Legal charges for a TM case?

[maxims]

What if I register a .com domain and its name is someone's US trademark. What would the legal charges be for them to take the domain from me? I mean how much cash they would have to spend for all the necessary procedures?

TIA
maxims

 

[HOWARD]

A UDRP case usually costs about $1,500 plus attorneys fees.

 

[Mizzoula]

So, if the recipient of the C&D letter were to offer the domain to the pursuant for, say, $500, would they still be inclined to press the case or would they pay for the domain instead of forking out $1,500? Or, perhaps, they would just continue with their case...

 

[maxims]

Originally posted by HOWARD
A UDRP case usually costs about $1,500 plus attorneys fees.

Thanks, HOWARD.

maxims

 

[jberryhill]

"So, if the recipient of the C&D letter were to offer the domain to the pursuant for, say, $500, would they still be inclined to press the case or would they pay for the domain instead of forking out $1,500? "

There is NO way to predict what they may be willing to do. Sometimes people are influenced by an analysis of the strength of their claim, and by the prospect that their claim will be contested. Sometimes, quite often, it is a matter of principle (translation: "ego") for them, and they would rather pay their attorney several thousand dollars, than several hundred to you. The theory is that if they pay you, then it becomes like feeding seagulls - if you feed one, then before you know it, you've got a flock of hungry ones following you around.

Additionally, if they file a UDRP, that is the GOOD news, since all they can win is the domain name. The bad news is that the filing cost for a lawsuit is much, much lower. I am surprised that people don't file lawsuits more often than they do, frankly. If they file in a remote jurisdiction from you, then the cost of responding is prohibitive, and they can ask the judge to award up to $100K in damages, even if there are no actually provable damages.

If you believe there is no basis for jurisdiction in that court, you might opt to sit it out and then challenge enforcement in your jurisdiction. That is generally an extremely stupid and chancy thing to do, and you will very likely end up living with a judgment over your head, which will make it virtually impossible for you to qualify for things like a future mortgage, car loan, etc.

There are lawyers who will tell you things like, "Oh, they'd rather settle than bear the expense of a suit." Suuuure they will. Not if THEIR lawyer has told them there is a $100K pot at the end of the rainbow, and definitely not if they have made it into a personal vendetta.

"I mean how much cash they would have to spend for all the necessary procedures?"

I filed a federal suit for a client last month. Total cost - a couple of hundred dollars. Now, I filed that case in Maryland, and the defendant is in Los Angeles. What end of that stick would you like to be on?

 

[HOWARD]

John makes a very good point. If you are sticking just to UDRP actions, the most that the complainant can get is the domain.

However, it IS cheaper, at least initially, for the complainant to file a law suit, either under the ACPA in the US, or in other jurisdictions, and make the Respondent domain registrant defend in court. This can cost a defendant thousands of $$ and makes it much more desireable to simply give up the domain.

The catch is, that if the respondent wants to fight the big bad complainant, it can end up costing the complainant thousands of $$ as well. On the other hand, the complainant CAN get substantial monetary damages, while the respondent can only hope to keep the domain (though there IS a provision in the Lanham Act for attorneys fees under certain circumstances).

 

[cluelessdomainer]

John and Howard, can either of you give an example of such a lawsuit and what domain it was and the result? thanks for your great posts too.

 

[jberryhill]

The standards for granting a motion for change of venue are not easily met. The plaintiff's choice of forum is entitled to a lot of weight.

There have been many, many suits over domain names and trademarks, cluelessdomainer. I'm sure you can find quite a few by spending a few seconds with google.

 

[cluelessdomainer]

thanks, you provide a great service here.

 

[jberryhill]

You might also check out Ellen Rony's list at:

http://www.domainhandbook.com/dd.html

 

[cluelessdomainer]

thanks again, this is great.

 

[HOWARD]

Don't forget that the UDRP provides that if you lose a domain in anarbitration action, you can file a suit against the complainant in your home court to recover the domain provided that you do it within 10 days of the rendering of the decision. That way, the venue is always in your backyard.

 

[cluelessdomainer]

yeah, that is good, but the UDRP is fatally flawed if you win your arbitration against a plaintiff because there is NO way to recover your legal costs at your home court. Correct?

They need to fix that!

 

[David G]

Originally posted by HOWARD Don't forget that the UDRP provides that if you lose a domain in anarbitration action, you can file a suit against the complainant in your home court to recover the domain provided that you do it within 10 days of the rendering of the decision. That way, the venue is always in your backyard.

Very interesting, I had no idea that could be done. I bet most defendants are not aware of that. Why such a short 10 day time period?

What court should be used, can it be done in a local court or federal court? What are the estimated chances of prevailing in court? Can it be done pro-se?

If you or another of the attorney experts here are hired to handle it will you have to travel to my location out of state (at high cost no doubt), or can it be done thru the mail, etc., including the filing. Thanks!

 

[HOWARD]

The time period was set up by ICANN when the UDRP was instituted. It's kind of like an appeal process, but the backyard court does not have to take into consideration the opinion of the WIPO or NAF panel.

In the U.S., Federal courts have jurisdiction under the ACPA and the applicable U.S. Codes. The chances of prevailing are determined by a lot of factors, not the least of which is whether the domain registrant registered and is using the domain in "good faith". Unfortunately for you, but fortunately for me, John, Ari and Steve, you must have an attorney to file in Federal Court.

Sometimes it WILL require travel by the attorney that you hire if it goes to substantive hearings. Other times, some courts allow hearing by phone or local co-counsel can appear on procedural issues.

The bottom line is that it can be very expensive to litigate in Federal Court, so the domain has to be one that it is worth going to court over.

 

[Ari Goldberger]

I agree with John and Howard on the fact that it is less expensive, in theory, for a trademark owner to file a case in Federal Court. However, many firms still go the UDRP route. Why?
I think the answer is that the UDRP proceedings are far more predictable and quicker. Unless the trademark owner sues under the "In Rem" provision of the ACCPA, it will have to get service on the Complainant which might be difficult, and there could be change of venue issues and other defense motion practice. So it is easier for a firm to predict the time schedule and costs of a UDRP action. Plus, if they lose the UDRP action, they always can get a second bite at the apple in court.

 

[DryHeat]

Originally posted by jberryhill

Additionally, if they file a UDRP, that is the GOOD news, since all they can win is the domain name. The bad news is that the filing cost for a lawsuit is much, much lower. If they file in a remote jurisdiction from you, then the cost of responding is prohibitive, and they can ask the judge to award up to $100K in damages, even if there are no actually provable damages.

My question: How about a suite re. a domain which is not a very well known/famous TM and that was either not used at all or used in a manner as to not affect the TM holder's area of business at all (used in a totally unrelated manner). Can the damages still be claimed; especially in the former situation where the domain was never used?

 

[HOWARD]

Damages can be claimed, but they still have to show bad faith on the part of the registrant. Unfortunately, there are a lot of Federal Court judges who believe that anyone who has a domain confusingly similar to a trademark, is a cybersquatter and the complainant does not have to prove damages but will get statutory damages of $10,000 to $100,000 per "offending" domain from a sympathetic judge.