Does prior owner who didn't renew have any rights?

[Dave Zan]

If I read this thread right, if Google or AOL failed to renew their domain, they have no rights to it anymore?

Their rights are dictated by their registrar's service agreement. If they fail to
renew their domain names on time, they can lose 'em just like everyone else.

No one has absolute exclusive rights to any domain name. And trademarks are
not magical amulets granting absolute exclusivity to a term.

 

[JuniperPark]

It may be interesting to check if the domain is listed in archive.org and also check for previous ownership at domaintools.com.
So you get a more accurate picture about the previous owner.

EXACTLY.

If they really built a site, and it was NOT commercial or just a bunch of PPC parking, I'll often give it back. Note that about 75% I catch them in a lie, and then I tell them they can then pay full price or go away.

 

[erdinc]

If you could register the name its yours.

 

[Brett Lewis]

All,

The majority of UDRP decisions that I have encountered on the issue are against what virtually everyone on this thread has stated. Most panels will return a domain name registration to the prior owner, if it is inadvertently allowed to expire. The panels will find that the individual snapping up the expired domain name had an obligation to conduct some basic due diligence to make sure that the expired domain was not being used as a trademark. For expiring names with real traffic on them, it is almost assumed that the person registering the domain name was sophisticated enough to know that the domain was in use.

As to so-called generic terms, there is a fundamental misunderstanding in the general public and among some attorneys as to what this word actually means. Generic terms are not trademarkable. Generic, as a legal term of art, refers to words that stand for the very product or service that they are used to sell. For example, I could not ever acquire a trademark in "Computer" brand computers or "Tissue" brand tissues.

Dictionary words, on the other hand, can be used in an arbitrary, suggestive or even descriptive sense as trademarks and can attain a strong scope of protection when used in connection with the designated goods or services. In other words, just because a word is in the dictionary does not mean that it is "generic" or available for any use. "Apple" is an incredibly strong trademark for computers and iPods. That is not to say that there are not many legitimate uses of dictionary words in good faith, non-infringing domains, which there are.

That said, each case boils down to its peculiar facts. If it is determined that an expired domain was registered in bad faith, with knowledge of a third party's use, the aggrieved party will have a remedy under the UDRP or the anticybersquatting laws. If a domain name was being used in a trademark sense, the aggrieved party will possess trademark rights that it can enforce against the new registrant in the event that any infringing use is made. Is posting contextually relevant links or advertisements on the Web page infringement? How about doing it after being placed on notice by a trademark holder of its prior rights to and use of the domain name?

I have been involved in many situations where legitimate companies, often through no fault of their own, lose their domain name registrations due to registrar error. Other times, it is just a matter of failing to renew. In those cases, the resulting click revenue is the direct result of someone else's misfortune, in many cases, small business owners who have worked hard to build up good will in their names. It might go some distance towards changing the public's perception of domain speculators as cybersquatters if the community showed more concern for others, where their misfortune was involved.

Yes, I voted for John Kerry!!!!

Brett Lewis, Esq.
www.lewishand.com

 

[jberryhill]

It might go some distance towards changing the public's perception of domain speculators as cybersquatters if the community showed more concern for others, where their misfortune was involved.

My sympathy meter is highly dependent on how they approach the domain registrant. I do not like the ones who simply didn't renew, didn't redeem, and then approach the domain owner with a lot of pretentious bluster and/or blame it on the registrar.

There are also claimants who were not, in fact, the prior registrant.

I have had generous clients who have helped out dozens of prior registrants out of sympathy, but if the prior registrant is dishonest or mean-spirited, then it sucks to have bad karma.

 

[Brett Lewis]

My sympathy meter is highly dependent on how they approach the domain registrant. I do not like the ones who simply didn't renew, didn't redeem, and then approach the domain owner with a lot of pretentious bluster and/or blame it on the registrar.

There are also claimants who were not, in fact, the prior registrant.

I have had generous clients who have helped out dozens of prior registrants out of sympathy, but if the prior registrant is dishonest or mean-spirited, then it sucks to have bad karma.

Agree. I hope the next time one of my clients loses a domain name it is to one of yours.

Brett

 

[Dave Zan]

It might go some distance towards changing the public's perception of domain speculators as cybersquatters if the community showed more concern for others, where their misfortune was involved.

Looks like some "effort" is being made:

http://video.wgntv.com/global/video...Fworldnow%2Fwnresizeiframe%2Ehtm&rnd=40163341

 

[JuniperPark]

Agree. I hope the next time one of my clients loses a domain name it is to one of yours.

