Possible UDRP

[Spade]

Alright. Here comes the hypothetical.

A Domain owner has a recent domain purchase parked. As it turns out, there is a possible TM issue. The owner becomes aware of it and fears a possible UDRP.

If he sells the domain name to a new owner - what risk does the new owner have of losing the domain name?

What are the risks to the old domain name owner who had it parked?

 

[IAmAllanShore]

Domain-laundering to clean up past mistakes?

Kidding, of course.

-Allan :gl:

 

[flamewalker]

Make sure the parking ads don't show infringing ads (of the tm owner or comptitors)...and the new owner will need to do their own homework to make sure they also don't infringe on the TM.

If its a "famous" tm, there can be other implications or difficulties, but most of the time, if you are careful with its use, you can be fine.

If you are infringing on the tm and sell it, it doesn't absolve you under the ACPA, and the new owner can still (I believe) have it taken away.

Usage is key from everything I have read about TM's and domains.

 

[Spade]

In this case the domain name was parked with advertising that likely is infringing on the TM. The TM is hardly well known and wasnt filed for until Nov of 07. (The Infringement was unintentional)) The name itself though is a generic keyword with a slight modification.

Although I hate to say it, Yes Allan, the question basically is will selling the domain name prior to any UDRP save it from possibly being taken? (Assuming the new owner doesnt follow the same mistake).

 

[DN BROKER]

Jerry would be the right person for this question.

 

[flamewalker]

Under the ACPA, a change in ownership doesn't prevent the TM owner from being able to go after the first guy anyways, afaik. If the TM owner doesn't have the money or doesn't know about the first party's unintentional infringement, then there may be nothing to worry about anyways. How long was it parked like that? It may not have ever made it to archive.org or the like...

IMO, if the infringement was short term, there may not be any evidence of it, and a sale would probably be ok. But then that brings up another possibility... could the sale be construed as bad faith, especially in light of the reportedly incidental infringement?

No sale will eliminate the possibility of a name being taken, however if the new owner never infringes, I would imagine any sane panelist would find it odd and unthinkable to attribute the new owners' ownership with the old owners' incidental infringement. Unless one could link the two together (aka business partners)... then maybe, maybe.

Just my opinion based on what I have read here and elsewhere in the legal section

 

[IAmAllanShore]

Jerry would be the right person for this question.

Jerry?
http://www.jerryspringertv.com/ ?
http://en.wikipedia.org/wiki/Jerry_Seinfeld ?
http://jerrypournelle.com/index.html this guy?
:notme:

But Spade, while nothing is conclusive, this sort of wash-sale would at least insulate the buyer from a UDRP. We're never out of the woods these days, but would seem to cure at least part of the problem with the continued holding of a name with a "dirty history," for lack of a better term.

-Allan :gl:

 

[Spade]

But Spade, while nothing is conclusive, this sort of wash-sale would at least insulate the buyer from a UDRP. We're never out of the woods these days, but would seem to cure at least part of the problem with the continued holding of a name with a "dirty history," for lack of a better term.

-Allan :gl:

And thats exactly what I was thinking.

IMO, if the infringement was short term, there may not be any evidence of it, and a sale would probably be ok. But then that brings up another possibility... could the sale be construed as bad faith, especially in light of the reportedly incidental infringement?

It was approximately 3 months. However, After checking with Archive, there appears to be no indexing of it.

Technically there is no reported infringement, and no notice of infringement made. I cant quite explain how the information came to light at this point, but I can say no notice has come from the TM holder or any legal party.

 

[flamewalker]

Chances are they aren't ready to spend $5k+ for a UDRP anyhow. Maybe jb will chime in, but I would suspect the new owner should be ok. There is always an element of risk, but it would seem to me there would be relatively little in this case.

Just my opinion tho.

 

[Ronald Regging]

The name itself though is a generic keyword with a slight modification.

http://www.namepros.com/2946117-post4.html

Check out that link. Not sure if it's relevant in this case or not, but basically JB lists some statute that says "A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark."

I may be interpreting that completely wrong, but what I get from it is that you couldn't TM "Carz" and then claim exclusive rights to the term to sell cars. In fact, there is a TM for "Carz," but they specifically state that they claim no exclusive right to the term "Carz."

So if your example is similar, you might not have to worry about a TM issue at all. Doesn't mean they won't still come after you though.

 

[labrocca]

If he sells the domain name to a new owner - what risk does the new owner have of losing the domain name?

If he uses is improperly he can lose it. Past usage owned by someone else hasn't, I don't think, been used yet in a UDRP.

What are the risks to the old domain name owner who had it parked?

I believe he can be sued civily for copyright infringement and damages. He can easily lose a lot more than just the profit he made from the domain sale.

On a side note. Once I had a domain that I sold off. It wasn't a TM infringing domain but supposedly it was used for spam and the owner also copied another sites content. Basically he did a lot of evil stuff with the domain. I recieved legal notices asking for any information I had and I quickly responded with a telephone call offering my assistance. After a couple emails and a fax I was never contacted again.

If I own a car and sell it..then the new owner uses it for drug smuggling or robberies I am not liable.

If I am a thief and use my car in the crimes then sell it the new owner is not liable.


To shorten all that. It's the person that infringes NOT the domain.

 

[jberryhill]

The TM is hardly well known and wasnt filed for until Nov of 07.

Is this in the US? Are you simply looking at a pending application or an issued registration. There are a lot of things in the USPTO database. Is it an intent-to-use based application 1(b), or use-based 1(a)? When was the domain name registered by its current registrant?

 

[Spade]

It is in the US and it is a 1a application. The domain was captured via Backorder in May of this year (The TM was filed for in Nov of 07). Doing a bit more homework, it would seem the previous owner of the domain name (pre drop) was the filer of this TM.

 

[flamewalker]

Its possible he abandoned the whole project...Let's hope so anyways... it would seem he has other things on his mind if he let his domain drop, and didn't make any effort to re-procure it. I would guess it to be highly unlikely he even saw the infringing content...

Based on my limited knowledge (mainly from what I have read here and elsewhere), it would seem he would likely have a very hard time to make a case against even the current owner (assuming he has no records of the infringement).