Reverse Domain Name Hijacking Question

[markfromslo]

I'd like to know if I am protected under the "Reverse Domain Name Hijacking" Rule in the following situation:

1. I register an available domain name on let's say 1/1/06. There was no TM filed at that time for this name, and I knew of no product with this name.
2. Someone registers a TM with this domain name on 6/1/07.
3. This new TM owner says I owe him the name since he has the TM now, and it turns out, unknown to me earlier, that he actually began using the name (not in general usage - small market) on 1/1/05, a year before I registered the name.

Can I use the Reverse Domain Name Hijacking rule to keep my name? After all, he didn't bother to TM the name until years later, and he didn't try to purchase the available name earlier?

 

[Dave_Z]

Can I use the Reverse Domain Name Hijacking rule to keep my name?

IMHO based on what you posted so far, no.

Besides, you have to demonstrate they abused the process to possibly get an
RDNH. And that's still within the discretion of the one overseeing the dispute.

Lately, I've not seen any decision indicating such. Unless I missed one.

 

[AdoptableDomains]

If they can prove the used the name in commerce before you registered, they have a good shot at winning. A TM doesn't have to be a filed or be a "Registered " TM to be valid, but it does make the job of supporting their claim more difficult and puts the burden of proof on them. If the name is fairly generic, it would be hard for them to prove bad faith and they would have to prove it was confusingly similar to their mark and in most cases used for the same classification of goods or services. If not at all generic, your odds are lower, but it still depends on a lot of other details. Without knowing the name, I wouldn't place a bet on either side at this point. Either of you could have a chance.

As far as I know, reverse hijacking only works if they file a dispute against you. Also, there is really no loss for them in a reverse hijack decision except the record that they have been found guilty of it.

 

[markfromslo]

Interesting. With just about every combination of words and letters used as a product somewhere in the world these days, it's almost impossible to come up with a domain name that isn't already used somewhere.

I guess, given what's written above, even a clueless businessperson could create a product, not trademark the name, be too stupid to buy the domain name, barely sell the product, and then years later take the domain name away from someone else. It's crazy. If the product owner is 1) so stupid as to develop a product for which the name is already registered, or 2) so stupid as to not register the available domain name when he creates the product, they should not have a right to it. But then I'm not king, and that makes too much sense.

 

[AdoptableDomains]

Interesting. With just about every combination of words and letters used as a product somewhere in the world these days, it's almost impossible to come up with a domain name that isn't already used somewhere.

Not everything is trademarkable, and even if it is it doesn't normally protect all categories. Not every TM will hold up in court, even some registered ones.

In this case, it's up to the TM holder to prove infringement in the same category of goods or services. Stay generic and you probably won't have any problems.

 

[IAmAllanShore]

I guess, given what's written above, even a clueless businessperson could create a product, not trademark the name, be too stupid to buy the domain name, barely sell the product, and then years later take the domain name away from someone else. It's crazy. If the product owner is 1) so stupid as to develop a product for which the name is already registered, or 2) so stupid as to not register the available domain name when he creates the product, they should not have a right to it. But then I'm not king, and that makes too much sense.

No - not quite...

I'll use a fictitious example that mirrors a situation I faced recently. A client owns and operates a business names "Signs Plus" (Again, fictitious, but I am using it because it somewhat parallels the fact pattern.). There are hundreds of other businesses by the same name, many of which were in business before the owner of the .com was. (See Google: http://www.google.com/search?hl=en&q="signs+plus"&btnG=Google+Search ). However, for UDRP an element that is necessary (At least in theory; don't get me started on "in application" ) is that the registrant NOT have a legitimate interest in the domain name. Having registered the domain and used it for so long should lead a panel(ist) to the conclusion that the registrant does have legitimate interest, and the domain is not being currently used and was not registered in bad-faith (Element 3). You'll see the line in many a panel(ist)'s decision that the "respondent in not known by nor does business as ____________" - which would not be the case here.
In short, the slumbering TM holder is a situation that rarely presents itself - and I'm presently unable to think of a representative panel decision from NAF or WIPO that would be along the lines of the hypothetical you describe.

-Allan :gl:

 

[markfromslo]

For any names I have, even generic sounding ones that I find have businesses using the same name, or even have a real TM on it, would it be best to unpark them and even take their sales listings off of places like Sedo and Afternic? That would seemingly make it more difficult to say that I was trying to profit off the name, cannot prove what category of goods I might have it intended for, and makes it appear I am not trying to sell it. Good idea? Helpful?

I can think of a name that is a two word name, but very generic, along the lines of "GoodMorning.com" Well, someone could very well have a TM to make t-shirts with that name, or a TV show might be called that, etc. Some may have the actual TM and some may just be in business. How can it be possible for anyone to claim that I had intended to use such a name to compete in the same business area if it is unparked, etc.? I can understand if it is a unique name like ZippieDoDahLables.com or something, but not something like a common phrase.

