Are you suggesting that registration is a requirement for an action under 15 USC 1125(d), and/or that the discretionary $100k damages under 15 USC 1117(d) would not be available in such an action? Neither of those statutes require registration, so I’m curious to know how you believe they do. (In the final judgment of the somewhat tortured Jysk v. Dutta-Roy litigation, statutory damages were awarded on an ACPA claim premised on a common law mark)
ACPA suits are not infringement actions.
Additionally, Avtar’s primary issue here seems to be “street address” domains in US municipalities into which he is intentionally directing solicitations. We don’t know where Avtar resides or does business, but if the “local area” in question is, say, New York City, then the SDNY is as good a court as any.
I mentioned this before but no one replied to it. or maybe they did but I missed it.
What if the address in question have exact matches in pretty much every other state in the USA?
does this apply then?
https://www.nolo.com/legal-encyclopedia/what-good-unregistered-trademark.html
"An unregistered trademark is a mark that has not been registered at the
U.S. Patent and Trademark Office (or at any of the
state trademark offices). Owners of unregistered trademarks nevertheless have legal rights within the geographic areas in which they operate. These are sometimes referred to as "common law" trademarks, as they are protected by state-based laws concerning unfair competition.
An unregistered mark can sometimes stop a subsequent federal user in the same geographic area. Or alternatively, a larger company moving into an area may not be able to prevent a smaller competitor (whose use preceded the big company) from using a similar name. (Hence, Norman McDonald was able to continue to use his name on his hamburger stand in Philpot, Kentucky, although he had to remove his copycat arches.)
Limited Rights for Unregistered Trademarks
As noted, an unregistered first user of a trademark can often claim trademark rights within the relevant geographic area. This means that even though the first "Precious" store might be able to stop a second "Precious" from opening in its town, it cannot stop another "Precious" from opening in Hawaii or New York or Florida. It also cannot stop a second Precious from registering an Internet domain or selling goods online using the "Precious" name.
So, while unregistered trademarks enjoy certain limited rights, the best approach for most businesses is to register your trademark if possible. This advice is particularly true if there is any possibility that you might expand, opening additional locations or doing business outside of your specific town or municipality."
I am a domain investor. I do not register domains BECAUSE there is only one possible buyer. That would be stupid and bad for business. It is standard operating procedure for a domain investor to investigate all domains prior to registration to make sure there are more than one possible potential buyer.
To deny me rights to own and try to sell the domains in question would deny my right to operate the legitimate business of buying and selling domains.
Taking the domains in question would also deny all potential buyers and subsequent endusers in all other states in the USA from purchasing the domains in question.
It was not in bad faith that I registered said domains and then offered them to complainant. If I can legally sell these domains to any and all exact match address in all other states then contacting the complainant is not in bad faith. If anything is just a random coincidence.
Had any other person who owned property with the exact match address registered the domains in question for the express purpose of using it for their property. Complainant would have NO OPTIONS as the registrant would definitely not sell it.
Regardless of the complainant's unregistered trademark. He would have no recourse but to accept it as fact.
I registered said domains in "good faith" and now in bad faith the complainant is trying to take the domains for free.
The fact that I live in the same state as the complainant is circumstantial and irrelevant.
To avoid all confusion. The complainant really should register a trademark that is legally enforceable nationwide.
The burden of proof lies with the complainant to prove intent was in bad faith but given the fact that a simple Google search would net a long list of possible potential endusers for the addresses in question.
The list would not even need to be a long list. All that is needed is maybe 1 or 2 maybe three examples of possible potential endusers.
I had posted this TM issue on AVVO and got an interesting case I never heard of before.
"OK, so the address is a street address, not an IP address or Internet address and the property is real property, not intellectual property. A street address is geographically descriptive. The trademark owner needs to prove they have an enforceable right. To do that for a street address they would need to prove it is recognized as a source indicator, not a geographical indicator. "30 Rock"? Maybe. The defense to cybersquatting can be that you prove that you have a good reason to own the domain. Is it your street address too, or did you register it solely because it was someone else's street address and you wanted to sell it to them? One of the early cybersquatting cases was for
www.panavision.com. The squatter said there was a town in Illinois called Pana and he posted aerial photos of the town. The court was unimpressed. "
the address was not just the complainant's address but about 12 other possible endusers and that's just from the 4 states I checked.
I am a domain investor. Is that a good enough reason to own these domains IF my plan was to sell them to all the "PROVEABLE via Google search" other addresses in the USA?
Would a complainant and their lawyer be at risk for misrepresentation if say they agreed to sign an agreement in which I handed over the domains in question so long as they agree to sign the agreement that states.
1. The complainant prior to contacting the lawyer did their due diligence and researched the domains in question and that address and was confident that there are no possible other potential endusers for the domains in question.
2. The lawyer also asserts that he did all the necessary background check on the address and found no other potential endusers for the domains all across the USA in which the defendant could have sold the domains in question to.
3. The complainant and lawyer also will attest that the complainant's unregistered trademark gives them the SAME rights given to Registered trademark holders which includes cross border protection which makes the act of selling these domains cross border to all other potential users illegal.
4. The complainant and lawyer will attest that soliciting the sale of the domains in question containing the complainant's unregistered trademark cross border would be illegal under the protection of the Lanham Act and by default makes the act of soliciting the sale of the domains in question to the complainant illegal also and in bad faith.
5. The complainant and lawyer can prove intent because they did a Google search and found no other addresses in the USA that matches the complainant's address which therefore means the complainant is the only possible enduser for the domains in question and the unregistered trademark is unique and not generic enough to freely register domains containing said mark and then actively solicit the sale of the resulting domains registered.
I will surrender my domains if the complainant and lawyer will sign the above. I am cooperating to resolve this issue as quickly as possible. I have no money for representation so I will have to defer to the expertise of the complainant and their lawyer's knowledge about this situation.
In thee event, any and all parts to the agreement was misrepresented and false ...blah blah blah. you know the rest.
The point? Before you accuse someone of trademark infringement and bad faith reaching out to you to try and sell.
shouldn't you CHECK first to see if there are other street address that matches yours in other parts of the USA?
or is that all irrelevant?
Does it really boil down to. I reached out to complainant to sell them the exact match to their address? case closed?
is it really that simple?
bottomline if this guy has decided to go thru this whole process just to get these stupid domains so he can boost his ego. then it's pointless for me to WIN this and then try to sell to him.
so in the end I'll probably give the domains up as no matter what win or lose this guy won't buy from me. and am I really going to reach out to all the other possible endusers? probably not.
But this crap just pisses me off and I hate losing. Even if it's just $12 it's the principal of the thing. anyways i lose more than $12 on scratch offs. lol
I await JBerryhill to comment which should be in 3,2,1.......
