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

[typist]

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

Maybe many humans are motivated by fear, but what I've seen so far isn't too scary. It's interesting to observe how many of those who contact me obviously have made up some kind of weird story.

The corporate lawyer who claimed a parking page was a phishing scam and this ccTLD registry which claims to have conducted an investigation proving that I do not exist are both somwhere at the top of my list of mediocre fiction writers.

 

[Dave Zan]

I guess the question really is whether domain registrations are treated differently than TM registrations?

In what sense? Specifics please.

 

[DNQuest.com]

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

Interesting.. so you are saying that Google and AOL are generic?????

 

[Deleted member 5660]

Interesting.. so you are saying that Google and AOL are generic?????

No, if they let their domains lapse they may no longer have rights to it even if they had a TM because they didn't maintain the domain. The whole issue is not realistic because the domains are disabled for a couple of months before getting released.

 

[jberryhill]

I do not want to profit from others' misfortune (isn't this what some attorneys do? )

And medical doctors. Let's not forget them.

Hey, if I got ONE, just ONE, call a day from someone saying, "Hi John, I just called to say that everything is going fine, I have no problems, and I'd like to send you some money" then I'd probably look at it differently.

Paypal gladly accepted, so that I can profit from your good fortune.

Operators are standing by to take your call...

 

[petrosc]

And medical doctors. Let's not forget them.

Hey, if I got ONE, just ONE, call a day from someone saying, "Hi John, I just called to say that everything is going fine, I have no problems, and I'd like to send you some money" then I'd probably look at it differently.

Paypal gladly accepted, so that I can profit from your good fortune.

Operators are standing by to take your call...

This reminds me of a story my father told me before I went abroad to study medicine:
Once upon a time, the captain's boat was not starting for some peculiar reason, even though he made all the routine checks and fried his brain all day long to find out what could have gone wrong. After spending several hours of trying to figure out the problem on his own, he decided to call an expert to come and take a look at it. The technician came to the boat, went down to the engine room, spent some minutes checking around, and then, with an expression of confidence, he just took the hammer and slightly hit a pipe. Immediately the engine started working again.

The captain was thrilled and with a big grin on his face he thanked the technician and asked for the bill. He quickly lost his smile when the technician asked for $1001. He started complaining and asking for explanations. He could not understand why someone would ask for $1001 dollars for a 10 minute job. But the technician answered: "Sir, i charge $1 for the 10 minutes of work, the rest $1000 I charged them for knowing which pipe to hit".

You are all smart people, you'll understand the moral of this story.

I just want to add one last thing, it bothers me when I hear people talking about how expensive doctors are, and that they paid $30 for a simple visit etc. Many people would hate to sacrifice $30 for their own health, but would gladly spend $50 for their dog to get a haircut and pedicure.

 

[typist]

Paypal gladly accepted, so that I can profit from your good fortune.

10$ sent. Invite someone you like for a beer or coffee.

In case you're curious, the good fortune you'll be profiting from is funded by happy women who have bought our handbags here http://ipa-nima-boutique.com/php/index.php

Selling our handbags is really a win-win situation for good fortune. Lovingly crafted, our customers love to buy them, and I love to sell them. 'tis a good season for good fortune.

Have a nice day!

 

[jberryhill]

10$ sent. Invite someone you like for a beer or coffee.

O M G

:first:

Folks, we have a winner.

Do send me your geographic location. I travel a lot, and you just earned a visit.

 

[typist]

I think ICANN has a cryptic "Asia Pacific" city on its meeting schedule - do let me know if you'll happen to be there.

I spend most of my time in Hanoi, but I'm frequently in Bangkok, and quite often in S'pore and KL. Let me know if you're in the area, or if you ever plan visit to Vietnam. We always have room for guests.

For the sake of cheesesteaks, I always wanted to visit Philadelphia - I'll let you know if that happens (your "Philadelphia Lawyer" tagline has disappeared, btw - you are now an addict instead...).

 

[Brett Lewis]

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.

Correct.

Brett

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?

A trademark registration will ultimately be canceled if the registrant fails to maintain the technical registration requirements (i.e., filing a renewal or affidavit of continued use). That does not mean that someone else can swoop in and start using the mark as their own. So long as the trademark holder continues to use the mark in commerce, they will continue to possess common law trademark rights. A third party could use the mark to sell similar goods or services only if the mark was established to have been abandoned, which generally involves a showing of an intent not to use the mark any longer.

If a domain name owner possesses trademark rights in a domain name, those rights will continue even if the domain name is allowed to lapse. The key then is what was the intent of the person who purchased the lapsed domain name -- did they know that it was trademarked? Is the word so descriptive that legitimate uses may be made?

Brett Lewis
www.lewishand.com

 

[Deleted member 5660]

they will continue to possess common law trademark rights.

OK, so where do these "common law" rights come from? If i understand things correctly, if a certain term is used in commerce in such a way that the term would be eligable for a trademark registration if the owner would register it. This is like a "common law" wife in certain states if you live with someone long enough then they are considered a wife for certian purposes even though no marriage cerimony was ever performed. However, there is a specific law that conveys these rights.

In the case of trademark and the UDRP this "common law" issue is always discussed but i have never seen anyone point to a specific law that conveys these rights. From what I have read these rights are associated with state laws in the US and not any federal law. The decision about JuliaRoberts.com mentions it but they never point out any specific law:

http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0210.html

the name "Julia Roberts" has sufficient secondary association with Complainant that common law trademark rights do exist under United States trademark law.

In this case common law rights are denied:

http://www.arb-forum.com/domains/decisions/96271.htm

but there is no clear doiscussion of where these rights come from and what it takes to acquire those rights.

 

[Brett Lewis]

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.

