.mobi domain name dispute with a large Indian company

[mobinomy]

I own a .mobi domain name for .com owned by one of the largest company in India. The .com was registered 6 months before the .mobi. The official .com site which is a gaming site was launched one and a half months AFTER I registered the .mobi. The domain name is not a generic word but just a cool sounding word like say "reddit" which does not mean anything. The company claims that the domain name is their propreitary name before legal competent authorities. They do not mention what day they registered the name as trademark and i am not sure also. My .mobi site just goes to a error page without any advertising or content ever since the day it was registered. I have not made even 10 cents from this .mobi site so far. Using their trademark I am not making any money, i just registered it because it was a cool sounding word.

Now i just received a notice from them to handover my .mobi name to them within 4 days otherwise they will be forced to take legal action. They want me to ge meet their legal manager at their corporate office within four days.
They also claim that if i do not comply i will be liable for all their legal fees, damages, costs etc that they will have to incur to get this domain back. They also claim that it will be a expensive, exorbitant and protracted litigation for which i will have to bear all the expenses including theirs if i loose.

So my question now is this, if i do loose am i liable for their legal expenses, costs and any other form of compensation they demand ?

Also, what are my chances of winning this case ?

 

[Keith]

I own a .mobi domain name for .com owned by one of the largest company in India. The .com was registered 6 months before the .mobi. The official .com site which is a gaming site was launched one and a half months AFTER I registered the .mobi. The domain name is not a generic word but just a cool sounding word like say "reddit" which does not mean anything. The company claims that the domain name is their propreitary name before legal competent authorities. They do not mention what day they registered the name as trademark and i am not sure also. My .mobi site just goes to a error page without any advertising or content ever since the day it was registered. I have not made even 10 cents from this .mobi site so far. Using their trademark I am not making any money, i just registered it because it was a cool sounding word.

Now i just received a notice from them to handover my .mobi name to them within 4 days otherwise they will be forced to take legal action. They want me to ge meet their legal manager at their corporate office within four days.
They also claim that if i do not comply i will be liable for all their legal fees, damages, costs etc that they will have to incur to get this domain back. They also claim that it will be a expensive, exorbitant and protracted litigation for which i will have to bear all the expenses including theirs if i loose.

So my question now is this, if i do loose am i liable for their legal expenses, costs and any other form of compensation they demand ?

Also, what are my chances of winning this case ?

If you loose the name you could be held liable for all expenses incurred from the dispute. Is this name tied in with their company name or is it a random name they picked to use for the website? I think you should ignore them for now and wait to get an official letter asking you to come to court. If that happens you should just drop the name. The bright side is that they are interested in the mobi! Good luck.

P.S. you could also ask for a small fee for your troubles (a few hundred).
keithmt

 

[Cicero]

Well,
Apparently you registered zapak.mobi. Well I agree with Keithmt but I have something to add. Indian Cyber Law has a loophole regarding the domain names. It is possible to own a domain name of another company provided you don't identify with the company. In simpler words what I mean is that make a site and tell that zapak is an short form of Ze Ancient Police of Atlantic Kebab or something similar :P

I'd suggest a name for some gaming clan. And then go ahead and ask them if they would like to buy it.

If this is done they do not have anything against you according to the law.
Im no advocate So Id suggest see a good one.

The number one mistake you did was to give the real name and addresses in the whois. You should have added privacy protection.

Anyway, Best of luck.

 

[DNQuest.com]

Several things:

1- You admit it is a unique word and not generic. That is like saying I thought of xerox and it just happens to be a name I never heard before. Uniqueness will tend to favor the TM holder.

2- You aid the "launch" was 1.5 months after you registered the domain. I am sure there was some preparation and maybe some mention about this compant coming online before they actually launch. Is it possible you heard of thie new company and bought the .mobi?

3- I am not familiar with .mobi registry. But I will assume there maybe some sort of setup similar to UDRPs and ACPA. Monetary awards can only be done through the courts. So it would depend on how the TM proceeds. But yes, they may be able to recover costs and then some if they so choose.

