Can I transfer rights in domain name ?

[domaingenius]

Here's the situation. I registered a domain name in several tld's about 5 years ago. Is parked at ND. Now I see that a TM was granted to someone in a far off Country (well alright USA) in early 2010. Can I transfer the domain name and rights (that are both in my personal name) into a Limited company that I am director of without losing the 5/6 years of rights I have built up ?. What I dont want to do is lose the advantage of having registered the domain name years before the trade mark was granted. Would I lose advantage with UDRP by such transfer ?.

DG

 

[marcorandazza]

It depends on a host of factors including (but not limited to):

1. Was there a common law mark that was simply registered in 2010?
2. Your intent in registering the domain in the first place.
3. Your use of the domain thus far.

 

[TheLegendaryJP]

I see what you want to know, how to avoid becoming a " new " registrant and therefore losing that foot hold before the tm was granted, correct?

IMO its best to ask a lawyer if a defense can be made ( if needed ) that the new registrantion data is technically not " new " based on the transfer of ownership being from you to your company. That is a defense I have never come across so again ask a lawyer

 

[marcorandazza]

Transfers that are not actual changes in ownership usually are not "new" registrations. However, transfers that are designed to try and hide ownership are. See BME v. Ricks.

 

[Theo]

Even if there is a change in ownership along the timeline of a domain, why is that considered a new event with regards to how a UDRP is handled? When a car is sold to a new owner it's still the same car with the same date of manufacturing. Unless a domain expires and gets re-registered, subsequent owners should inherit the benefits of owning a domain that was created prior to a trademark; otherwise there is no tm-proof way of selling domains to anyone.

In the case of BME vs. Ricks I believe the issue is not the passing around of the domain among various business entities controlled by Ricks, but the final ownership info, which was hidden. The case does not disclose whether that final info, when the domain was with Gee Whiz Domains as the registrar, was fake or simply another legal/business entity controlled by Ricks.

 

[TheLegendaryJP]

Even if there is a change in ownership along the timeline of a domain, why is that considered a new event with regards to how a UDRP is handled? When a car is sold to a new owner it's still the same car with the same date of manufacturing. Unless a domain expires and gets re-registered, subsequent owners should inherit the benefits of owning a domain that was created prior to a trademark; otherwise there is no tm-proof way of selling domains to anyone.

I know where you are coming from, the short answer is it does, mind you other factors matter as much or more. Just the way it is my friend

As for selling a tm proof name, its always buyer beware, that is why most good contracts have clauses addressing use and liability (if any and rarely so) of the seller should such an issue arise do to their use or future use. If I buy windows.com off you for example and just assume its ok, never looking or asking about past use etc I am nt doing my diligence and thus buyer beware. That is why on very large purchases a thorough going over should imo be done. I personally dont use a contract in but maybe 5% of my trades but I accept its buyer beware, ask question, look at TM's filed, archieves etc and believe in my ability. There is a lot more to domaining than most do unfortunately.

Furthermore as you know any name, any time can be challenged, justified or not

 

[DutchBoyd]

The short answer is that you won't be able to transfer your "rights" in the domain.

"Consensus view: While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name."

You should definitely be on guard because while that is the concensus view, some panelists have decided to go against that and treat every renewal as a new registration or even simply change the conjunctive requirement "AND" into an "OR" when it comes to bad faith registration AND bad faith use.

Your best bet is to get your own trademark for the domain name you want to avoid losing in a UDRP in some unrelated use than the one that the current TM-holder has... and then actually put up a developed site for your use. These days that seems to be the best and only sure-fire way of keeping a valuable domain name.

 

[Theo]

Dutch, where do you get that from: "...some panelists have decided to go against that and treat every renewal as a new registration"

Renewal of domains by the same entity is a continuation of rights. The question is what happens when the *name* of the entity changes but the effective owner is the same. E.g. I may wish to rename my holding company to be something else and transfer the domains to that new entity.

I also want to ask if panelists must be in the legal profession in order to preside over UDRP cases?

