Am I A Cyber Squatter?

[PalmBeach]

Can I have the trade mark overturned? Can I ask for compensation?

I received a threatening email from an attorney Konrad K. Gatien representing Mad Dogg Fitness, regarding a domain name (SpinPilates.com) that I purchased in 2002.

In the email he accusing me of sybersquatting, trademark dilution, trademark infringement, and unfair competition. They went on to say that their client “Mad dogg” was entitled to treble damages and attorneys' fees under 15 U.S.C. § 1117. Based on your cybersquatting, Mad dogg is also entitled to $100,000.00 for your infringing domain name under 15 U.S.C. § 1125(d). an transfer the Spinpilates.com domain name to Mad dogg.

My Company Sports-Spa-Plus dba All-American Pilates™ registered SpinPilates.com on June 6, 2002, Mad Dogg did not file for the Spin Pilates trade mark until February 5, 2007

I did not register SpinPilates.com in bad faith with intent to profit from the goodwill of Spin Pilates trademark. Mad Dogg did not have a trade mark on Spin Pilates in 2002.

I had no intention of selling the name to Mad Dogg. To the best of my knowledge they were not even doing Pilates in 2002. I registered the domain name and several hundred others .com's as part of the ground work of a Pilates franchising concept that I was developing.

Johnny G the owner of Mad Dogg fitness developed SPINNING™ (indoor cyceling), trademarked the name and forced any club who wanted to use the name (SPINNING) to purchase Mad Dogg equipment, Mad Dogg training and pay Mad Dogg a licensing fee to run the program.

Knowing Mad Doggs history with trademark disputes I find it incomprehensible to believe that Konrad K. Gatien the Attorney of Record on the trademark did not know that I owned the domain SpinPilates.com before they filed for the trade mark. It is clear that he is engaged in reverse domain name hijacking in order to gain control of their desired domain names SpinPilates.com.

My question Can I have the Spin Pilates trade mark overturned? No one is going to purchase a Spin Pilates Franchise or license from me until this Trademark dispute is settled.

The franchising concept that I have been developing over the last 9 years is based on a $20,000 initial franchise fee and 5% annually of a $200,000 gross revenue projection or $10,000 per year. These revenues projections are based on the 4 prototype studios that I operated.

Can I ask him to compensate me for the potential Franchising fees I will lose If I turn the SpinPilates.com over to him? Can I have their trade mark overturned? What are my options?


Does this ruling apply?

It is clear that nothing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders. To hold otherwise would create an immediate and indefinite monopoly to all famous mark holders on the Internet, by which they could lay claim to all .com domain names which are arguably 'the same' as their mark. The Court may not create such property rights-in-gross as a matter of dilution law. ... Trademark law does not support such a monopoly.
-- Strick Corporation v. James B. Strickland, EDPA (27-Aug-01)


Thank you for your opinions

 

[Theo]

It seems to me that the tm and the domain are two separate issues that they are attempting to bring forth as one. In my non-expert opinion, should they bring the matter to WIPO you'd need to formulate your response stating the same facts as above, defending the domain name's use and business function. As far as overturning a mark goes, if it's not registered you can contest it. Of course, with regards to the rest of the threats to sue for damages etc. that depends on what they will claim in the lawsuit. In my opinion, they are bundling all this because they stand a good chance of losing the UDRP based on your stated facts of lawful use and prior existence of the domain; thus enabling them to maintain the claims in regular court.

 

[Focus]

My response would be....take that sh*t to trial b*tch!

 

[JohnnJohnn is verified member.]

Ask the lawyer to suspend the charge/filing and invite him to be a member here (I will pay for his membership) so he can learn more about cybersquatting and what it means.

 

[DNQuest.com]

First, take a breathe.

Word Mark SPIN PILATES
Goods and Services IC 025. US 022 039. G & S: apparel, namely, T-shirts, tank tops, sports bras, jackets, sweatshirts, hooded sweatshirts, sweatpants, warm-up suits, pullovers, tights, shorts, shoes, socks, caps
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 77099719
Filing Date February 5, 2007
Current Filing Basis 1B
Original Filing Basis 1B
Published for Opposition February 19, 2008
Owner (APPLICANT) Mad Dogg Athletics, Inc. CORPORATION CALIFORNIA 2111 Narcisus Ct. Venice CALIFORNIA 90291
Attorney of Record Konrad K. Gatien
Prior Registrations 2173202;2375582;2475595;AND OTHERS
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "pilates" APART FROM THE MARK AS SHOWN
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

They filed in 2007 under 1B, meaning intent to use. So they cannot claim in TM before this time.
They have not been issued a registered mark yet.