4- You have been contacted so you should act on it (ignoring is never a good thing to do, it could PO the wrong person and they really come after you)

5- a "cool sounding word" yet you state it is a unique word. Maybe it sounded cool becuase you heard of the company starting up.

6- Making something up after you are contacted could most certainly be viewed as bad faith. It may not matter what you do after you are contacted, what matters is what you did before you were contacted. FYI- Making up some nonsensical phrase to match an acronym that is similar to a TM is pretty esay to see through.

7- You made no mention how you planned on using the domain, hence, your intentions when you registered would come into play. So if they cannot prove your intentions, they may look at the usage to determine your intentions at registrations.

8- False whois? Privacy protection? Why would anyone do that? Maybe to hide? Like I would believe anything this person has to say since it appears he is hinding something.

Anyway, Best of luck. You got nothing to worry about.

He has nothing to worry about...? Makes me wonder why none of the esteemed domain lawyers on this board never says that?

 

[IAmAllanShore]

Just FTR, .mobi challenges may fall under the UDRP http://www.wipo.int/amc/en/domains/gtld/mobi/index.html

And the OP has been kind enough to lay out a picture perfect case of bad faith without legitimate interest (India's "loopholes" aside, which wouldn't play into a UDRP action in any event.). This one has "loser" written all over it (So does the domain ).

-Allan :gl:

 

[labrocca]

Hmm...interesting one here. I think the Indian Company is playing hard ball and I hate to see those tactics. Trying to "scare" me just pisses me off.

However do you have the courage to tell them you will not comply and that you are willing to fight to keep the name?

I think you would lose a UDRP but they aren't talking about that..they seemingly are talking about other legal action since they mention compensation for legal expenses. IMHO it's all bull and meant to scare you.

If you have the name not resolving...I believe that helps you keep in the clear. You can even tell WIPO that you were developing and just waiting till mobi became more popular before launching.

I would place a holder page with a simple logo and say "coming soon". Then I would tell that company threatening legal action to bring it on and you have no intention of using the domain to trample their mark nor were you aware of their brand before they contacted you.

One problem is that I don't know Indian law. You may want to get a local lawyer if you want to really fight this.

At least that's what I would do...you however....you might just want to say sorry and give up the name...possibly see if they are willing to compensate you a small fee for registration.

Phil...I don't see fake whois or hidden either. And since he had no usage or intention for the name at registration there is no proof or inclination of bad faith. Zapak also is cool sounding and not very many letters..also uses rather common letters from Indian language. PAK being short for pakistan maybe? ZA is just cool..ZAPAK...I love the name. Super brandable. He can certainly use Zapak.mobi as a website unrelated to the gaming sector. Possibly make it his personal blog and change his forum names to zapak.

 

[goodkarmaco]

Yes,

scare tactics,

tell them to stop harrassing you and if they harrass you again you will be taking legal action. Your not mimicking their site and having no content on the name that has simalar ads as their company is a big plus here for you.

 

[DNQuest.com]

Labrocca, The whois is in response to a later post. It was mentioned why use real info in the whois? I was just playing Devil's advocate.

Though I agree if he had some development in mind and actually did develop, that would help him. But he didn't. I have a strong feeling he heard the name and jumped on it before they launched. As I mentioned, a company just doesn't spring up the day it is thought about, it was probably in startup stage for a bit and maybe someone got wind of some inside info and took a certain opportunity. My suspicions are usually pretty close to the truth

 

[IAmAllanShore]

Jesse, I love playing Devil's advocate as much as the next guy... But really?

Honest question: Do you think he really registered this for any reason other than Zapak.com ?

I'm not going to poke my head back into the whole "he could win" argument, as I have to feel that giving the OP the impression that "fighting" is a sound course of action can only bring about the ruin of many rather than one, but this is one of the ones that I kind of hope doesn't win. Things like this make it harder for others to legitimately claim that they had no desire to infringe/confuse/etc.

