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  1. #1

    Domain registered 4/18/02, Service Mark filed 5/24/02???

    Ok,
    I registered a domain on April 18, 2002 and a Service Mark was filed on May 24, 2002 by someone else. Now that guy is threating to sue me if I dont hand over the domain. I've already received a letter from his attorney. I mean come on, does he have any sort of case if he filed for the SM after I registered the domain? He can't find me using it in bad faith because I owned it before he had the SM filed, and the SM hasn't even been approved yet.

  2. #2
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    Re: Domain registered 4/18/02, Service Mark filed 5/24/02???

    The real key would be who can prove themselves to have first established prior use, not necessarily who formally registered first -- so yes, he might have a case. Really it depends on the specifics of the case. It's also important to consider that possession of a trademark doesn't necessarily bring with it rights to every variant of it in a domain name.

    If it's a name you want to keep, you should probably talk to your own attorney; one who is experienced in trademarks, and preferably also in internet-related implications of them.
    Specializing in SEO and PPC management.

  3. #3
    I say he's bluffing. If a SM was filed after the domain name was registered I don't think he has a leg to stand on.

  4. #4
    You might want to do some searching and reading here

    http://www.udrplaw.net/

    -t
    myOstrich Internet - OpenSRS Domain Names & Digital Certificates
    http://www.myostrich.net

  5. #5
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    of course there are many factors to be considered,

    but registering a trademark after you have registered a domain name, would not carry much weight, if at all.

    If this is the sole basis for their case, then they have a weak case. Some people will use fancy lawyers in an attempt to scare you. Research all the facts and dont be bullied or intimidated by lawyers, in most cases the lawyers know they have a very weak case, but just lie and pretend as if their case is strong.

    It is easy to say consult an attorney, but they cost a lot of money.
    Use that option as a last resort, perhaps at the point they actually file a case against you.

  6. #6
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    Did the lawyer's letter state a reason that it expected you to hand over the domain name?

    Kind of reminds me of the millertime.com case. If I'm correct, millertime was not trademarked until well after someone bought the domain millertime.com and yet the beer company seems to be pulling all legal stops on getting the domain name. It seems that some people expect that when all is said and done the company will get the name in the end.

  7. #7
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    Re: Domain registered 4/18/02, Service Mark filed 5/24/02???

    Originally posted by flitcher
    Ok,
    I registered a domain on April 18, 2002 and a Service Mark was filed on May 24, 2002 by someone else. Now that guy is threating to sue me if I dont hand over the domain. I've already received a letter from his attorney. I mean come on, does he have any sort of case if he filed for the SM after I registered the domain? He can't find me using it in bad faith because I owned it before he had the SM filed, and the SM hasn't even been approved yet.
    Let's go down a checklist:
    • Did you know about the other person's mark or business name before you registered the domain? The mark did not necessarily have to be registered.
    • Do you have a legitimate use for the name, or are you holding it for sale?
    • Is the name fairly unique (like "EXXON") or more generic (like "TAXICAB")

    Who filed what when is important, but it's not the only thing. On the one hand, even having a trademark doesn't guarantee you rights to a name, if the first registrant has a legitimate good-faith claim to it. OTOH, if it can be shown you don't have a legitimate use for a name, but registered it to deny it to someone with a legitimate use, it might be taken away, even with a trademark.

  8. #8
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    You most likely can keep possesion of the domain, the main thing is, are you offering services that are alike, the Domain Dispute Policy only gives people the domain if they own the trade/servicemark AND the person using the domain is using it for the same type of thing..
    But if its like www.goodtimes.com, and hes good times magazine and your good times web hosting, You win.

  9. #9
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    Was it registered then or filed? Once filed, it takes nearly a year for it to be processed and approved. If it's already approved, I think you lose. If it's just been filed, it will be published for opposition. Perhaps you can dispute it then. BTW, there's no infringement if it is used for trade in an unrelated way.

  10. #10
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    A lot hinges on "what flitcher knew and when he knew it," if you know what I mean.

    If he innocently said "that's a good domain name" and registered it with the intent of developing it for his own use, and this other company waited until they filed their trademark application to register their domain name, only to find it already gone (it's happened), then he could very well prevail, though it might well go to arbitration. The company with the trademark application could be attempting "reverse domain hijacking."

    OTOH, if he got wind of this company's trademark (it doesn't have to be registered to be a common-law trademark) and took the name because he could trade off it in some way or even sell it to the company, he's in much worse shape.

    One thing I think he should not do is make any suggestion that he is willing to sell it to the company. That could be taken as an indication that he registered the name in bad faith.

  11. #11
    Hi,
    Ok, let me clear a few things up.
    - I registered the domain before the service mark was FILED.
    - I did NOT know a service mark was TO BE filed.
    - Service mark was filed a month after I registered the domain.
    - The domain is generic in a way.
    - The individual who wants it is a cyber-journalist whos last name is the domain name. He currently has a domain name that is his full name.
    - I believe he wants a shorter domain which is why he is trying to do a "reverse hijacking".
    - The SM has only been FILED, NOT registered yet.
    - My intentions at first were of good faith, however, I realized I simply did not have the resources to do what I wanted with the domain.
    - And finally, I'm only 18 years of age and even though I am a legal adult I have reason to believe if I just let this guy and his attorney know of my age they may drop the case.