Right now, it appears they may be indulging in reverse hijacking. They cannot prove intent at registratioin becuase by thier own filings, they were not in exsistance.

But to help you out and not shoot yourself in the foot. Your "business plan", is a bologny arguement. There may be thoughts in your head, but you have not developed anything. You've had it parked and you offer the domain for sale for quite sometime. Even on your current page, you have this "©2008 spinpilates.com All rights reserved.". You only had it parked which is all fine and dandy, but sometimes less is more... meaning the less BS you offer, the less it will hurt you. You obviously changed the parking page after their TM filing, but was it was because of them? they have to prove it.

Though the criteria states registered AND used in bad faith, it has been intrepreted and registered and/or used in bad faith. So if you register a domain then someone down the line gets a TM which happend to be the domain name, and you change the site which violates their TM, you could end up losing it since you willfully changed the site to ride someone else's TM.

 

[-ET-]

Dispute the trademark during the hearing.

 

[draggar]

Ask the lawyer to suspend the charge/filing and invite him to be a member here (I will pay for his membership) so he can learn more about cybersquatting and what it means.

I am not a lawyer, I do not play one on TV, nor do I look like one.

I do not think that would help. It seems that this attorney is not familiar with domain law and cybersquatting. Many (not all) attorneys are there to do what they were hired for and inm this case, to get the domain (though reverse hijacking, IMO). Setting him up with a membership here wouldn't do much. I'm sure he'd use it as fuel for his fire saying that the industry as a whole promotes cybersquatting.

The issue is that the domain in question is a two keyword generic phrase registered 5 years before the trademark. This kills the potential of registering it in bad faith and one that is "confusingly similar" to their TM. The bad news is that the domain is parked which in the eyes of WIPO (or at least by their recent claims) is clear cut bad faith, regardless of any trademark etc.

I'd also like to see how he came up ith the $100,000 in damages that is owed to the company, I'm sure well over half of that is the attorney's fees, more likely a scare tactic to get you to hand over the domain.

I'd like to hear what Berryhill would have to say here, though.

 

[PalmBeach]

DNQuest.com

You obviously changed the parking page after their TM filing, but was it was because of them? they have to prove it.

[FONT=&quot].

No it was not because of them. It was because of you ;-) I went to my first TRAFFIC conference at the Westin Diplomat [/FONT][FONT=&quot] last October [/FONT][FONT=&quot] and everyone told me that I should take the 2k domains that I registered to under pin my franchising concept and sigh up with a parking Company to offset my annual registration expense.

[/FONT]

Your "business plan", is a bologna argument.

I thought the business plan and the contractual agreement that I paid my attorney to develop was proof of what my intentions were.

Thanks for your input

draggar

The bad news is that the domain is parked which in the eyes of WIPO (or at least by their recent claims) is clear cut bad faith, regardless of any trademark etc.

I did not know that Mad Dogg was doing Pilates until I got the e-mail from the attorney. Should I take down the site? The linked page does not say anything about the name is for sale. It talks about Search Engine Marketing.

Thanks for the input.

 

[onlinetv]

Increasingly TM legal specialists are focusing on the very cheap federal court route to browbeat domain owners. The main reason is the impossibility of proving prior intent with ICANN when domains are older than the claimant’s claims. Also consider the normal $350 federal filing fee vs. the $1500 minimum for the ICANN procedure? You also force your defendant to hire lawyers and spend money for something he, or she owns.

Which is easier? The federal route my friends. Within the ICANN you will not lose if you had it way before their filing. Therefore a prior intent is impossible to prove and the three burdens of proof cannot be met. In the federal route it is much easier to win even being wrong and more like poker. Except you will get poked no matter what.

His letter contains threats because he knows they are bull and it makes no difference to him. Your question of why a lawyer presents bogus claims is that it does not matter, you still have to answer them and it will cost you money. He will lose nothing - law is made up of fictions and they are billable.

In the end figure 80k legal to keep your domain and you should decide on its value to you and a settle out price too. You are now aware of the dispute so keep hands clean.

I am not a lawyer. I have done these same kind of cases as a "pro-se" and won at least large settlements. You seem a big entity and must have incorporated. You need a lawyer. Couple hundred should answer that letter easily or you can do it yourself since it is not a case filing yet. Just be careful. Every word will haunt you. Less is more. And the more I read your messages here the more I think you need more advice to do that letter than I am willing to give you here, so at least talk to a lawyer?

