Advice Needed! What is worst that can happen in Arbitration

[TP]

A complaint has been filed against me with the National Arbitration Forum by lawyers for a firm with a trademark on what I thought was a generic term, which I had registered. What is the worst that can happen if I am taken to Arbitration? Do I have to pay arbitration fees?

Thanks in advance.

TP

 

[evertonian7uk]

well it depends on what you do,

can you give us some more info, like what was said to you and what you replied etc....

whats the TM term you have, did you offer to sell etc...

a few more details mate and we might be able to let you know more

 

[tricolorro]

A complaint has been filed against me with the National Arbitration Forum by lawyers for a firm with a trademark on what I thought was a generic term, which I had registered.

:hi:

Maybe it really is a generic term.

Do some research.

What is the worst that can happen if I am taken to Arbitration?

Well, you won't go to jail or face a firing squad ,hangman or electric chair.

You could lose the (potentially valuable) domain.

The panelist(s) could order the domain to be transferred to the Complainant or cancelled depending on what action the Complainant is requesting.

Beyond losing the domain, the worst thing that could happen is that you get labeled a Cybersquatter.

That reputation will then follow you...forever.

Do I have to pay arbitration fees?

No unless you are the one to request a 3 member panel.

From Arb-Forum:
http://snurl.com/domainDispute

"Fees
Responding to a Complaint does not cost you anything, unless, in your response, you request additional services, such as electing to have a three-member panel decide your dispute instead of a one-member panel and the Complainant has not already chosen to do so. Our fees are detailed in our Supplemental Rule sets."

You would of course have the expense of gathering a defense if you chose to respond including copying documents, faxing, etc.

This is not legal advice but if you think this is truly a generic domain
that has real value, you might want to consider at least paying one of the
domain lawyers for a consultation if not actual representation.

Also, if you think this is truly a generic domain that has real value,
pay for a 3 member panel if the Complainant has not elected to do so.

You have a much better chance of keeping the domain.

That's not legal advice but is what i would do.

Finally, if you think this is truly a generic domain, then ask for a determination of "Reverse Domain Hijacking".

It's rarely granted but sometimes is and you have nothing to lose if
it's not granted.

If it is granted then that reputation will then follow them...forever.

Good luck,
Patrick

 

[Dave_Z]

Maybe it really is a generic term.

Generic for what, though?

 

[TP]

re legal arbitration

Generic for what, though?

Dave,

(1) The name is equityenterprise dot com which I think is generic, like "stock enterprise."

(2) I had a 1plus.net (Imodo) news site up on it with google ads. The subject of news site was equitization.

(4) I also had it listed on sedo as I do with most of my domains.

(5) Apparently there is a company in Texas with a software trademark for equity enterprise. I had no idea.

(6) They bid on it at sedo. Beginning low. I wasn't that interested in selling and forgot about their bid. Then they kept bidding, so I got interested and started out high. Eventually they got to 3,500 before bidding ended (I was busy and hadn't time to lower my bid much, which I have to admit I had at a high price of 13,500) and then I got the emails from their lawyer about their submition of complaint. I had offered 4,000 eventually, but the ask price never got posted on Sedo for some reason.

(7) After getting email from them, I told them (a) equity enterprise was a generic name (b) I had a working news site on it that had nothing to do with "software" (their trademark). (c) I was willing to sell at 4,000 if they wanted it (they haven't responded as it is the weekend and I got the their complaint Friday). (d) I had not sought them out to sell to them as they made the first, second and third bid before I replied.

(8) Their complaint emailed to me said (1) they had the trademark for software for equityenterprise (2) I was using Imodo which was a parking site (I use their news site feature not their parking feature) (3) that when bidding started I had changed the registrants name (I had it in a friends name, who owns the account with me) and had it switched to my name because that was my sedo account where the bidding was occuring (4) They said I registered in bad faith because of some theory that the servers on which the domain was located was in Texas near the business complex of their business and that was how I probably knew to register the domain. (I am in Taipei, Taiwan) (5) I was profiting from the site (I was using google publishing ads) which I don't see is a problem for a news site.

I am not sure what to do? Should I just let the whole thing go to arbitration?

Thanks in advance

TP

 

[Dave_Z]

There's indeed a registered trademark (2, it seems) by the same party. But 1
of them has something "interesting" in it:

Word Mark EQUITY ENTERPRISE
Goods and Services IC 009. US 021 023 026 036 038. G & S: Software, namely software for creation, maintenance and management of coprorate stocks and equity. FIRST USE: 20030400. FIRST USE IN COMMERCE: 20030400
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 26.03.04 - Ovals with two breaks or divided in the middle
26.17.05 - Bands, horizontal; Bars, horizontal; Horizontal line(s), band(s) or bar(s); Lines, horizontal
Serial Number 78430096
Filing Date June 4, 2004
Current Filing Basis 1A
Original Filing Basis 1B
Published for Opposition February 28, 2006
Registration Number 3151733
Registration Date October 3, 2006
Owner (REGISTRANT) Boardroom Software, Inc. CORPORATION TEXAS Suite 310 1345 Valwood Parkway Carrollton TEXAS 75006
Attorney of Record George R. Schultz
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "EQUITY ENTERPRISE" APART FROM THE MARK AS SHOWN
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE


Word Mark EQUITY ENTERPRISE
Goods and Services IC 009. US 021 023 026 036 038. G & S: Software, namely software for the maintenance and management of corporate stocks and equity accounting. FIRST USE: 20030400. FIRST USE IN COMMERCE: 20030400
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 78428417
Filing Date June 2, 2004
Current Filing Basis 1A
Original Filing Basis 1B
Supplemental Register Date July 18, 2005
Registration Number 2999376
Registration Date September 20, 2005
Owner (REGISTRANT) Boardroom Software, Inc. CORPORATION TEXAS Suite 301 1345 Valwood Parkway Carrollton TEXAS 75006
Attorney of Record George R. Schultz
Type of Mark TRADEMARK
Register SUPPLEMENTAL
Live/Dead Indicator LIVE

I'll let John B or any of the lawyer-members here post on this (hopefully) since
this one's right up their alley.