 

[DutchBoyd]

Hey Acro. Check this out :

Five UDRP decisions may signal a surprising trend. Following a position first espoused by M. Scott Donahey earlier this year, yet another UDRP panelist recently opined in WIPO Case No. D2009-1278, that “[t]here seems no reason in logic or in principle why the availability of redress [under the UDRP] should be limited to situations where bad faith is present at the time of acquisition of the domain name.

There is really no telling what a panelist is going to do... they've got total power if they're assigned to the case... and no, I don't believe that it's required that they be in a member of a bar or even have a law degree... I think there are three arbitration organizations now which can handle UDRP decisions and each has their own process for approving arbitrators and assigning cases. I'd bet there are probably a few panelists who snuck in without even having a highschool degree. I'm also convinced a few of those panelists accept bribes because that's the only way I can see how some of the worst transfer decisions could have been made.

If you're ever on the wrong end of a UDRP, you can make it a little more likely that the decision will go with the consensus view by springing for the extra money for a three-person panel.

From my experience with UDRPs, the main thing we should keep in mind as domainers is that panelists don't see a dotcom as a real property right and don't think that owning a domain name automatically instills intellectual property rights in the term. If you go out and buy a high-value generic, you better take the time and the money to actually create a "legitimate" and recognized intellectual property right in the term... the easiest way to do that IMHO is to pay the $500 for a US trademark and to set it up as a developed site.

Another thing that domainers really need to understand is that a UDRP really should be the least of your concerns... an ACPA action can have a lot sharper teeth to it and can ruin you financially, even if you're on the right side. And don't think just because you're not a US citizen you don't have to worry about it... because your .com domain names are in Virginia so an aggressive plaintiff can claim in rem jurisdiction on all of your .coms/.nets/.orgs. And even a lousy IP attorney is going to charge you five figures to defend an ACPA action through to the end. And to top it off the bad faith requirement in an ACPA action isn't conjunctive like it is in a UDRP... so it doesn't matter if you registered GoogleMe.com five years before Google.com launched their search engine... if you have it now undeveloped and parked it's a huge liability that could potentially cost you $100k in statutory damages and five figures in attorneys fees.

I'm currently defending myself pro se in an ACPA lawsuit here in Nevada and trust me it's not a fun process. If I didn't have a law degree and enough know how to file an answer, I'd really be screwed.

 

[domaingenius]

I see what you want to know, how to avoid becoming a " new " registrant and therefore losing that foot hold before the tm was granted, correct?

IMO its best to ask a lawyer if a defense can be made ( if needed ) that the new registrantion data is technically not " new " based on the transfer of ownership being from you to your company. That is a defense I have never come across so again ask a lawyer

JP you are exactly correct.

DG

---------- Post added at 09:01 AM ---------- Previous post was at 08:29 AM ----------

Thanks for all the replies ,there are some very interesting ones. JP is right in what he said about my question. The "question" now for me is "which way do I jump". As regards
the domain that started this thread, I shall for now keep it in my name and maybe even I will apply for a trade mark. The answers to this thread have indeed opened my mind
to the problems and clearly need thought before acting. I have recently started obtaining trade marks for certain domains ,and those trade marks are owned by seperate companies. The company owns the appropriate domain name and trades properly and legitimately in Class 35 use (the same as Google Adsense have) . Does anyone see any benefits or problems with that approach ?. Bear in mind mine are UK trade marks ,which have benefits over US ones !!.

DG

---------- Post added at 09:04 AM ---------- Previous post was at 09:01 AM ----------

Hey Acro. Check this out :

Five UDRP decisions may signal a surprising trend. Following a position first espoused by M. Scott Donahey earlier this year, yet another UDRP panelist recently opined in WIPO Case No. D2009-1278, that “[t]here seems no reason in logic or in principle why the availability of redress [under the UDRP] should be limited to situations where bad faith is present at the time of acquisition of the domain name.