Just my .02

-Allan :gl:

 

[labrocca]

you might just want to say sorry and give up the name.

That was my advice to him.

Me...I would be playing a little tougher with them only because I don't like to be threatened.

 

[IAmAllanShore]

However do you have the courage to tell them you will not comply and that you are willing to fight to keep the name? ...

...IMHO it's all bull and meant to scare you.

...You can even tell WIPO that you were developing and just waiting till mobi became more popular before launching. ...

...I would place a holder page with a simple logo and say "coming soon". Then I would tell that company threatening legal action to bring it on and you have no intention of using the domain to trample their mark nor were you aware of their brand before they contacted you...

The "I's" and the "You's" get kind of confusing, especially in the big chunk at the end.

I snipped, and I certainly saw your caveats, but the bravado might have outweighed them to a novice eye

-Allan :gl:

 

[DBADT2007]

I am not a lawyer, but here is my two cents regarding this issue.

Someone here mentioned it was Zapak, which I am assuming is Zapak digital, from India, a gaming portal. I have found that they own (com, net, org, tv, biz, and among others). However, I am not convinced that this made-up word was completely original to them. I have found two other unique references. Zapak tools and Ali Zapak. The Zapak packaging tools are actually a registered trademark with the US since 1998, which pre-dates the existence of the Zapak game portal. However, TM law is a murky water, therefore you should consult with a lawyer to decide the best course of action for yourself.

Here are the links I found with the referenced word...
http://tess2.uspto.gov/bin/showfield?f=doc&state=jcapgb.2.1
http://cd.ciao.co.uk/My_First_Suicide_Ali_Zapak__5888019

Here is a link to a very well known Domain Name Lawyer and he offers free consultations in regards to domain name disputes...
http://www.esqwire.com/

 

[labrocca]

Yeah I can't imagine a good brandable like Zapak hasn't been used for something from somewhere...

http://www.zapak.com.tw/

I think that right there to convince me you haven't trampled on their so-called rights. For you to do that..you would need to be in a competing genre and have intentions to make money off their name. I don't see that intention here. Mobi registrations have been insane and even I like the zapak.mobi name. You want to sell it?

I could use it for something outside of gaming and really piss them off.

 

[Cicero]

Hmm.. Lab's got great ideas.

DNQuest, I dont have anything to say. Probably you are an Indian Lawyer ?

 

[binaryman]

But these Zapak guys dont even have a TM on the name ZAPAK. And being in India..Do they really have a leg to stand on? I mean if they had an international TM on the name that would be different. And they havent been in business long enough to have build up any goodwill yet either. Just my 2 cents worth.

 

[DNQuest.com]

Hmm.. Lab's got great ideas.

DNQuest, I dont have anything to say. Probably you are an Indian Lawyer ?

I am assuming this is in repsonse to my whois comments. You state it was a mistake using legal whois, please explain why it was a mistake. I typed this before your post and I edited it after I read aobut the "mistake". So this was done just b what the OP stated.

For the record, I am not Indian, I am a huge Cleveland Indians fan being born and raised there. For the record, I am 95% Polish... I have consistantly stated I am not a lawyer. Does that mean what I say is inaccurate or wrong?

I also like to add, the .mobi seems to be under WIPO, this means the domains are subject tot he same rules as the other TLDs. Meaning any "loophole" in Indian cyber law could be covered under WIPO.

EDIT TO ADD: I see you edited your post to take the line I bolded in my previous response where he had nothing to worry about... good move.

 

[Acroplex]

Since it's a non-generic, made-up .mobi word is it really that worthy of the headaches?

Take a $10 loss and move on.

 

[labrocca]

Since it's a non-generic, made-up .mobi word is it really that worthy of the headaches?

Take a $10 loss and move on.

Probably the wisest post in this thread. Short and to the point.

 

[Acroplex]

Hehe. Forgot to mention I really "love" .mobi :D

 

[labrocca]

Hehe. Forgot to mention I really "love" .mobi :D

Well there goes that wisdom you had. I guess it's something that comes and goes with you. :hehe: