Do I need a lawyer?

[Jack Gordon]

I have a client, let's call them Brick Wall Theatres. They own the domain name BrickWallTheatres.com, and it points to their site.

The president of Brick Wall Theatres just called me and asked for my help. It turns out that someone else owns BrickWallTheaters.com (the other "theatre" spelling) and points it to one of those annoying search pages.

There is no other company out there with the same name, and this domain was clearly registed in bad faith. According to whois, the registrant is in Moscow, Russia.

My client wants that domain. What is the logical next step?

Do I necessarily need legal help at this point, or is there a step I should try on my own first?

If any lawyer types would prefer to respond to this by PM, please feel free. I need to come up with a course of action for my client.

Thanks!

 

[RON2]

Next step is send the domain owner a C&D letter telling them to stop using the name and demand they turn over the name. If they don't comply then you move on to URDP. It's going to cost you at least $1400 to do a UDRP, but it sounds like its a clear cut case of bad faith.

http://www.icann.org/udrp/

BTW, I've never heard a lawyer say you don't need a lawyer.

 

[Jack Gordon]

Thanks RJ - that link was helpful. I have shared it with the client and told him to either have his lawyer investigate it or let me know if he wanted me to find a lawyer (from here) for him. The ball is back in his court.

 

[timechange.com]

Do they own a trademark on the name? Does this mean that the owner of Honour.com should hand it over to the company behind Honor.com ?

 

[Sharpy]

The company who holds the name with the spelling that is used by the majority of countries around the world gets the other name in any dispute

 

[Jack Gordon]

Let me be crystal clear....

There is no way in hell that the other party in this case has a legitimate claim to the name. It is very unique, and when combined with "Theaters" it removes any doubt whatsoever that they are trying to capitalize off of confusion over the spelling.

The actual name in question is a pretty unique surname, not something as generic as a brick wall.

And since it is an established theatre chain, I am fairly certain they own all appropriate trademarks

 

[Anion]

I remember reading about case involving joecartoon.com. Someone had registered all of his typo names, the judge ordered him to pay 100,000 per name registered in punative dmages under the ant-cyber squatting act. [As a side not check out dnforums.com note the appended S].

 

[Jack Gordon]

Hey those guys are in my city!

That's interesting - I'll look into the precedent.

Thanks!

 

[Anthony Ng]

Originally posted by Sharpy
The company who holds the name with the spelling that is used by the majority of countries around the world gets the other name in any dispute

I thought people from around the world speak different languages and therefore spell their words differently. Like the French say "nom" while the British say "name". Regarding the English speaking world, "centre", for instance, is actually used by the majority if we count the number of countries. [/Oh no, my training in Linguistics just keeps coming back to haunt me.]

 

[Jack Gordon]

Originally posted by nameslave

I thought people from around the world speak different languages and therefore spell their words differently. Like the French say "nom" while the British say "name". Regarding the English speaking world, "centre", for instance, is actually used by the majority if we count the number of countries. [/Oh no, my training in Linguistics just keeps coming back to haunt me.]

has the legitimacy of that ever been tested in court?

 

[DNS Kidd]

Another scenario, same question:

A buyer contacted me several weeks ago from whois information, and asked if a name were available. I sent a price quote, after they said they would develop the site themselves.

They called back today, saying they had TM on the name. I couldn't find it in TESS, maybe they mean common law trademark rights?

Since I try to avoid any TM issues, I offered the name for much less. I since find that several other businesses in 2 other states use the same name for their business. The name has to do with storage, the small, garage sized building kind of storage.

This company has 3 of these storage locations. They regged usstorage.info and us-storage.us, and maybe us-storage.com, in the past few weeks. My name is very similiar to these.

Should I give the name up for a minimal fee, or no fee at all? Both of these words are generic, which generally affords them the lowest level of TM protection. The only thing I am missing is a valid site selling goods or services for my name. The name would then be protected, especailly if there were no registered TM.

It's expensive to defend names, and I do not have anything in writing yet, so for now I will be waiting for another call, working out a pro-active strategy to offer to the company, or waiting for that friendly C&D

Should I mention that the .biz version of this corporate name is
still available?

 

[Jack Gordon]

From what you write it sounds like you should have nothing to worry about, but I AM NOT A LAWYER. But it really does sound like you did nothing wrong.

Good luck.

 

[HOWARD]

I AM a lawyer and I agree with Front Row.

 

[DNS Kidd]

This has been resolved with the sale of the name.

The aspect of the buyer having some sort of TM rights moves the name from a retail sale $4k, to a wholesale transaction, $400.

Without TM involved, I would not have changed my first quote.

Selling to retail buyers is a lot of work, each one is looking to find ways to reduce the price, they will have their lawyers send a letter, which may have no basis in fact.

It is better to sell one name for $4k rather than 10 for $400, just for the fewer headaches and time spent with correspondence, escrow, and transfer. That doesn't happen as often as a lesser sale though.

 

[.com.net.org]

Front : Try to buy from them.