Got an ICANN complaint on TM'd name, what to do?

[insomnia]

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[Domagon]

Wow, from what I can find / see, it could be a heck of a fight...

* g-unit trademark first use, and even its TM registration, appear to be before the date you acquired the domain.

* In addition, the website you have on there features rappers, including 50 cent, and appears to offer music for sale; visitors could easily assume that the website was somehow connected with 50 cent.

This looks like an easy win for them ... you may want to settle with them now, without admitting any wrongdoing of course, and transfer the domain name to them free of charge...

If you do plan to battle it out, then definitely contact an experienced attorney, and also consider contacting some folks here who are experienced with TM related domains - they may have some suggestions on how to fight ... but from what I see, it won't be easy.

Ron

 

[sevent]

I think you could argue that g-unit is generic if you dig up use of it by other people. Meanwhile you should probably take down all mention of 50-cent from your website. Try to find another use for the name that is related to some other type of "G-unit".

 

[SouthernTn]

In my opinion, why not try to negotiate. It would be hard to say its meant as something else, when the G-Unit group has sold over 15 - 20 Million copies of their albums in the past years.. His book was rated as a top seller, selling millions, and his movie also sold millions..

Besides music, its popular in the clothing industry also and is a very popular name at the moment.

Its really hard to say, but I think it'll be hard to fight.

 

[Focus]

dude, you have to first* stop posting publicly in forums about this as it can and will be used as evidence later if this goes to court...you have an assett that they basically have to have, you have to have someone contact him directly and offer it for a "convenience fee" it's much more appealing for them to have the domain next week than in 3 months or 6 months, considering that you do use it basically for the same reason they would is clear and justifiable cause to take it away, you can stall it for a long time thru legal proeceedings but in the end they eventually almost have to win on this one..unfortunately if it does goto court you very well may be responsible for the repayment of what are considered punitive damages and also possible severe civil fines imposed by the TM infringment and use for profits, basically all earnings and revenue records can be had thru a court order and used against you if they want to get ugly with it..not good man

 

[Domagon]

According to ICANN's UDRP page, there is no proceeding regarding g-unit.com ... I assume it's simply because it's not updated yet?...

Perhaps the domain name status hasn't updated either yet - it appears the domain is not on registrar-hold; it could be on registry-hold or registry-lock though? ... an easy way to determine for sure is try modifying the name servers - if they can't be changed, then it's registry locked.

Anyways, assuming it's not registry-locked, you may still be able to delete it right now. Doing so will likely save you much grief and hassle - also less likely to be used against you later, if you proactively delete it prior to a formal UDRP proceeding.

My layman thoughts to some comments in this thread, based on my experiences...

The suggestion of changing the page, etc is mute - it won't help.

Asking for money above the price of the average registration fee is risky ...

Though, in some disputes, asking for upto around $1500 works (is around the price of filing a UDRP action), but can backfire badly in some situations - the complainant may choose to forego UDRP and go the lawsuit route instead, or do both; seek financial damages as mocus has already pointed out.

Ron

 

[Focus]

yes, please tell me if you delete it....
:standing by with finger on register button and whois privacy:

would it be possible for him to sell it or "give it" to someone (a completely new owner) and that new owner not use it for a TM infringing purpose?

any so called "loop holes" ...like www.foogle.com amazing the dude still has it

 

[VisualDigits]

Just give it to them. G-Unit is BIG. I can see they shut down g-unitworld.com I guess you're next.

 

[SouthernTn]

After All this time.. I thought they would have went after it when they first hit the scene.. Althought g-unitforum.com is disabled.. gunitworld.com is still going

 

[DNQuest.com]

Ok, dealing with the facts here....

You claim it as a fansite. Means you acknowledge the artist and his status.
effect - You can't fight the TM
- you can't claim any other usage (ID- inventing a new reason to use the domain)

You acknowledge the revenue is worth fighting for
effect - You are making money off a known TM (fansites should be a labor of love; therefore you should not make any money off of it). Using the excuse to pay hosting has never been a good excuse.