Most important now is for you to decide if you will keep the domain and that value? How much is the fight going to be worth to keep it? What is a reasonable price if you do not have to pay the 80k to lawyers? Be prepared.

Best to you,

 

[PalmBeach]

Thank you onlinetv

Within the ICANN you will not lose if you had it way before their filing. Therefore a prior intent is impossible to prove and the three burdens of proof cannot be met.

that is reassuring
To date, I have only sold one of the domains that I purchased back at the turn of the century - that being MalibuPilates.com. It was sold it to Guthy-Renker group in 2005 for $20k with the assurance that it would not be used to develop a franchise concept around.

At the time I felt the amount was some what adequate compensation for the franchise and continuing education fees I would forfeit. Guthy-Renker turned around and sold millions of dollars in product through his Malibu Pilates infomercial and MalibuPilates.com website. But with that deal their was no trademark issue. I stated my case and they eventually met my terms.

I do not want to spend $80K on a trademark / cybersquatting legal battle . I would like to use a similar justification for monetary compensation for SpinPilates.com but I am concerned about the consequences.

Part of the definition of cyber squatter is “offering to sell the domain to the person or company who owns a trademark contained within the domain name at an inflated price”. How do I get around that? I bought the domain for $14. If I ask for what I feel is fair compensation would that make me a cyber squatter ....just for asking and strengthen their case?

Does asking for compensation from a trademark holder who registered their trademark years after I registered may domain name make me a siber squatter?
How do I frame the question suggesting a fair compensation compromise?

Does --

Strick Corporation v. James B. Strickland, EDPA (27-Aug-01)

apply?

Anyone here been their done that? ...........before?

 

[HuntingMoon]

seems like they are just working the system to try and usurp your domain.

 

[PalmBeach]

It seems clear that Mad Dogg is engaged in reverse domain name hijacking using his trademark and the USPTO in a surreptitious attempt to gain control of their desired domain names SpinPilates.com. Could this be legal ?

I would think that In todays internet driven world that a domain name availability search is just as important as a trademark and trade name availability search.

Does someone need to just trademark ($350) your domain name to take it away from you or prevent you from developing it? Their are laws against Cyber Squatting but no law against using the USPTO to hijacking a domain name. That puts us all in Jeopardy!

 

[ArjunDhawan]

Ask the lawyer to suspend the charge/filing and invite him to be a member here (I will pay for his membership) so he can learn more about cybersquatting and what it means.

...I'll share the reg fee!

@Joe.

Do what Acro said.

Don't let the dog at Mad Dogg take you for a ride - he wants a fight, give it to him!

 

[PalmBeach]

I found the an answer at Traverse Legal, PLC;-) I will post this in the news section for all to see.

Trademark Holders Beware: First In Time, First In Right Still Has Weight When It Comes to Domain Name Registrations

 

[onlinetv]

I found the an answer atTraverse Legal, PLC;-) I will post this in the news section for all to see.

Trademark Holders Beware: First In Time, First In Right Still Has Weight When It Comes to Domain Name Registrations

Excellent article and proof of point.

I would send the article, the filing and a letter telling them to make you an offer you cant refuse. I would enclose a filing to oppose their trademark with that and tell them it is ready to go to DC.

I am not a lawyer. There is one on here and he pontificates real nice. I like him. But this is way to small and you can do this. It is still letters. No need to talk price. Just be nice. I got this; you got gots and take some financing to move you on your way. Nice deal.

I have a great domain that I am waiting for a certain party to bid for. Got the domain in 1998 along with a dozen similar and they decided to make a company with this exact name in 2006. Now they win awards and I own and operate the name in the exact same commercial business for the exact same locations. They have it in the real world I have it in virtual land. There is already vast confusion and I get a lot of traffic from their stuff and offers for the real world work. Problem for me is it is a government agency and I will be walking the thin wall trying to extract the money I want. Much rather sell it than do the work.

Oh yeah, that article shows why they will not try in the ICANN process but as I said they can file under trademark and copyright without being right. So tread nicely and price it right.

 

[lordbyroniv]

run for the hills

run away

run away

 

[DNQuest.com]

DNQuest.com

[FONT=&quot].

No it was not because of them. It was because of you ;-)
[/FONT]

I have done no such thing, I have not told what what to do. Never even discussed it with you

I thought the business plan and the contractual agreement that I paid my attorney to develop was proof of what my intentions were.

