Got a C&D from NYC

[JMJ]

Well not really a C&D more like a preliminary one. The domain in question is fdny in the .info extension. The City of New York holds a trademark on the name. At first I replied back telling them they could have the name for a couple of reasons one of which being that my grandfather was fire captain. Along with the other obvious reasons. But here's my problem.

For one thing this is an acronym. But I can't seem to grasp the concept of the government in whatever form holding a trademark on a public service. I mean what exactly do they plan to do with this trademark besides bully people like me out of a domain? Public service isn't suppose to be a "for profit" business so they can't sell designer fire hats, or custom fire engines. They aren't facing any competition because quite frankly people aren't lining up to run into burning buildings.

Like I said I'm very willing to turn the domain over but I'm having some real problems with doing so and to be honest I almost feel obligated to challenge this for the good of the domainer.

Your thoughts?

 

[jdk]

Wasn't this name for sale on eBay a while back?

 

[JMJ]

It's been for sale a number of places. It was in a bulk sale I had on ebay but the auction was canceled due to this and another reason.

 

[(_Y_)Man]

I think you should remove the "New York Fire Department" on the header before you try to fight the c&d

 

[Theo]

Exacrly what the A$$man said :-D

 

[JMJ]

LOL thanks for pointing that out. Mine is actually fdny not nyfd.

 

[Focus]

dont they have anything better to do with their time...who the f*** types in .info anyways

...as the palaces burn

 

[labrocca]

Don't give them the name. You are not infringing from what I can tell. Also how did you get the C&D? There is a rash of false C&D's out there that are not from the TM holders.

 

[JMJ]

It's from the city's legal department so it's real. They also informed me present and future discussions were being CC'ed and/or forwarded to the cities trademark attorney if I had any questions regarding their legal right to the name.

 

[jberryhill]

http://arbiter.wipo.int/domains/decisions/html/2001/d2001-1445.html
This dispute concerns the domain name <fdnyandnypd.com>

http://www.arb-forum.com/domains/decisions/145235.htm
The domain name at issue is <fdny.biz>, registered with Register.Com.

http://www.arbforum.com/domains/decisions/210223.htm
The domain names at issue are <fdny.com>, <fdnyfirefighters.com>, <fdnycalendars.com> and <4fdny.com>, registered with Network Solutions, Inc., and the <fdnyfiredepartment.com>, <fdnyfireman.com> and <fdnyfiremen.com>

 

[JMJ]

Thanks John, the comparable one fdny.biz seems to have been lost due to "Respondent is the holder of several domain names that violate the intellectual property rights of famous third parties. Respondent&#8217;s pattern of registering infringing domain names while preventing them from reflecting their marks in a domain name constitutes bad faith pursuant to Policy" and "Respondent&#8217;s violation of the .BIZ Registration Restrictions, by registering the domain name <fdny.biz> for noncommercial purposes, is evidence of bad faith. "

I would pass these with flying colors. In addition this is only one of about 40-50 four letter .info names I have at present.

 

[jazzpetals]

I got one for fdnyc.com, I turned the name over, moreso out of respect for 9/11 and the ny fire dept. than anything else.

 

[JMJ]

I understand where you're coming from jazzpetals and this was my same thought when I received it but I can't seem to get past the fact that a trademark is for exactly that a trade and is defined as

1. A name, symbol, or other device identifying a product, officially registered and legally restricted to the use of the owner or manufacturer.

2. A distinctive characteristic by which a person or thing comes to be known: the shuffle and snicker that became the comedian's trademark.

"A symbol, word, phrase, logo, or combination of these that legally distinguishes one company's product from any others. Any infringement on a trademark is illegal and therefore grounds for the company owning the trademark to sue the infringing party."


If there wasn't a 9-11 would they have ever registered a trademark and even the fact that they did makes me wonder why? What's the purpose? They aren't in the business to make money. They aren't going to lose tax dollars if they don't own a particular domain. They can't earn residuals off the use.

To me it's not about the money. In fact I could care less whether I own the name at all. My problem is a public service utilizing tax dollars to first of all trademark a public service and then spend even more protecting said trademark. It's frivolous spending of tax dollars. What exactly will the tax payers gain by owning this name and what are they going to lose if they don't?

Then you have the fact that this is a "GLOBAL" TLD. There might very well be someone else in this vast world of ours who could put it to better use. In fact they don't even own all TLD's.

 

[jazzpetals]

I believe they were selling clothing and other items with the FDNYC symbol on them at the time, with profits going to the families of the firefighters.

I do agree with you though..it is an acronym after all, and can have many other meanings besides fire department new york.

 

[DNQuest.com]

I think you should remove the "New York Fire Department" on the header before you try to fight the c&d

I think this might be a dead give away of using the domain in bad faith.....

So it does not matter what you do now with the domain (like creating false reasons for the acronym), I am sure they have a screen shot with the above phrase and that clearly shows violation of TM law.

I understand where you're coming from jazzpetals and this was my same thought when I received it but I can't seem to get past the fact that a trademark is for exactly that a trade and is defined as

1. A name, symbol, or other device identifying a product, officially registered and legally restricted to the use of the owner or manufacturer.

2. A distinctive characteristic by which a person or thing comes to be known: the shuffle and snicker that became the comedian's trademark.

