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is this a UDRP waiting to happen?

Located in Legal Discussion, started by WhoaDomain.com, Mar 1, 2021

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663

  1. WhoaDomain.com

    WhoaDomain.com WhoaDomain.com VIP Gold Account

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    Without saying the domain name or the company.


    Below is the important info of the Trademark in question.

    Filing Date October 9, 2017
    Current Basis 1A
    Original Filing Basis 1B
    Published for Opposition March 20, 2018

    Registration Date December 17, 2019

    My domain was registered 02/27/2019

    What date should a domainer worry about? At this point in my domaining I should really know this. This is like when you see a word you've read and spelled a billion times but for whatever reason you look at it again and it looks "off" lol

    and you ask someone and they say " are you ok?" lol

    normally I would go by the filling date. in which case my domain then would be in the crosshairs of a UDRP. The fact that the TM holder hasn't reached out to me makes me question what I had believed. So does the "coverage" of a trademark begin at Filing date? or Registration date?

    Thanks in advance.
     
    Last edited: Mar 1, 2021
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  2. CraigD

    CraigD Top Contributor VIP

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    Interesting question.

    I'm not a TM lawyer, but I would certainly be concerned about the published for opposition date which predates your registration as it could be seen as an intent to use, and it wasn't contested. I think you need professional advice on this one mate.
     
  3. karmaco

    karmaco Top Contributor VIP

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    We can be of no assistance without knowing the name and or having a law degree.

    I will say the way I measure things— check before you buy obviously and if there is only one possible end user with a trademark and or one niche possible only I move on.
     
  4. WhoaDomain.com

    WhoaDomain.com WhoaDomain.com VIP Gold Account

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    yea. I think I was right all along just needed other eyes on this. I think they beat me to it. Although their goods and services is just 1.

    the main keyword for this domain I feel has a use for a news website or marital disputes.

    even thought the domain has privacy and is blank by pure luck my Etfy didn't kick in.

    Still the TM owners are big tech geeks so they could easily have reached out via the whois privacy email. for a threat.

    They seem to be really ramping up the use of the TM on their website. So I don't know.

    Definitely don't want to reach out till I read more posts here.
     
    Last edited: Mar 1, 2021
  5. Super-Annuation

    Super-Annuation eMoneyToken -Superannuation - Brekky - SuperFunds

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    Great question.

    A lawyer could argue for their clients intention for commercial protection from filing date.

    However, commercial Intellectual Property protection is concluded after you purchased the domain.

    Also, you haven't stated what class/classes their IP TM application covers. If their Application is simply for "FCUK" and only Class 25 (Apparel, Clothing Headgear, Footwear) - Australia, and it's a .com (which is USA jurisdiction,) then you have a case to argue for right to own the domain, so long as you don't cause "brand dilution" or "reasonable consumer confusion" in regards to the "goods or services."

    But I don't think this is your situation...

    Had you of purchased the domain prior to the TM application, it's your domain all day. That's capitalism. The right to acquire capital, in order to generate profits, only to acquire capital. They can't own it before an application... However, if they were operating, and can prove a "bad faith" purchase, then you're out of luck.

    That's why we have to research.

    Their are precedence in different jurisdictions for different TLD's/ccTLD's/gTLD's that have argued every side to every case, but commonsense prevails.

    If you have questions, their is probably a good reason for them.

    For your situation, if taken to court (however, UDRP may just take the domain from you if the applicants lawyer decides to make a case,) the applicant is likely to win.

    Hope this helps.
     
    Last edited: Mar 1, 2021
  6. WhoaDomain.com

    WhoaDomain.com WhoaDomain.com VIP Gold Account

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    here's the single goods and services they chose for this TM

    G & S: Computer software for use as a firewall, as well as for filtering computer network traffic based on country, region, province, island, state, or companies within.


    I mean it's pretty specific. Like I said I could use the domain right now for a lifestyles website or the name of a TV show or a device with a different use case like a lie detector or private investigation service to catch cheating spouse or even for a company that sells products that helps people hide their valuables in plain site.

    The fact that this company has not reached out? makes me suspect they want me to make the wrong move first and reach out to them.
     
  7. Super-Annuation

    Super-Annuation eMoneyToken -Superannuation - Brekky - SuperFunds

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    Sounds like a product...


