Domain gone to UDRP/WIPO Dispute Case

[marty]

A domain i have has a trademark within its name. www.buy-TM-online.com
It seems that may WhoIs information was being hidden by the registrar, so the complaintant has been unable to contact me. The complaintant (through their lawyers) has setup a dispute case with WIPO Arbitration under the UDRP (Uniform Domain Name Dispute Resolution Policy), which as you may now means that i may have to transfer my domain to them.

I suspect they may have tried to contact me prior to doing this but as my domain whois was unavailable they could not. If i had know they had i would of made the decision to transfer my domain probably before it got to this stage. I have not yet responded to any party, but I am happy to allow a transfer. Do you think think that writing to them and allowing the transfer to take place now before a UDRP decision will mean that i am 'accepting liability' - should i do that?

 

[jberryhill]

I'm not going to comment on a document I haven't read. Why don't you just pick up the phone and call the complainant's attorney, ask him if they agree to waive future claims, and ask him to point out where they do that in this document. This is not brain surgery. A UDRP case can be disposed of, from start to finish, in an afternoon.

If the domain's locked, that means the registrar got the UDRP complaint, and
that brings you back to where you are now. But if the registrar forgot to lock
it, then...

Before WIPO sends the commencement notice, they confirm the registration with the registrar and the name is locked. I don't know what goofy idea you are suggesting here, but I have given no such "clue". From the point you agree to transfer the domain name, then the complainant, the respondent, the case manager, and the registrar all need to get on board to wrap this up.

 

[Dave_Z]

I don't know what goofy idea you are suggesting here, but I have given no such "clue".

Oh, I'm referring to this one, actually:

In fact, if the Complainant does not want to accept voluntary transfer of the domain name, then there are three decisions out there which deny transfer, on the ground that Respondent's offer to transfer the domain name for free was itself evidence of good faith.

But only if marty decides to fight it out instead. Of course, it's still no surefire
guarantee marty can win, much more will win.

I was actually hoping the registrar might have "forgotten" about locking the
name, so marty can just transfer the name to the complaining party and thus
avoid further hassle. I realize, however, that it may not necessarily be as
simple as that.

Marty, I apologize if my thoughts here might do more damage than good. If it
does you damage, please let me know how I can make up for it.

 

[jberryhill]

I was actually hoping the registrar might have "forgotten" about locking the
name, so marty can just transfer the name to the complaining party and thus
avoid further hassle.

And this prevents him from getting sued for past infringement how?

Yes, it is reasonable to get a waiver of claims, so that the settlement of the WIPO case resolves any potential damage claims based on having registered the domain name in the first place. No, if that's what you want, then you don't want to play games with pushing the domain on someone.

 

[mole]

Let's say someone has only a USPTO "trademark". Does this "law" apply to the rest of the world?

 

[AdoptableDomains]

Let's say someone has only a USPTO "trademark". Does this "law" apply to the rest of the world?

I believe most countries have treaties (part of UN?) that honor each others trademark laws. WIPO is an organization that helps coordinate between participating countries.

www.wipo.int

 

[MissFlora]

So upon claiming trademark in Canada, it literally extends to all over the world all extensions due to the worldwide trademark agreements? Hm..I thought there will be a difference between a country trademark and a worldwide trademark? Does this even exist or no?

Flora

 

[AdoptableDomains]

I believe it gives you limited protection. For real protection within that country it would be wise to file a local trademark applications as well if you plan on doing business there. Other countries may honor foreign trademarks to some extent, but it's likely a local one would take precendece over a foreign one if there was a dispute.

 

[NP41215]

For the complainant to recover, damages much be proven. Such damages cannot be speculative, but must be actual and provable, and proven. The burden is not on the respondent to show no damages. At least those are the general legal principles as I understand them.

 

[NP41215]

ok i know i said i wouldnt ask anything again, but heres an update.
comment if you wish on the facts given, i understand that all advice given can not be expected to be the 'only' answer, thank you.

...the "hearing" with WIPO is suspended, complainant has sent a "domain transfer and settlement agreement" which they want me to sign.

1. The agreement doesn't say they will not try to claim for past damages in the future. i'm assuming they won't explicitlly say this . Therefore, i'm not happy about the statement, "Assignor agrees not to hereafter challenge or contest, directly or indirectly, the validity, ownership or registration of the Mark or any variation thereof, including any proceeding of any type in any country." Should i ask them to add a statement which means that, '(all) my rights will be reserved if complainant proceeds for claims to damages that arose prior to this agreement'?

2. I'm asking them to add a "No admission of liability", as seen in prior settlements published on the web.

3. Also, they limit the jurisdiction of disputes to their county. i'm not in the same country - is it wise to limit my jurisdiction as such?

I presume you can cross out what you don't like and add what you need. No one says you must sign whatever is given you as is.

Everything is subject to negotiation, including terms of contracts and agreements..

 

[NP41215]

I hate to receive Dispute Case notification. They always ask me to answer the following questions:

(1) indicate whether, at the time of your reply to us, you are in receipt of a copy of the Complaint sent by the Complainant, as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b);

(2) confirm that the specified domain name(s) is/are registered with you;

(3) confirm that the Respondent is the current registrant of the domain name(s);

(4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) that are available in your WHOIS database for the domain name registrant, technical contact, administrative contact and billing contact, for the above domain name(s);

(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name(s);

(6) confirm that the domain name(s) will remain locked during the pending administrative proceeding;

(7) indicate the specific language of the registration agreement as used by the registrant for each domain name.

(8) indicate whether the domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name(s) (Rules, Paragraph 1)

Which of the above items you dislike the most and why?