9 years and all you have is a parking page offering the domain fo sale. Just pointing out what would be pointed out to you.

The linked page does not say anything about the name is for sale. It talks about Search Engine Marketing.
.

Ummmmm... look at your page and your parking history, it very well says the domain is for sale...

spinpilates.com
This Domain Is Available Please contact us for more information.

Just showing you have not created interest in the domain IE- not developed. So any stories you tell, it should be backed up. Right now, say all you want about development, it does not show.

I found the an answer atTraverse Legal, PLC;-) I will post this in the news section for all to see.[/qutoe]

Isn't that what we have been saying??? There is nothing new on that acticle that we don't already know. But one thing it does not cover is riding the TM AFTER it is established to unfairly steal traffic. There have been predated TM domains that lost because it was found the domain owner changed their site after the established TM to compete with the TM holder. We are saying be careful. They do have a pending TM, did you file an opposition to the registration? Might be a good idea.

Again, it does look like they are trying to reverse hijack the domain. Just don't give them any ammunition.

 

[PalmBeach]

DNQuest.com

No it was not because of them. It was because of you ;-)

Not you personally. The Domainers/ DNForum folks that I met at my1st TRAFFIC Conference. I went home and registered my entire portfolio that was just costing me $$$$$$ a year with parked. All of the domains that I purchased to position my companies to compete Globally in the future I parked at PARKED on the some day.

9 years and all you have is a parking page

2corporations, 1 trademark, 700+ certified, Pilates Cross Training Program opened /operated 5 prototype franchise facilities, employed 75+, 3blogs 5 sites, 7 manuals etc.

This Domain Is Available

All my domain names that are parked are available for "On-Line Marketing opportunities that are guaranteed to improve your bottom line" like a franchise/license/SEM. They are not Not For Sale I was very careful to word the link offer that way because I purchased them with the intent to develop business around them.

They do have a pending TM, did you file an opposition to the registration?

I looked up their TARR status and is states:
Current Status: Opposition period completed, a Notice of Allowance has been issued
Registration Number: (NOT AVAILABLE)
Registration Date: (DATE NOT AVAILABLE)
Mark ________

Can I still file an opposition to the trademark after the opposition period is completed or do I need to file petition for the cancellation of the trademark? From what I read I think it is to late to file a petition of opposition. I have a petition to oppose the trademark ready to go to DC. along with a nice letter Like onlinetv suggested. But I think I need to draft a petition for the cancellation of the trademark. I am not sure if they have a mark issued yet? Can anyone decipher the TARR Stats? Do you know which way to go?

 

[DNBA]

well the argument of being able to TM a domain name after its been registered should create more damage for the TM owner. Otherwise what would stop anyone from registering spoons.com as a TM and then trying to claim it. Personally i think you should be suing them for trying to take it away and for abusing the justice system.

 

[DNQuest.com]

Not you personally

I just wanted to clarify.

2corporations, 1 trademark, 700+ certified, Pilates Cross Training Program opened /operated 5 prototype franchise facilities, employed 75+, 3blogs 5 sites, 7 manuals etc.

And this is for the development and TM under this domain? You may have done something, but it is not under this domain name. There is no website history in archive.org. Under domaintools, the pages are all parking pages on parking servers. So none of what you mention is related to this domain. Curiously, if you had a "franchise" opportunities, why on earth would you not have this domain developed showing this and only have a parking page for this domain? and then at the bottom of the page having "©2008 spinpilates.com All rights reserved. "? Wouldn't you want people to find out about your franchising opportunities?

All my domain names that are parked are available for "On-Line Marketing opportunities that are guaranteed to improve your bottom line" like a franchise/license/SEM.

Question, have you looked at your parking page for this? None of what you mentioned comes close to resembling what you are describing. You merely have a parking page up.

They are not Not For Sale I was very careful to word the link offer that way because I purchased them with the intent to develop business around them.

Directly from the parking page for this domain.... wait for it... wait for it....

spinpilates.com
This Domain Is Available

It makes zero difference how your other sites are handled, all that matters in the one in question. It is for sale, there is no "On-Line Marketing opportunities that are guaranteed to improve your bottom line". Hey, go ahead and proceed they way you think you want, but remember, there is was is said, and there is what you can support.


Man, I am really trying to help you here. For the thrid time, it seems they are going to engage in reverse-hijacking. I am on your side. I really want you to prevail. I don't know how straightforward more I can be.