Approached by Radio Station end user

[rpanella]

I have an LLLL.com, registered since 2000, double premium (contains k and w), and it is the call letters for a radio station.

I received an email from them stating that they believed that I was squatting on the name and that they were entitled to it, and wanted to know what my intentions with it were.

I responded saying that if they wanted the domain feel free to make an offer.

They wrote back stating they did not want to pay an "astronomical" amount, but in order to avoid a legal process, they want to know how much I am looking to make on it.

There is no trademark on the name and being that it is >8 years old and could stand for anything, I believe I am on pretty solid ground legally.

How would you guys respond to this? What should I ask for?

 

[jberryhill]

I think this trademark bullshit is ridiculous...

And I think if my aunt had testicles, she'd be my uncle.

But we don't get to pick and choose the way things are.

 

[labrocca]

Yes Mr. Berryhill but like you point out..what's her usage? I kind of doubt it's related to radio. So let's assume for a moment that it's not.

IMHO...she should be asking for high $x,xxx to low $xx,xxx. If indeed this is a radio station you may want to raise the stakes a bit. Asking $1k isn't enough imho.

Now assume you are using it in a way that's violating their TM. Well...maybe asking the $1k is the safe route and if that's fine for you...then go for it.

One thing you might consider. Create a list of recently sold LLLL.com's. Show it to them and say you feel your domain is in the same calibur you you expect similar price.

TDVR.com could assist you in creating that list.

 

[jberryhill]

Yes Mr. Berryhill but like you point out..what's her usage?

Which indeed, I did point out (see my note above on "two relevant questions"). My jumping off point though, was on the insistence that "there is no trademark" which, given the manner that most broadcasters in the US use their call letters precisely as a trademark, and the frequency with which it is an issue in the UDRP, is likely to be utterly wrong.

Typically a PPC lander for a WLLL or KLLL will end up resolving to a set of links suggesting something having to do with broadcasting, thus reflecting user intent in entering the domain name in the first place.

On the question of "what's her usage?", if the answer boils down to "not much", then there's not much to work with here.

 

[domainer50]

And I think if my aunt had testicles, she'd be my uncle.

But we don't get to pick and choose the way things are.

:lol: That was a good one Though I do agree, bulls$*t or not, TM infringement is a big deal with big consequences.

 

[Dave_Z]

Probably another relevant question is what's happened since then. :D

 

[kellie]

I think this trademark bullshit is ridiculous... If someone is allowed to register a domain name then they have the right to own the domain. Either trademarked names should be in registrars database and blocked from being used, or people/companies have to deal with the fact that their name has been registered as a domain and pay up.

I think domain registrars are responsible for trademark issues, not the owners. Just my opinion...

How would you presume registrars do that? Blocking all TM'd keywords? Guess what? You wouldn't be able to register a whole lot of really valid terms.

And companies should have to spend hundreds, thousands and for some into the tens of thousand dollars each year to register all of their TMs in all extensions? What about typos and variants? Now you're talking about hundreds of thousands for companies like 3M, which has thousands of TMs and SMs.

And registrars should bear the brunt of protecting TM owners? That's a lot of work - to what benefit of the registrar? Who's going to pay them to do that? You've no idea how much work that is, nor how much maintenance.

 

[Name Trader]

It seems to me to be an inordinant amount of time has elapsed for them to start defending their trademark.

 

[jberryhill]

It seems to me to be an inordinant amount of time has elapsed for them to start defending their trademark.

Laches will not work as a UDRP defense.

You do raise a third relevant question, though - chronology. How long has this radio station been around?

 

[taktikz]

How would you presume registrars do that? Blocking all TM'd keywords? Guess what? You wouldn't be able to register a whole lot of really valid terms.

And companies should have to spend hundreds, thousands and for some into the tens of thousand dollars each year to register all of their TMs in all extensions? What about typos and variants? Now you're talking about hundreds of thousands for companies like 3M, which has thousands of TMs and SMs.

And registrars should bear the brunt of protecting TM owners? That's a lot of work - to what benefit of the registrar? Who's going to pay them to do that? You've no idea how much work that is, nor how much maintenance.

Yeah, because it'll cost a lot more than for example, the Nissan.com lawsuit of $10million dollars back in 97. and they're still trying to sue him after almost 10 years. 10 years of going to court is a lot more of a hassle than registrars having some sort of an agreement with TM owners... It's better to resolve an issue than to just ignore it

 

[flamewalker]

That's because Nissan has and never had a legitimate right to the name Nissan.com... your comment makes it sound like you didn't even read the info on it. If Nissan really wanted the name, they should have just offered him an amount he couldn't refuse, instead they keep pressing this 'entitlement' mentality trying to capture the name. It was Nissan's choice to continue barking up a tree they have and never really had a chance of winning for 10 years and still going. In fact, he sold cars under the name Nissan long before they even changed their name... so in fact he could sue them if he really wanted!

Your idea is outlandishly impossible to implement because every tm owner would then have to track down every registrar and say this is my tm, don't let it be regged. The policing of this system would be a killer deal as there would be a lot of legitimate regs caught in the crossfire, complaints, counter complaints, et al.

The way it is now is best. It is up to the TM holders to protect their rights and property, as has been proclaimed by the courts, even recently. It is the most efficient method, and doesn't put unwieldy and unnecessary monetary stress on registrars.