"A symbol, word, phrase, logo, or combination of these that legally distinguishes one company's product from any others. Any infringement on a trademark is illegal and therefore grounds for the company owning the trademark to sue the infringing party."


If there wasn't a 9-11 would they have ever registered a trademark and even the fact that they did makes me wonder why? What's the purpose? They aren't in the business to make money. They aren't going to lose tax dollars if they don't own a particular domain. They can't earn residuals off the use.

To me it's not about the money. In fact I could care less whether I own the name at all. My problem is a public service utilizing tax dollars to first of all trademark a public service and then spend even more protecting said trademark. It's frivolous spending of tax dollars. What exactly will the tax payers gain by owning this name and what are they going to lose if they don't?

Then you have the fact that this is a "GLOBAL" TLD. There might very well be someone else in this vast world of ours who could put it to better use. In fact they don't even own all TLD's.

Aren't you being hypocritical here???? You are using a famous TM to try to make money. And they would not be wasting money "frivolously" if they didn't have to defend thier TM by squatters who show no morals at all.

They have a right to protect TM. Whether you like it or not or whether you understand it or not, they have that right.

 

[JMJ]

I think this might be a dead give away of using the domain in bad faith.....

So it does not matter what you do now with the domain (like creating false reasons for the acronym), I am sure they have a screen shot with the above phrase and that clearly shows violation of TM law.



Aren't you being hypocritical here???? You are using a famous TM to try to make money. And they would not be wasting money "frivolously" if they didn't have to defend thier TM by squatters who show no morals at all.

They have a right to protect TM. Whether you like it or not or whether you understand it or not, they have that right.

What he was referring to wasn't my site. My domain is and has been pointed at a generic lander just as it was when the registry had just before I picked it up from the drops. I'm not trying to profit from their trademark. I'm investing my money in generic four letter .infos profiting from their trademark would be me selling whatever it is they have the trademark for but that is still an open debate. If you want to question someones integrity how about a city trademarking a public service for what appears to be a financial gain from a terrorist attack. You apparently don't grasp the concept that this is a public service not a "for profit" company. What exactly am I infringing?

 

[jberryhill]

I believe they were selling clothing and other items with the FDNYC symbol on them at the time, with profits going to the families of the firefighters.

That's correct. And there is a lot of counterfeit FDNY merchandise. People use it to pretend they are FDNY employees.

NYPD has the same problem.

You apparently don't grasp the concept that this is a public service not a "for profit" company.

So what. The YMCA is non-profit too. Does that make the name by which they are known somehow less distinctive or valuable?

I'm investing my money in generic four letter .infos

And FDNY is "generic" for, uh, what exactly?

If you want to question someones integrity how about a city trademarking a public service for what appears to be a financial gain from a terrorist attack.

Then I guess they knew about it almost a year to the day in advance:

Word Mark FDNY

Goods and Services IC 025. US 022 039. G & S: clothing, namely, t-shirts, sweat shirts, hats, caps, baseball caps, jackets, shirts, head wear, warm up suits, and wind resistant jackets, pants and shirts. FIRST USE: 18980101.
Filing Date September 12, 2000
Published for Opposition August 7, 2001
Registration Number 2606740
Registration Date August 13, 2002
Owner (REGISTRANT) NEW YORK CITY FIRE DEPARTMENT GOVERNMENT AGENCY NEW YORK 9 MetroTech Center Brooklyn NEW YORK 11201

If there wasn't a 9-11 would they have ever registered a trademark

Well, duh, it was allowed and published for opposition before 9-11. I guess they were expecting a different sort of opposition.

 

[Fearless]

Conspiracy theorists will have you believe the US government was behind 9/11. So they knew to get those TMs. :suspicious:

 

[JMJ]

If you honestly would like to know I've always been a big .info fan and back when I and a few others were picking up three letter .info's in the masses everyone wondered why we did such a thing then. Sure wish I had all of those I let go for $10 and $15 a pop. Same goes for .org .net .com .biz and .us so on and so on. It wasn't too long ago that people wondered why others held those names and still do. Naturally four letters are next in line.

While others are buying up four letter .com's I've been buying up four letter .info's where all other extensions are taken or where .com .net .org are taken. Regardless of their trademark status. If this were a three letter .com everyone and their brother around here would be on my side what makes an extra letter any different? If they were so concerned with their trademark why is it that they haven't had the name long before now? They appear to have had the trademark as you have pointed out around the time of the .info opening only seems natural they would have solved this problem some time ago. That is unless the just keep letting it expire so they can pick on someone else and feed the IP attorney some more dough.

To me it is a four letter .info where all other extensions are taken. Plain and simple.

 

[labrocca]

I agree namemogul. Did you actually have a FDNY header though ..or was it always at Fabulous?

Also reading the desicions that JBerryhill posted leads me to believe you can win a case to keep the name. However you have to wonder if it's really worth it. You definitely can't win a reverse hijack on this in order to get your legal fees paid.

As for the comments about the NYC Fire Department not being able to make profit on their TM...that's total bull. As a NYC resident I can tell you there are a ton of hats and shirts sold with the logo. Even before 9/11 people bought them. I have a couple official NYPD shirts in my closet. The city needs money too and I see no reason why it's make profit in a commercial venture. I bet the city owns a pile of TM's like "I love NY" and "The Big Apple". They should get income for them.