Brett

You should shiver in your boots if you find your self up against Senior Berryhill, he's the best in the business, and as you can see from his post, is only an a-hole if need be.

You, on the other hand, seem to be saying you're a full time a-hole, regardless of the situation. Gee, isn't that what gives LAWYERS a bad name? Perhaps you shouldn't be the one lecturing us our percertions in our industry?

 

[jberryhill]

Actually Juniper, Brett and I have found ourselves on the opposite sides of the table, and we both did what lawyers should do - help our clients work it out to their mutual satisfaction without wasting a lot of time or money.

What was interesting about the situation is that we both started out with clients who were very angry.

 

[Deleted member 5660]

All,

...

Most panels will return a domain name registration to the prior owner, if it is inadvertently allowed to expire.

So will the USPTO return a TM reg if an applicant fails to maintain the registration, pay the bills, or submit the filings necessary to maintain the TM reg? I guess the question really is whether domain registrations are treated differently than TM registrations?

 

[jberryhill]

This one, as well as the cited decisions, involved a complainant which was a former registrant:

http://domains.adrforum.com/domains/decisions/114434.htm
n this case, Complainant claims that Respondent has intentionally attempted to divert Internet users to competitors and that Respondent's registration of the disputed domain name capitalized on an error on Complainant's part in failing to renew registration of the domain name, which Complainant had originally registered in 1997. Respondent waits for domain names incorporating common words, generic terms, short terms and useful phrases to be released after their registration has lapsed. Then Respondent immediately registers those names and uses each of them to host a generic portal web site, presumably gaining revenue from banner advertisements and affiliate links. This activity has not been found to be bad faith registration or use under the UDRP unless the selection of the domain name and the manner in which it is used are related to its correspondence to Complainant's trademark. It has been held that a party is entitled to conduct a business of capturing generic domain names which become available in the marketplace, often through failure to renew registration. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001); First American Funds v. Ult. Search, D2000-1840 (WIPO Apr. 20, 2001); GLB Services Interactivos S.A. v. Ultimate Search, Inc., D2002-0189 (WIPO May 29, 2002).

http://domains.adrforum.com/domains/decisions/425410.htm
Additionally, Respondent diligently investigated trademark databases, Internet search engines, and other sources for evidence of secondary meaning in Complainant’s claimed mark and found none. Ultimately, Respondent determined that it had spent enough time and money on sincerely attempting to understand whether there was a claim here. Because the Policy does not permit declaratory actions to be brought by a domain registrant, Respondent decided to await this opportunity to put the matter to an impartial Panel.

You have a point about the fact that a party may possess all sorts of rights which it is the responsibility of that party to diligently renew. The best citation on the entire topic is:

http://domains.adrforum.com/domains/decisions/98441.htm
The Panel holds that a domain registrant who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name; a person in the position of Respondent should be more confident than a registrant who selects a previously unregistered name.

There is an element of “finders keepers, losers weepers” in this decision. We believe that is as it should be.

In sum, where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, we believe that ordinarily the trademark holder should be denied relief, whether the mark is a common law or registered mark, whether the mark is “strong” or “weak.”

We certainly recognize that domain name pirates may be lurking like buzzards to pick off “good” names which lapse. But that is true in any area of intellectual property. Failure to renew or extend those property rights, failure to protect marks and copyrights, and the like allow third parties to take advantage of the owner’s lack of diligence.

 

[Dave Zan]

You, on the other hand, seem to be saying you're a full time a-hole, regardless of the situation. Gee, isn't that what gives LAWYERS a bad name? Perhaps you shouldn't be the one lecturing us our percertions in our industry?

Hmmm.

Let me borrow Brett's quote:

Agree. I hope the next time one of my clients loses a domain name it is to one of yours.

My perception is he perceives John's client/s will (hopefully) be sympathetic to
give Brett's client's domain name back should s/he lose it in the manner that's
being discussed here. And if Brett's client is being honest and nice about it.

But that's just my perception. And I can be wrong, of course.

 

[DNQuest.com]

If I read this thread right, if Google or AOL failed to renew their domain, they have no rights to it anymore?

It looks like the answer is no... They do have rights under TM law..... but it was interesting to see how some people actually think about teh situation.

 

[Deleted member 5660]

If I read this thread right, if Google or AOL failed to renew their domain, they have no rights to it anymore?