There is really no telling what a panelist is going to do... they've got total power if they're assigned to the case... and no, I don't believe that it's required that they be in a member of a bar or even have a law degree... I think there are three arbitration organizations now which can handle UDRP decisions and each has their own process for approving arbitrators and assigning cases. I'd bet there are probably a few panelists who snuck in without even having a highschool degree. I'm also convinced a few of those panelists accept bribes because that's the only way I can see how some of the worst transfer decisions could have been made.

If you're ever on the wrong end of a UDRP, you can make it a little more likely that the decision will go with the consensus view by springing for the extra money for a three-person panel.

From my experience with UDRPs, the main thing we should keep in mind as domainers is that panelists don't see a dotcom as a real property right and don't think that owning a domain name automatically instills intellectual property rights in the term. If you go out and buy a high-value generic, you better take the time and the money to actually create a "legitimate" and recognized intellectual property right in the term... the easiest way to do that IMHO is to pay the $500 for a US trademark and to set it up as a developed site.

Another thing that domainers really need to understand is that a UDRP really should be the least of your concerns... an ACPA action can have a lot sharper teeth to it and can ruin you financially, even if you're on the right side. And don't think just because you're not a US citizen you don't have to worry about it... because your .com domain names are in Virginia so an aggressive plaintiff can claim in rem jurisdiction on all of your .coms/.nets/.orgs. And even a lousy IP attorney is going to charge you five figures to defend an ACPA action through to the end. And to top it off the bad faith requirement in an ACPA action isn't conjunctive like it is in a UDRP... so it doesn't matter if you registered GoogleMe.com five years before Google.com launched their search engine... if you have it now undeveloped and parked it's a huge liability that could potentially cost you $100k in statutory damages and five figures in attorneys fees.

I'm currently defending myself pro se in an ACPA lawsuit here in Nevada and trust me it's not a fun process. If I didn't have a law degree and enough know how to file an answer, I'd really be screwed.

Dutch, since you seem to have legal training (I do but mostly in UK laws) can you advise if persons as sole trader OR as director of limited companies can have access
to US Courts in person ?. i.e. can one act without a lawyer ?

DG

 

[TheLegendaryJP]

"which way do I jump"

Personally if you feel you have not infringed and can win a decision, don't jump at all. If you feel having ownership in your name leaves you open to potential liability you are not comfortable with than its a decision youll have to make.... is keeping the name worth any potential personal liability, only you know.

btw Dutch is not a lawyer, he can teach you the law of poker however lol

Search ot a good uk domain lawyer and spend $XXX to ask your questions, best $XXX youll spend.

 

[domaingenius]

I just read the BME case Marco referred to and quote from it;
"The only use to which the current Respondent has put the disputed domain name is not legitimate under the Policy. Respondent has used the disputed domain name for pay-per-click revenues on a site that emphasizes Complainant’s line of business. In so doing, its sole purpose is to enhance its advertising revenue by attracting internet users seeking Complainant but finding themselves at Respondent’s site instead. This “initial interest confusion” does not give Respondent any legitimate rights in the disputed domain name". End Quote

Is it "not legitimate under the Policy" to use a domain for pay per click ?. Surely if one can obtain a trade mark for such a trade then it must be considered legitimate ?.

As for, "In so doing, its sole purpose is to enhance its advertising revenue by attracting internet users seeking Complainant but finding themselves at Respondent’s site instead". this position has been fully argued ,and lost , by several large trade mark owners suing Google for selling trade mark names and such Suit was dismissed by the European Court (the highest Court) recently. They had argued that Google was misusing their trade marks. They lost that argument.

What im kind of asking is, how can it be that complainants can use trade mark laws to further/ground a complaint, but then the respondent cannot reply with trade mark laws in defence ?.

DG

---------- Post added at 10:14 AM ---------- Previous post was at 10:10 AM ----------

Personally if you feel you have not infringed and can win a decision, don't jump at all. If you feel having ownership in your name leaves you open to potential liability you are not comfortable with than its a decision youll have to make.... is keeping the name worth any potential personal liability, only you know.

btw Dutch is not a lawyer, he can teach you the law of poker however lol

Search ot a good uk domain lawyer and spend $XXX to ask your questions, best $XXX youll spend.