 

[labrocca]

In fact, he sold cars under the name Nissan long before they even changed their name... so in fact he could sue them if he really wanted!

Actually you make a good point and one has to wonder why he hasn't used that for a counter-claim.

 

[flamewalker]

Because he isn't a vicious overreaching (even though he technically wouldn't be) prick of a company like Nissan has shown themselves to be. They even went after other companies he is/was a board member of/executive of... that were unrelated to his "Nissan" businesses... now THAT is low!

 

[jberryhill]

Because he isn't a vicious overreaching (even though he technically wouldn't be) prick of a company like Nissan has shown themselves to be.

What makes you believe that the auto company has not made generous offers to him, and that he hasn't simply been holding out for more money?

Look at the apparent facts.

First, look at nissan.com. You think he makes money advertising a $300 barebones desktop? You can't even buy anything through the site.

Second, his whole story about the lawsuit starts with a false statement:

This is after more than 20 years of Mr. Nissan's well-documented prior use
of his family name for business purposes in the United States
which he commenced when the cars were known as DATSUN.

Bullshit. We had a 1972 Datsun. The parts, the owners manual, everything was labeled "Nissan". That's like saying "General Motors was known as Chevy".

Third, that "20 years of use" included the time when he wasn't pretending to be a 'computer company', but was when he was running a business relating to foreign cars. Even if your name is Nissan, you do not have a right to use your name in connection with automobiles.

Uzi Nissan is under a permanent injunction not to use the name in connection with automobiles. As soon as Nissan Auto notices that the banner rotator he's put on the page lately includes ads for Hertz car rental, they'll be back.

And, finally, he lost out big time. If you don't think there were ongoing settlement discussions during the litigation, then you don't know how litigation works. You think his lawyers were working for free? Hell no.

What this situation looks like to a lawyer is that he took a gamble with his legal fees that he could hold out for a higher settlement offer from the auto company. He lost that gamble and there is no way on earth I am prepared to believe that he's made anywhere near his legal fees, which must have been astronomical, running a nickel and dime computer business.

 

[labrocca]

If you don't think there were ongoing settlement discussions during the litigation, then you don't know how litigation works.

Lawyers hate litigate in court.

I have yet to speak to one that does actually enjoy it. The last thing most lawyers want is to bring the suit to court and deal with judges or jury. The goal is to make a deal suitable to client and move on. At least I hope I ain't putting foot in mouth Mr. Berryhill. My buddy (music IP lawyer) hasn't been in a court room in over 20 years as an attourney.

 

[NameCharger]

Would this hold against a UDRP?

If one forwarded a domain directly to a for sale page (no PPC) and entered in the sales description something along the lines of:

"my intent was to develop this domain into a ________ website << based on an acronym in the domains letter pattern in an area that has nothing to do with the TM holder >>, however, need cash and must sell"

 

[Dave_Z]

As soon as Nissan Auto notices that the banner rotator he's put on the page lately includes ads for Hertz car rental, they'll be back.

I'd love to have the job of the person Nissan assigned solely to keep checking
Nissan.com for things like that. :D

 

[jberryhill]

My buddy (music IP lawyer) hasn't been in a court room in over 20 years as an attourney.

Going to court over preliminary motions is one thing.

Going to a trial is a failure.

A lawyer who has to go to court a lot is doing something wrong.

An attorney should be trying to help his/her client reach their objectives. A "court" is a place where neither attorney has control over the outcome.

 

[flamewalker]

Maybe I misread something... but wasn't mr Nissan awarded legal fees, and had every injunction reversed so far except maybe one? (Going off of memory from the legal link on his website). If that's the case, wouldn't that indicate that the judge believes Mr. Nissan's assumptions and data are correct? Or is his website disseminating incorrect information?

I've never a 72 Datsun... so I can't comment on that :p

 

[jberryhill]

but wasn't mr Nissan awarded legal fees

No. He was awarded his costs for a certain period of time after a Rule 68 offer of judgment.

And to understand that, we need a short lesson on Federal Rules of Civil Procedure, Rule 68.

In a nutshell, if you are the defendant in a suit, you can say to the court:

"I will accept a judgment against me in the amount of X"

If the Plaintiff refuses the offer of judgment and fights on after that, and the plaintiff does not win a damage award greater than X, then the Plaintiff has to pay your costs for maintenance of the suit beyond the point that you entered the offer of judgment.

What Uzi Nissan's own site says is this:

The court ordered NMC to pay $58,000 as cost under rule 68, this is less then 2% of what the cost was to defend this case.

So, even if you are going by his own accounting, he's $2,842,000 out of pocket on the entire shooting match.

The auto company was awarded damages corresponding to the amount of time he used the domain for car-related advertising.

Explain to me what, in your opinion, Mr. Nissan "won".

Oh... of course... He got to keep the domain name for the purpose of advertising a couple of desktops that you can't buy through the site, and for advertising that he'll fix your computer for $35 an hour.

I can see it now... In just a little over 81,000 hours, he'll reach break-even.

Assuming he works 12 hours a day, then it will only take him 18 years.

 

[flamewalker]

Admittedly I didn't read every document he linked to, or read the entire thing super thoroughly... I guess the $58,000 or w/e he said he "won" isn't much compared to the cool $2 mill he is out... missed that <2% part