    Like authors of books don't try and obtain every domain for every book they've published.

    Or developers of apps don't try and obtain the domain name for every app they develop (they just push their user adoption on Appstore etc.)

    I own Smartify.com.au

    I bought the domain before a recent TM application for SMARTIFY.

    In Australia a TM has been made for a Smart Lighting product sold by a SME. (They've probably just found something cool on Alibaba and branded it Smartify in Australia... Haven't looked into it... But it's a light bulb sort of thing.)

    Anyway, because the it's a simple 'Class,' yes, I'm still free to use Smartify for goods and services within Australia that don't interfere with the simple application that was recently made.

    However

    It sounds like my situation is similar to your situation, and even if I bought Smartify.com.au today, I'd be free to use it, as it sounds like you are free to use your name... As long as it isn't the "Trading Name" and have anything to do with what I mentioned in the previous post.

    Yeah, you should be sweet. Go hard.
     
    Last edited: Mar 1, 2021
  8. WhoaDomain.com

    WhoaDomain.com WhoaDomain.com VIP Gold Account

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    Lifi? also just did a revenue check on the company and they weren't as big as I thought. it really is true and spiffy website can make you look like a billion dollar company! lol

    I am not so worried now. Also they probably know my domain will cost money.

    I own several domains that I registered prior to TM that I'm just waiting on checks for. lol

    If you are not first! You're last! lol Ricky Bobby Inc.!
     
  9. Super-Annuation

    Super-Annuation eMoneyToken -Superannuation - Brekky - SuperFunds

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    What's Lifi? They probably don't want the domain because it's simply for some firewall thing they've created.

    Anyway, just do your research, and use WIPO for the latest in TM so you don't breach in the future.

    Good luck domaining.
     
  10. DirkS

    DirkS DutchPirates.com VIP

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    Without knowing the name, there's zero insight to be given.

    Say you registered the domain after the TM was established. You could still be ok. Say you owned that name before the TM was established. You could still be in danger...
     
  11. tonyk2000

    tonyk2000 Top Contributor VIP ★★★★★★★★★★

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    What (if anything) happened today in 2021? Routine TM check, increased domain traffic, etc...? It may be relevant.
    A registered TM [any date] is important for them should they elect to start UDRP. It is less important for you (as a registrant, you have no obligation to check each and every TM database worldwide). Were you aware of their intention to register the TM, and/or of their business in general on 02/27/2019? It is much more relevant. If you had their company in mind - bad faith can be found. However, if you can somehow prove that you were unaware of them on 02/27/2019 - then you could not register the domain in bad faith (= you'll win UDRP). For example: different business areas, different geo location, different languages, no press releases, etc... - all such things can show that you regged the domain without the complainant in mind
     
    Last edited: Mar 1, 2021
  12. lovely4ever

    lovely4ever Established Member

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    Maybe you asked a high BIN price for the domain , thats why the TM owner will file a UDRP .
    i believe any TM owner with calculate the cost of filing a UDRP case VS the cost of buying the
    domain at current offered price , and will go for the cheaper and easiest option .
    i dont know the average cost of lawyers , but i think it in rang of thousands .

    Any claimed to be a TM owner will prefere to buy the domain if it is cheaper than paying for lawyer to open a case and go through all the arguments and back and forth and delayment .
    So putting the domain for cheap afforrdable Bin price is always better than losing the domain in case of UDRP .
    This was my opinion and correct me if i am wrong . :)
     
  13. Rich

    Rich Top Contributor VIP ★★★★★★★★★★

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    I wouldn't be reaching out to them at all, if you want to list it put high xxx to low x,xxx and if it's a handreg just turn off auto renew. This is my best advice without knowing domain.
     
  14. Dansam

    Dansam Sell & Buy Best Domains Gold Account

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    Hello there,

    Maybe the domainers with big experience can help me with below questions.

    One of my friend lost an domain at WIPO for trademark issues and the lawyer who represented the Trademark Company wants to open an case in the Local Court ( Europe ) to recover all the fees that his Company spend it for the UDPR case. ( they requested 250 Euro/ hour and the total its 5000 euro )

    It is usually that?
    Its a legal action?
    Its not enough that they won the domain?

    Thank you in advance for your answer!
     

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