You are in a pickle
DO NOT offer the name for sale
If you tranfer the domain, you are still liable for the registration in the first place. But they may disregard you at that point, but the new owner could ahve a beef if you did not tell them you were contacted.
Try to plead your case as a fan, if they make you an offer, state you have no interest in selling because of the work you put into it. If they offer something decent, take it and run.

Rigth now, he can prove bad faith registration.

You knew of the TM (obviously)
You are making money off of it.

Just hope they offer something decent, don't take a hardline stance against them. Be cordial and nin-combative.

 

[Domain_Taster]

Tough place to be ... you've effectively made their own case for them by using their trademark on your site.

 

[insomnia]

I've got 20 days to respond the the complaint, so does anyone know any good domain lawyers willing to take this case?

Thanks

 

[Domagon]

You've been registered here for over 3 years ... surely you've run across a few attorneys who frequent this forum :cheeky:

Anyways, contact John Berryhill if you've not already.

On an aside, it appears the domain name status hasn't changed at all ... I'm curious if you can still update the name servers?

I'm under the assumption that disputed domains are registry locked (registry-hold), but I don't see that indicated ... was expecting to see two status entries for g-unit.com similar to that shown for COM:

Domain Name: COM
Registrar: INTERNET ASSIGNED NUMBERS AUTHORITY (2)
Whois Server: whois.iana.org
Referral URL: http://www.iana.org
Name Server: A.GTLD-SERVERS.NET
... snipped out other ns data...
Status: REGISTRY-LOCK
Status: REGISTRAR-LOCK
Updated Date: 05-nov-2001
Creation Date: 01-jan-1985
Expiration Date: 31-dec-2099

Ron

 

[insomnia]

ack, still haven't found any domain lawyers to talk to yet (contacted berryhill, no reply). Any more reputable ones to consult? Thanks

 

[labrocca]

You gonna lose this one..your best bet is to negotiate a reasonable transfer fee to get the domain to them in their hands. It can cost then $3k-$10k to get it from you in a fight. Keep that in mind. I agree with DNQ...any fight on this and you can lose not only the domain but damages as well. That means every penny you ever made and also every penny they felt they lost plus legal fees...add that up.

Be cordial and non-combative. Be casual about it. See what their lawyers attitude is about the whole thing.

 

[jberryhilljberryhill is verified member.]

(contacted berryhill, no reply). Any more reputable ones to consult?

You might try reading what you actually received and sent to me, but I'm curious to know what you mean by "more reputable". I get a lot of unsolicited email.

Do you see on the front page where it says "You have no duty to act at this time"?

The 20 day clock hasn't even started yet. What you sent me was the pre-commencement service copy of the complaint. Calm down.

A lot of people are confused about this, so it's worth mentioning that when a UDRP complaint is filed, the Complainant is required to send a copy to the dispute provider (WIPO, NAF, etc.) and to the Respondent. The provider will then contact the registrar for confirmation, review the complaint for formal compliance with the rules, and await payment to clear. THEN the provider will issue a notice of commencement. At WIPO, this can take days to sometimes weeks, before the 20 day response period actually begins.

One might wonder why I'm up at nearly 1 AM, but rest assured, it's on my list of things to look at.

By the way, if anyone hasn't had it yet, this year's flu is dog-nasty. I was on my feet for all of about 45 minutes yesterday, period.

 

[insomnia]

Interesting, thanks for the advice. I have recieved the acknowledgement, so I believe the 20 day clock has already started ticking.

By more reputable I just mean "additionally reputable". Is there any way I can delay this process? Thanks

 

[Togoodhlth]

......By the way, if anyone hasn't had it yet, this year's flu is dog-nasty. I was on my feet for all of about 45 minutes yesterday, period.

I am just getting over it! It went through our family like a scalding knife through butter.
Fortunately, and I hope it is the same in your case, the worst part was over in about two days.
Sustaining myself on cup-o-soup and popsicles was no fun though.

 

[Theo]

Just ask fiddy cent for it. Word!