 

[TP]

Thanks to all the members who gave comments and suggestions. Some privately. At the very least will learn alot from this experience.

Dave, what is interesting about one of the TM's. Please do tell.

 

[BeZazz]

Dave, what is interesting about one of the TM's. Please do tell.

maybe

Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "EQUITY ENTERPRISE" APART FROM THE MARK AS SHOWN

 

[TP]

maybe

If "Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "EQUITY ENTERPRISE" APART FROM THE MARK AS SHOWN" is the problem with one of the TM, what about the other TM from 2005?

Is the TM from 2005 on the words only? And since it relates only to their accounting software, How good is their case?

I can show I often chose descriptive generic names in niche markets for my domain names as an internet publisher (ie., see my signature links on insurance names).

Also, someone told me they thought "equity enterprise" is not a generic term. I think so? Any thoughts?

TP

 

[tricolorro]

If "Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "EQUITY ENTERPRISE" APART FROM THE MARK AS SHOWN" is the problem with one of the TM, what about the other TM from 2005?

Is the TM from 2005 on the words only? And since it relates only to their accounting software, How good is their case?

I can show I often chose descriptive generic names in niche markets for my domain names as an internet publisher (ie., see my signature links on insurance names).

Also, someone told me they thought "equity enterprise" is not a generic term. I think so? Any thoughts?

TP

Hi TP,

Is "Equity Enterprise" Generic?

I'm the one who told you in our PM communication that I didn't consider
"equity enterprise" to be a generic term.

I said that based on my view that Apple Pie is generic but Apple Pie Enterprise would not be.

I also did not think that "equity enterprise" is part of normal everyday
speech but a quick search on Google shows that it is indeed used in the business and financial community.

Therefore I would support your view that "equity enterprise" is a generic term used in business and finance.

Here are some examples of generic usage I found in Google:

• “community equity enterprise”

• "Joint Equity Enterprises"

• "all-equity enterprise"

• "Magic Johnson owns his own private equity enterprise"

• "in Part 4 of the Members Equity Enterprise Agreement."

• "Public-private equity enterprises"

• "The proposed Standard Chartered Enterprise Equity Fund"

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Why Didn't Boardroom Software, Inc Register EquityEnterprise .com?

I had also suggested that you look at the date the trademark for "equity enterprise" was granted and when Boardroom Software, Inc claimed first
use and compare it to the date you regged the domain.

Boardroom Software, Inc claims first use of "equity enterprise" April 2004 and received their word mark TM Sept 2005 and the design TM Oct 2006.

You registered the domain July 27, 2007.

A search of Internet Archive shows 4 pages for "EquityEnterprise .com,
the last date being May 28,2002.

What status was the domain in before you registered it?

Why didn't Boardroom Software, Inc register the domain between April 2004 and July 27, 2007, the date you regged it?

That is something I would bring up in my defense.
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Why Was "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "EQUITY ENTERPRISE" APART FROM THE MARK AS SHOWN" added to the second TM application and not the first?

This is my reasoning. It's not gospel.

The first trademark filing was a Word Mark TM application for "equity enterprise" and limited to their financial software products.

This would give them limited TM rights under that category of goods and services but does not preclude someone else using "equity enterprise" for other uses that do not conflict.

The second TM filing was for a Design TM and included the words "EQUITY ENTERPRISE".

This could have been interpreted as too broad a TM usage if they did not
add the disclaimer , "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE APART FROM THE MARK AS SHOWN".

Any of the other companies that use "EQUITY ENTERPRISE" as part of their Business Name and/or website address could have opposed the TM application or tried to have it overturned if granted.
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Who Is Using "EQUITY ENTERPRISE" as part of their Business Name and/or website address?

A quick search turned up this list:

• Equity Enterprise (Radnor, PA)

• Equity Enterprises (Nashville, TN)

• Equity Enterprises (Pleasanton, CA)

• Equity & Capital Enterprise Inc (Chino Hills, CA)

• Equity Enterprises .com

• Sweat Equity Enterprises .org

• Private Equity Enterprise.com

• Hawton Equity Enterprise

• Equity Enterprise Property Service

• Equity Enterprise Mangement Inc

• Equity Enterprise Inc

• Realty Equity Enterprise Services

and with the words reversed:

• Enterprise Equity Partners (a division of FirstRand Bank Limited)

• Enterprise Private Equity Ltd

• Enterprise Equity Fund Management Ltd

• Enterprise Equity (www.eeni.com)

• Enterprise Equity Venture Capital Group

Good luck.
Patrick

 

[OnlineDomainCom]

I think you are safe. I believe the term is generic. It is used by a lot of companies as tricolorro pointed out.

But I think you should concentrate at part b and c of UDRP. 99% of the time trademarks are accepted so Complainant is past part a of UDRP. I think that your usage might win you part b. I am sure that you can win part c(registered and used in bad faith). Trademark is not registered where you live, you used it with nothing to do with software etc...

The server argument is just laughable.