With greatest respect JP, I have used countless lawyers and all they have done ever is drop me in the proverbial. I have, and this is not boasting, beaten the best lawyers in
the UK through learning law myself. (I enjoy it !).

DG

 

[Theo]

DG, that's why a per case consultation with an attorney is necessary to avoid applying other cases freely. I've read quite the opposite from what it's being quoted above, that PPC advertising is a very legitimate use of a domain.

 

[TheLegendaryJP]

DG, that's why a per case consultation with an attorney is necessary to avoid applying other cases freely. I've read quite the opposite from what it's being quoted above, that PPC advertising is a very legitimate use of a domain.

Parking alone has proven sufficient for use but it has as many times or more proven to not be...

There is no hard and fast rule unfortunately all we can do is speculate or at least try and give you the best advice to not run into trouble or lose the name. Ultimately decision is yours sir

 

[marcorandazza]

Even if there is a change in ownership along the timeline of a domain, why is that considered a new event with regards to how a UDRP is handled? When a car is sold to a new owner it's still the same car with the same date of manufacturing. Unless a domain expires and gets re-registered, subsequent owners should inherit the benefits of owning a domain that was created prior to a trademark; otherwise there is no tm-proof way of selling domains to anyone.

In the case of BME vs. Ricks I believe the issue is not the passing around of the domain among various business entities controlled by Ricks, but the final ownership info, which was hidden. The case does not disclose whether that final info, when the domain was with Gee Whiz Domains as the registrar, was fake or simply another legal/business entity controlled by Ricks.

Acro,

You have it a little wrong here: Yes, a car always has the same date of manufacture. But, if it gets sold, it gets a new registration.

Subsequent owners can't inherit prior good faith registration, because the domain registration agreement requires you to affirm that the domain does not infringe upon anyone else's rights. That's why new registrations and changes in registrars re-set the clock.

---------- Post added at 03:51 PM ---------- Previous post was at 03:49 PM ----------

Dutch, where do you get that from: "...some panelists have decided to go against that and treat every renewal as a new registration"

Some panelists have adopted a "retroactive bad faith" standard.

---------- Post added at 03:52 PM ---------- Previous post was at 03:51 PM ----------

Hey Acro. Check this out :

Five UDRP decisions may signal a surprising trend. Following a position first espoused by M. Scott Donahey earlier this year, yet another UDRP panelist recently opined in WIPO Case No. D2009-1278, that “[t]here seems no reason in logic or in principle why the availability of redress [under the UDRP] should be limited to situations where bad faith is present at the time of acquisition of the domain name.

There is really no telling what a panelist is going to do... they've got total power if they're assigned to the case... and no, I don't believe that it's required that they be in a member of a bar or even have a law degree... I think there are three arbitration organizations now which can handle UDRP decisions and each has their own process for approving arbitrators and assigning cases. I'd bet there are probably a few panelists who snuck in without even having a highschool degree. I'm also convinced a few of those panelists accept bribes because that's the only way I can see how some of the worst transfer decisions could have been made.

If you're ever on the wrong end of a UDRP, you can make it a little more likely that the decision will go with the consensus view by springing for the extra money for a three-person panel.

From my experience with UDRPs, the main thing we should keep in mind as domainers is that panelists don't see a dotcom as a real property right and don't think that owning a domain name automatically instills intellectual property rights in the term. If you go out and buy a high-value generic, you better take the time and the money to actually create a "legitimate" and recognized intellectual property right in the term... the easiest way to do that IMHO is to pay the $500 for a US trademark and to set it up as a developed site.

Another thing that domainers really need to understand is that a UDRP really should be the least of your concerns... an ACPA action can have a lot sharper teeth to it and can ruin you financially, even if you're on the right side. And don't think just because you're not a US citizen you don't have to worry about it... because your .com domain names are in Virginia so an aggressive plaintiff can claim in rem jurisdiction on all of your .coms/.nets/.orgs. And even a lousy IP attorney is going to charge you five figures to defend an ACPA action through to the end. And to top it off the bad faith requirement in an ACPA action isn't conjunctive like it is in a UDRP... so it doesn't matter if you registered GoogleMe.com five years before Google.com launched their search engine... if you have it now undeveloped and parked it's a huge liability that could potentially cost you $100k in statutory damages and five figures in attorneys fees.