I think they have the right to sue you with the hopes you will run out of money before you can prove your point.

 

[Creature]

As to so-called generic terms, there is a fundamental misunderstanding in the general public and among some attorneys as to what this word actually means. Generic terms are not trademarkable. Generic, as a legal term of art, refers to words that stand for the very product or service that they are used to sell. For example, I could not ever acquire a trademark in "Computer" brand computers or "Tissue" brand tissues.

Dictionary words, on the other hand, can be used in an arbitrary, suggestive or even descriptive sense as trademarks and can attain a strong scope of protection when used in connection with the designated goods or services. In other words, just because a word is in the dictionary does not mean that it is "generic" or available for any use. "Apple" is an incredibly strong trademark for computers and iPods. That is not to say that there are not many legitimate uses of dictionary words in good faith, non-infringing domains, which there are.

I found the above explanation crystal clear. It's great when something really clicks. Thank you. Creature.

 

[sunroof]

I started this thread, and just wanted to give an update and comment on all the great responses.

First the update: I've had no more contact from the party that previously owned the name, after the second email that offered $100 for the name and made vague references to his legal rights as previous owner of the name. So, the situation is moot from that perspective at this point in time. (Man, I'm starting to sound like an attorney!)

Second, I'm very impressed with the quality of the responses that have been posted. I've learned a lot both from the legal and ethical points of view, and have given more thought to what to do in situations like this. I especially appreciated the legal citations. That kind of information is very helpful to all of us, since it stops a lot of needless speculation about what the law is.

I did recently buy a .com that was a female first name, and the prior owner didn't like it, but told me I was crazy when I offered to sell it to her for $1000. I would be curious to see if anyone has any comment on those types of names.

Thanks again for all the thoughtful responses.

 

[JuniperPark]

So will the USPTO return a TM reg if an applicant fails to maintain the registration, pay the bills, or submit the filings necessary to maintain the TM reg? I guess the question really is whether domain registrations are treated differently than TM registrations?

Now THAT is a great question, folks!

 

[typist]

My sympathy meter is highly dependent on how they approach the domain registrant.

I always give away domains, immediately and without compensation, when asked nicely and presented with a credible story. I do not want to profit from others' misfortune (isn't this what some attorneys do? )

The thing is, I seldom receive polite requests. Most people who want a domain from me seem to believe that bullying attempts will be more successful. Usually they are misguided.

Yesterday, I saw one of the more creative attempts. Someone who wanted a domain I control had apparently succeeded in convincing a ccTLD registry (!) that contact information - address, company and personal name as registered were all fictional. The registry sent the following email:

>According to the current entry in our database, the following contact
> details are registered with us for your account XX:
>
> Company/organization: ...
> Title: ...
> ...
> Our investigations have shown that no person or company exists at the
> address you have given. If the holder's identity cannot be established
> without a major outlay, we are entitled to revoke the domain name in
> question ([reference to regulations]).
>
> We would ask you to send us proof of your identity within 5 days (to
> arrive at [...] within 5 days), i.e. to inform us which person
> or legal entity is behind the contact details and to prove this by means
> of a certificate of domicile or an extract from the companies' register.
>
> If we do not receive proof of the identity from you within the set
> deadline, we will delete all domain names associated to the account.
>[...]
> With kind regards,
>
> [ccTLD] - Legal Services

Whoever wanted this domain had never contacted the registrant, whose contact information is correct and up to date, and included both landline and mobile phone numbers. Regular mail letters from the registry in question (related to payment) have always arrived.

The registry claims to have conducted "investigations". I have reason to believe this claim is very far from the truth; after sending scanned company registration documents and offering to courier hardcopies notarized by the embassy of the country in question, I also asked for more details and/or proof of these "investigations". So far it seems the "investigations" consisted of a phone call or letter to this registry by a third party.

My point with this lengthy story was simply that quite a few will resort to more or less creative deception and outright lies when trying to grab domains they think they deserve.

Why don't they just ask nicely.

 

[Creature]

Why don't they just ask nicely.

Perhaps because most humans are apparently more motivated by fear and greed rather than polite charitable requests.

 

[Dave Zan]

I did recently buy a .com that was a female first name, and the prior owner didn't like it, but told me I was crazy when I offered to sell it to her for $1000.

You see it as high value while she doesn't. That's just a matter of perception.

But expect the worst, especially when unreasonable people make life difficult.