| 3:52 pm on Mar 6, 2004 (gmt 0)|
not that simple. How unique is that name, when did he register the domain name (in relation to your trademark) and is he competing with you? Example: Jets.com doesn't belong to the Jets.
| 7:47 pm on Mar 6, 2004 (gmt 0)|
Directly selling the products, no.
They are just displaying ads for the same industry products for the ppc money.
It would be similar to a site called microsofts.com serving ads for computer software of all types.
The name is absolutely unique to this client as it is a unique spelling. A uspto.gov search turns up that the client actually has the plural name trademarked and not the singular!
| 8:08 pm on Mar 6, 2004 (gmt 0)|
Really, there is no set and fast rule on this.Its all dependent on so many issues and circumstances that only a court can decide.Your only quick chance is to bluff him with a cease and desist letter and threaten with civil action.
All trademark companies are well advised to buy all the variables for their domain name including the ones with the suffix "sucks"
| 8:36 pm on Mar 6, 2004 (gmt 0)|
|A uspto.gov search turns up that the client actually has the plural name trademarked and not the singular. |
Well, first, trademark the singular. For yourself. Then inform client. ;-)
Seriously, get in touch with ICANN. You might find this helpful:
| 8:43 pm on Mar 6, 2004 (gmt 0)|
Not sure if this can help:
Icann seems like a good route, too.
| 10:21 pm on Mar 6, 2004 (gmt 0)|
Jon King ...
I am in the domain aspect of this business and can tell you that your have little recourse unless the name is unique AND you can show the other parties registration was in bad faith .
..simply because your client owns "a" trademark for the same name ...even if it's identical means very little unless the name is "well know" unles the name is "unique" and unless the name is being used in bad faith (is the other company selling the same product? have they attempted to sell your client the name?) .. these are things that a UDRP panel wil look at..
There can literally be hundreds of trademarks for the exact same name.. hundreds.. and each has a right to protect their name and image under each respective trademark..
To say your clinet has a trademark therefore we want to close down the plural domain ..simply has no merit UNLESS the name is infringing on your clients trademark ..
Here are the exact requirements your client will have to prove..not just one but all 3 ..
A trademark owner can initiate an administrative hearing process where the trademark owner alleges that a domain-name:
(i) is identical or confusingly similar to a trademark or service mark in which the complainant has rights; AND
(ii) the domain-name owner has no rights or legitimate interests in respect of the domain name; AND
(iii) the domain name has been registered and is being used in bad faith.
It will cost your client a few thosand to proceed.
It may seem unfair from your perspective but in reality it protects both sides. .. there are hundrds of legitimate reasons for the person to own the name.. even if it's just because he wants it..
As long as he isnt infringing on your trademark or anyone elses and isnt trying to sell you the name (that would show he registered it in bad faith )
| 4:02 am on Mar 8, 2004 (gmt 0)|
If the name is a unique spelling, he has a federally registered tradeamrk, and the site using the plural domain is serving up ads of competing business it sounds to me like a very strong case that you could win a UDRP dispute.
Same or confusingly similar to your trademark, definitely yes.
No legal rights? They'd have to prove they had rights. If it's as unique as we are led to believe then the answer almost certainly no.
Bad faith? Same thing. If it's a unique name with nonstandard spelling it's all but certain they got it specifically to catch misdirected traffic and try to profit off of it.
Your first step is to write to them (or have a lawyer do so) explaining you tradeamrk, how it applies to the exact use they use it for, and demand that they Cease and Desist or that you will take appropriate actions.
They can write back. They may try to supply a reasonable right for them to have it. You'd have to weigh it to see if it had any chance of prevailing in a dispute.
At that point they either give it up, you reimburse them a small amount of money for it, you argue some more, or you pay the thousands for UDRP (plus he effort probably by a trained lawyer to write the complaint).
Sometimes names registered in the Bahamas are really people who know that what they are doing is against U.S. law and try to distance themselves. But then it's also against ICANN domain name registration agreements.
If you want to sticky mail me the name I can give my non-lawyerly opinion on the specific name and circumstances.
| 5:37 am on Mar 8, 2004 (gmt 0)|
I recommend you do a search first in Google and then in the UDRP database for them. There's a Bahamas outfit with the same MO -- buys up domain names and displays ads on the sites until they can sell the domains to others. If these are the same guys, you'll find ICANN complaints against them. The complaintants lost their cases mainly because they could not prove points 2 and 3 cited above. If they had done some research, they would have discovered their opponents are cybersquatters peddling domain names.
I don't know if this is the same one, but I recommend you research them on the net because if they are peddling domains I think you can win points 2 and 3.
| 5:40 pm on Mar 10, 2004 (gmt 0)|
Jon stickied me the names in question, and BlueSky is on the money. The guy is a notorious cybersquatter and spammer with bad faith up the wazoo. Without much effort I found a list of more than 70 domains he lost via UDRP action. I wouldn't be surprised if there are lots more.
I sent Jon a reply (It's not in my Sent items box, but I'm new to Sticky mail so don't know if that's normal. If you don't get it, Jon, let me know and I can email it) that will hopefully help.
| 6:17 pm on Mar 10, 2004 (gmt 0)|
I've been researching this issue as well...a good friend of mine owns a brick & mortar business here in town, and she also sells over her website - anytownwidget.com. She also owns the trademark for 'anytown widget'. A competitor has registered 'anytownwidgets.com' and redirects it to their web site. Obvious trademark infringement. The WIPO regulations on this are pretty straight forward, if the domain name was registered in bad faith, if the domain name was registered to detract business from the mark owner or provide business to the domain name owner, then the mark owner almost always wins transfer of the domain name. To have WIPO arbitrate your case with one arbitor the cost to file is $1500.00. You can also elect to have 3 arbitors, the cost is more.
| 11:05 pm on Mar 18, 2004 (gmt 0)|
$1500 for UDRP .. thats just for starters ..
You need an experienced TM and domain name attorney to prepare and present your case for you ..
If you win .. UDRP does not have the power to award costs ..
The guy in the Caribbean might in all likelyhood accept an amount of money that would be equal to your costs ..
They wont reply to your emails if you ask .. 'do you want to sell this name and how much do you want for it' ..
Stipulate the price you are willing to pay in the email subject ..
On the other hand they may not defend an action under UDRP at all and you may win by default .. that still costs no matter what way you look at it.