I'm currently defending myself pro se in an ACPA lawsuit here in Nevada and trust me it's not a fun process. If I didn't have a law degree and enough know how to file an answer, I'd really be screwed.

All excellent points. I wish that this kind of knowledge was more prevalent among domainers.

---------- Post added at 03:54 PM ---------- Previous post was at 03:52 PM ----------

Is it "not legitimate under the Policy" to use a domain for pay per click ?. Surely if one can obtain a trade mark for such a trade then it must be considered legitimate ?.

What im kind of asking is, how can it be that complainants can use trade mark laws to further/ground a complaint, but then the respondent cannot reply with trade mark laws in defence ?.

Because unless you are a PPC company, you're not really providing "goods and services" on a PPC page. These are bullshit trademarks when filed for PPC pages.

 

[Theo]

I am under the impression that panelists interpret the law with huge deviations during a UDRP proceeding. That would explain why direct lawsuits follow such decisions.

 

[domaingenius]

Acro,

Because unless you are a PPC company, you're not really providing "goods and services" on a PPC page. These are bullshit trademarks when filed for PPC pages.

OK Marco, taking Class 35 and following sections of same (I speak of UK but same applies to USA) are you saying all these are Bull Shit ?
Advertising of the goods or services of other vendors, enabling customers to conveniently view and compare the goods or services of those vendors; Dissemination of advertising
for others via the Internet;

Why exactly do you say these are "Bull shit" ?.

DG

---------- Post added at 03:39 AM ---------- Previous post was at 03:32 AM ----------

And when I say "exactly" I mean "exactly" ,not just "bull shit" which means nothing.
DG

 

[marcorandazza]

OK Marco, taking Class 35 and following sections of same (I speak of UK but same applies to USA) are you saying all these are Bull Shit ?
Advertising of the goods or services of other vendors, enabling customers to conveniently view and compare the goods or services of those vendors; Dissemination of advertising
for others via the Internet;

Why exactly do you say these are "Bull shit" ?.

DG

---------- Post added at 03:39 AM ---------- Previous post was at 03:32 AM ----------

And when I say "exactly" I mean "exactly" ,not just "bull shit" which means nothing.
DG

You are correct that advertising services fall into class 35. However, I've seen this game that you can just start a PPC site and get a class 35 registration.

Chances are, you will be able to obtain a registration - as the examining attorney will not take the time to research the services provided (nor should they). However, any such registration would be easily crushed if a cancellation action were brought. Quite simply, there is no bona fide service provided. Additionally, if you create a website that places auto-generated PPC links on the page, not even YOU know what ads will wind up there.

It might be another story if you launched Vuvuzela.com and placed links to companies that sell vuvuzelas on there -- but auto-gen PPC sites would not likely survive a cancellation action. Trademark squatting is not the same as having an actual protectable trademark.

---------- Post added at 10:25 PM ---------- Previous post was at 10:23 PM ----------

With greatest respect JP, I have used countless lawyers and all they have done ever is drop me in the proverbial. I have, and this is not boasting, beaten the best lawyers in
the UK through learning law myself. (I enjoy it !).

DG

So why bother asking a legal question here? You're smarter than all the lawyers, but you want legal advice from a bunch of non-lawyers on a domainer board? Genius, indeed.

 

[Theo]

Marc, there were quite a few UDRPs where the respondent flat out outlined that a domain parked for revenue is a legitimate use. They were not a PPC company themselves but rather used e.g. Sedo or Parked to display ads relevant to keywords and content.

 

[TheLegendaryJP]

Gentleman, the bottom line here is..... I am right lol

Really its clear, new registrant, no transfer of rights/faith, call a lawyer for better advice but that sums it up if its ALL the facts that matter. If we knew the name it would help a million %.

Good Luck