Input please? Thanks.

Not everything is trademarkable, and even if it is it doesn't normally protect all categories. Not every TM will hold up in court, even some registered ones.

In this case, it's up to the TM holder to prove infringement in the same category of goods or services. Stay generic and you probably won't have any problems.

 

[IAmAllanShore]

Read: http://www.wipo.int/amc/en/domains/search/overview/index.html#32

3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder? (Passive holding)

Consensus view: The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.

Relevant decisions:
Telstra Corporation Limited v. Nuclear Marshmallows D2000-0003 , Transfer
Jupiters Limited v. Aaron Hall D2000-0574 and , Transfer
Ladbroke Group Plc v. Sonoma International LDC D2002-0131 among others, Transfer

On the interpretation of paragraph 4(b)(iv) of the UDRP:
Global Media Resources SA v. Sexplanets aka SexPlanets Free Hosting D2001-1391 , Denied

 

[markfromslo]

Thanks AllenShohre.

Here's an interesting question (to me at least) for you or anyone else who knows. What's a good ballpark average that a trademark owner is willing to pay to get a name to avoid going through all the motions. Let's assume the company is mid-sized (a few million a year) and the case is maybe a 50/50 to 75/25 chance for the tm owner.

I had a TM violation letter sent to me from a company (I'd say they do in the tens of millions a year gross) once for a name I owned that included their TM. It was a very common term that was trademarked, similar to "Good Health", let's say. I had GoodHealth[another word].com. They offered to buy it for a few hundred, I offered a very high counter. Shortly thereafter the letter came. This was early on in the name business for me and I didn't want to go through the case, so I started an escrow.com transaction for the name for $2500 and told the attorney they had 60 minutes to accept it or I'd pull it off the table and see the thing through to the end. They jumped on it. The attorney knew the company would spend at least that much in time to go for the name, and perhaps lose. I'd say realistically, if there was no trademark, I'd have eventually sold the name for around $3-5K.

How often does a deal like I'm saying work out? TM owners do know it costs money (in labor and time) to pursue a case.

 

[IAmAllanShore]

Your move is not one I would advise anyone to undertake - you were lucky they did not set out to make an example of you. That being said, I have no idea what the name was, so it might have been "GoodDay.com" that you were using as a site for laxatives while the TM holder is a newspaper.
-Allan

 

[markfromslo]

Your move is not one I would advise anyone to undertake - you were lucky they did not set out to make an example of you. That being said, I have no idea what the name was, so it might have been "GoodDay.com" that you were using as a site for laxatives while the TM holder is a newspaper.
-Allan

What's wrong with what is basically, "an offer to settle?" That's what lawyers do with each other, I just bypassed all the legal costs, and so did the other party. It's certainly worked in other areas of business in my life as well. (However, I don't usually give just an hour )

And it was GoodMorning[another word].com. Three words.

 

[IAmAllanShore]

Because (At least there is the great possibility) that you were infringing on their mark, and that an offer to "settle" would end up being your paying them, instead of the other way around. It is quite possible that you were lucky that the attorney advising their client did not view it as more beneficial in the long run (Billable hours as well as client posturing for future potential infringements) to choose to go the route of UDRP, or ACPA or Lanham act claim which could cost you a great deal more than just your time and domain name.

So, no, that's not what lawyers do with each other; although I admire the creative analogy.

-Allan

 

[DNQuest.com]

Just to let you know, if TM holder went through the ACPA, they would definitely ask for legal fees. That means in the end, the TM would not spend any of their own money, they would be using yours. That is in addition to any other monetary awards they are awarded.

 

[AdoptableDomains]

I can think of a name that is a two word name, but very generic, along the lines of "GoodMorning.com" Well, someone could very well have a TM to make t-shirts with that name, or a TV show might be called that, etc. Some may have the actual TM and some may just be in business. How can it be possible for anyone to claim that I had intended to use such a name to compete in the same business area if it is unparked, etc.? I can understand if it is a unique name like ZippieDoDahLables.com or something, but not something like a common phrase.

Input please? Thanks.

You might even be worse off if unparked. That leaves you no evidence that you didn't intend bad faith, even if only in the mind of the person deciding the case. If you came up with apple.biz, it might be better to park it on a page that included only fruit or food keywords and disallowed computers, music or phones. It's not foolproof, but it would show you specifically weren't trying to feed off Apple computer or Apple records lines of business making your case stronger and thiers more difficult. On the one hand it might be used to show you knew of their TM by the blatant avoidance, but could also used to show your lack of bad faith in use. If there's a question, FIND a non-infringing use before you have to defend yourself.