    Is it possible for someone to SM their full name and their last name? I did a search at USPTO.GOV and found out he filed for both on 5/24.

  12. #12
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    You can:

    1. hand it over and be done with it
    2. get an attorney and let him handle the correspondence

    Whatever you decide to do, don't communicate any further with the guy, anything you email him with can be used in the case against you.

  13. #13
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    "Doctrine of First Commercial Use" is the key

    Originally posted by timechange You can: 1. hand it over and be done with it 2. get an attorney and let him handle the correspondence. Whatever you decide to do, don't communicate any further with the guy, anything you email him with can be used in the case against you.
    The most important aspect of this case is the so called "Doctrine of First Commercial Use"

    Whoever used the name commercially first will likely win a WIPO Complaint. That is by far the #1 factor in these disputes.

    Simply registering the domain is not commercial use. However, having a website and sending to the SE's and also offering a product or service is commercial usage.

    However it needs to be documented, preferable by a 3rd party. A private servicemark cetificate will do just that, in lieu of a costly, questionable issuance and time consuming govt trademark - servicemark.

    P.S. Good to see ya here Timechange!

  14. #14
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    Re: "Doctrine of First Commercial Use" is the key

    Originally posted by RealNames




    P.S. Good to see ya here Timechange!

    It's nice here.

  15. #15
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    Originally posted by flitcher
    - The individual who wants it is a cyber-journalist whos last name is the domain name. He currently has a domain name that is his full name.
    - I believe he wants a shorter domain which is why he is trying to do a "reverse hijacking".
    [ ...]
    Is it possible for someone to SM their full name and their last name? I did a search at USPTO.GOV and found out he filed for both on 5/24.
    Disclaimer: IANAL, but have some layman's experience in IP issues.

    Since the name is his natural surname, the question arises as to why you chose to register that name and what legitimate use you intended to put it to.

    A trademark or service mark does not have to be registered to be valid. In fact, it is ordinary for a mark to be established in commerce BEFORE filing a registration, unless the registration is filed as "Intent to Use." When you see a TM or SM on a logo that is an UNREGISTERED claim of protection whcih might or might not hold up. Only when you see the circle-R ® is it a registered trademark.

    If this gent has been using his name as a service mark (as in a cyber-column) and all you've done is registered the name, I'd say you're not in the best of shape.

    I'm not saying you should fold, but you maybe should assess your position and see if you want to fight.

    And yes, more than one form of a name can be trademarked if it's used both ways in commerce, as in "Coke" and "Coca-Cola," each of which are registered trademarks.

    Hope this helps.

  16. #16
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    There is a past case where Newton.com was registered by a guy by that last name and yet it was awarded to Apple.

  17. #17
    Ok
    Well, his last name is not something common like Smith. And, I registered the domain because I am a fan of an author who is no longer living.

  18. #18
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    Maybe the guy is his grandson?

  19. #19
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    You might want to do some reseatch. Section 1211 of the Trademark Manual of Examining Procedure (TMEP), available at:

    http://www.uspto.gov/web/offices/tac/tmep/pdf/1200.pdf

    seems to indicate that the USPTO frowns on trademarking a surname unless it has been firmly established as a brand apart from the name itself.

    But that deals with the likelihood of getting a registration, not how WIPO would view it as a domain dispute. WHy don't you look at how some of the cases have turned our at:

    http://www.icann.org/udrp/proceedings-list-name.htm

  20. #20
    Thats what I thought, because I did a search for world-wide famous names like Madonna and even some journalists/authors and I came up with nothing. And from what I know this guy's name is not firmly established. My personal opinion is he just wants to have a short domain because he feels it will help him, and to do that he is trying to scare me into giving it up. But I don't want to do that, I would like to keep it and use it for myself but I'm afraid doing that would require going to court, and I simply cannot afford such a thing.

  21. #21
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    How short is the domain?

  22. #22
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    I don't know that you have to physically show up anyway in a domain name arbitration, but you would have to file a detailed response.

    Why don't you read some stuff at this site:

    http://www.mydomaindispute.com/

  23. #23
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    Thumbs up

    Originally posted by rapidtransit
    I don't know that you have to physically show up anyway in a domain name arbitration, but you would have to file a detailed response.

    Why don't you read some stuff at this site:

    http://www.mydomaindispute.com/
    Great source!

  24. #24
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    If you coudlnt do what you registerd the domain for, is it still use to you, if its not, by no means hold on to it just becuase, he has a legit use for it might aswell give him it or offer to sell it to him...

    but aside from that, you would probably win in a legal case

  25. #25
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    Originally posted by flitcher

    - And finally, I'm only 18 years of age and even though I am a legal adult I have reason to believe if I just let this guy and his attorney know of my age they may drop the case.

    No they won't, they'll steamroll you.

    Lots of good advice in this thread, but remember that none of it can substitute for advice from an attorney. At the very least, I'd consult with one - the cost for an initial consultation should be minimal.

    -Bob

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