Every situation is unique, but, in the case of lapsed domains, trying to work something out makes the most sense. There are too many threats all around.

Back before redemption grace period was implemented, and to a lesser extent, after, I used to buy back domains all the time that had lapsed and many demands were reasonable. Lately, with auctioned domains, I have had less success, especially with certain larger players.

B.E.L., Esq.
www.lewishand.com

OK, so where do these "common law" rights come from?

"Common law" simply refers to court made law. The phrase is derived from the English system of law dating back centuries. The Lanham Act, which governs federal trademark rights, is statutory. If you read court cases on trademark issues, you will find the basis of common law trademark rights. Basically, common law rights accrue when a trademark is used as an identifier of source in connection with the sale of goods or services in commerce. The more distinctive the trademark and the more widespread its use, the stronger the trademark rights. The main difference between common law and registered trademarks are that registered marks come with certain additional built-in protections, such as a presumption of validity, the potential for treble damages for willful infringement, possible attorney's fees and constructive notice of registration.

B.E.L., Esq.
www.lewishand.com

 

[Deleted member 5660]

If you read court cases on trademark issues, you will find the basis of common law trademark rights.

It just confuses me more. From what I read common law trademark rights are based on court decisions and not actual laws (since legislatures create laws and a court case/tort must be based on some law ... but let's forget that for the moment) and are generally confined to geographic area where the TM is used. I don't see how anyone could have common law rights in a .com domain name unless they did business worldwide. The most any business should get from common law rights is the right to use the name in a geographic area (see www.scrabble.com for example). It seems to me that the UDRP has elevated "common law" trademark rights above what is generally accepted by turning over domain names to businesses confined to a specific geographic location.

 

[Dave Zan]

It just confuses me more. From what I read common law trademark rights are based on court decisions and not actual laws (since legislatures create laws and a court case/tort must be based on some law ... but let's forget that for the moment) and are generally confined to geographic area where the TM is used. I don't see how anyone could have common law rights in a .com domain name unless they did business worldwide. The most any business should get from common law rights is the right to use the name in a geographic area (see www.scrabble.com for example). It seems to me that the UDRP has elevated "common law" trademark rights above what is generally accepted by turning over domain names to businesses confined to a specific geographic location.

This might help:

http://www.wipo.int/amc/en/domains/search/overview/index.html

1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?

Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “ secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.

Relevant decisions:
Uitgeverij Crux v. W. Frederic Isler D2000-0575 , Transfer
Skattedirektoratet v. Eivind Nag D2000-1314 Transfer
Amsec Enterprises, L.C. v. Sharon McCall D2001-0083 , Denied
Australian Trade Commission v. Matthew Reader D2002-0786 , Transfer
Imperial College v. Christophe Dessimoz D2004-0322 among others, Transfer

 

[typist]

Relevant decisions:
Skattedirektoratet v. Eivind Nag D2000-1314 Transfer

This is actually an interesting example on another level. The Norwegian tax authorities generously spent taxpayers' money on a UDRP proceeding, although there was imho absolutely no chance of confusion (Norwegian authorities never use generic domains).

Later they just let the domain drop.

Bureaucrats...

I wonder what the next panel would think. "hey, you didn't care to register this domain in the first place, then you waste government money to acquire it, later you let it drop, now you want it back again - it's yours, we welcome return customers as much as we dislike those evil domain collectors?"

 

[Deleted member 5660]

This might help:

http://www.wipo.int/amc/en/domains/search/overview/index.html

WIPO says: "The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark"

This is true. The problem is with the UDRP that says if you have common law rights then (if the the other criteria are met) the domain gets turned over. So now this common law trademark owner, who only did business in some small geographic area, now gets this .com domain name which is world-wide in scope. This looks like the UDRP expands the rights of the common law trademark owner beyond what would normally happen in a real court.

 

[DNQuest.com]

WIPO says: "The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark"

This is true. The problem is with the UDRP that says if you have common law rights then (if the the other criteria are met) the domain gets turned over. So now this common law trademark owner, who only did business in some small geographic area, now gets this .com domain name which is world-wide in scope. This looks like the UDRP expands the rights of the common law trademark owner beyond what would normally happen in a real court.

WIPO does no such thing. All WIPO cares about is if you have "rights" to a name the other other party does not (or vice versa). WIPO using guidelines and not black/white laws. That is why each case is based on its own merits and presentations. Teh panel injects their own opinion into each decision (that is why you see some really bad decisions)

If you owned a small business, and put your time and effort into it, you are afforded rights to be proteced. I own a couple businesses, and heck yeah I want to be protected, even though I am small scale. If you ever owned a business, you would appreciate this more.

 

[Deleted member 5660]

WIPO does no such thing. All WIPO cares about is if you have "rights" to a name the other other party does not (or vice versa). WIPO using guidelines and not black/white laws. That is why each case is based on its own merits and presentations. Teh panel injects their own opinion into each decision (that is why you see some really bad decisions)

If you owned a small business, and put your time and effort into it, you are afforded rights to be proteced. I own a couple businesses, and heck yeah I want to be protected, even though I am small scale. If you ever owned a business, you would appreciate this more.

Right. WIPO didn't develop the policy they just implement it. It was ICANN who developed the policy. It is not an issue of whether businesses should be protected. The issue I brought up is that ICANN is esentially implemeting a "law" giving certainain TM holders rights that they do not have under the real law. I think you are agreeing with my point on this. Whether there should be more or less protections in real laws to one party or another is another issue.

I have had my business more than 10 years (why do you think I am on this board) and i don't want (A) these major INTA members ripping off parts of my business and (B) I don't want IP lawyers going to small businesses and convincing them to file disputes against me. These disputes are almost always 2 different businesses fighting over an asset so it is not really about protecting businesses, it is about which business gets what.