests.

What matters is not whether the TM application was filed prior to the UDRP, but whether it was filed "prior to notification of a dispute".

That "notification" can take a variety of forms. It might be a c&d letter notifying the domain registrant that, yes, we dispute this domain registration.

If I were a panelist confronting a hyper-legalistic response which relied on the respondent having filed a trademark application, my question is going to be "Did this guy file the trademark application out of some bona fide development of commercial interests, or did he file it as some kind of 'UDRP insurance', knowing full well that the complainant was likely to come after him?"

Judges, and UDRP panelists, are not some sort of automated data processing system. They are people, and quite often well-jaded ones at that. If the totality of circumstances suggests a substantial probability that the respondent's actions are less suggestive of "legitimate rights" and more suggestive of "gaming the system", then half-baked legal schemes wrapped in a veneer of fancy prose doesn't cut it.

John, ive got to agree with a lot of what you say, and yes I enjoy law
and spent 10 years on last case against Government before getting
case reinstated and then settled. That was a tough one.

The update on this present case is I have lodged the UDRP
response but am not hopeful that even if I had the best defence
in the World I would win it, do have got a good IP lawyer firm
in Germany who is filing shortly in German Court (as they
nicely accepted German jurisdiction and is a German Registrar)
and working on a No win no fee basis ,which is even better.

DG