Screamingpcs TM has got me screaming

[opalxx]

Have just got a legal letter from the US (i'm in Oz) that a domain i have (screamingpc) is trademarked. Apparently screamingpcs (note the s) is trademarked. Never would have thought this name would have been trademarked. Bought it only because of the quirky name.

Apparently Mr Smith (the owner of screamingpcs.com, screamingpcs.net and screamingpc.com) has advised his legal eagles that i am using the name in connection with a website that has previously offered a search and is being used as a search engine for internet service. Huh??? This name is parked at parked. Then says my continued registration (i've only registered it once) and continued use is an infringement of the trademark.

I have been instructed to take down (whatever that means) and transfer the name to Mr Clyde Smith.

Cease use of all marks that contain screamingpc.

Cease any internet links, websites.

Provide an accounting of revenue (which is easy, it's 0).

Provide a reply from the date of the letter (just got it yesterday so its past the 15 day reply mark).

So, what do you think? Do i delete the name or transfer it to Mr Smith????
I know what i would like to do with it!!!

Your thoughts are appreciated.

 

[DN BROKER]

first do a search on US Trademark Database.. and make sure the words are listed and LIVE as a TM.. if it is a TM, just delete the domain and forget about the TM holder. I always say, DONT PARK your DOMAINS...

 

[weblord]

i can't see any trademark on that word?
here try it
http://usasearch.gov/search?v:proje...=26&y=13&form=advanced-firstgov&v:frame=form&

can you advise Mr Smith re trademark proofs of that keyword?

 

[Ronald Regging]

If you search www.uspto.gov you'll find that he does have a TM on the term Screaming PCs.

 

[weblord]

thanks for the headsup, i almost forgot that.
for the op: better drop it or submit to the tm holder

If you search www.uspto.gov you'll find that he does have a TM on the term Screaming PCs.

 

[jberryhill]

you'll find that he does have a TM on the term Screaming PCs.

...and issued after the date of registration of the domain name by more than a year.

 

[Hurley4540]

...and issued after the date of registration of the domain name by more than a year.

:lol: !

 

[weblord]

i still can't see it, anyways so op wins.
money wars continues..

 

[opalxx]

...and issued after the date of registration of the domain name by more than a year.

What does that mean? That the trademark was applied for and granted a year after the domain was first registered by someone else? The trademark registration number is 3245359 so the legal doc tells me.

They are instucting me to transfer the name. Should i delete it instead? How do i delete a domain name registered thru godaddy?

They must be spewing having the net and not the com. I wonder why they didn't bother registering it when it was available. Couldn't have wanted it very much!!! I wonder why trademark checks aren't the responsibilty of the seller.

Thanks for your help folks. I have been instructed to reply so any more info would be grateful. They are threatening me with the fullest extent of Australian law. They'd have to find me first and i presume it would take many years and cost many many thousands!!! I might see if squealingpcs is available.

 

[DN BROKER]

if they registered the TM after a year of REG... i would then not park the domain.. I would direct it to a single blank page.

Advice the TM holder, that their actions are been recorded for bad faith as well. Its called reversal Highjacking... and state that legal action will be taken to cover the damages caused by their attitude... and also state, that they are more then welcome to make an offer... but do not discuss anything related to you wanting to sell the domain.

All the best!

 

[jberryhill]

They are threatening me with the fullest extent of Australian law.

...with a US trademark registration.

Good luck with that.

 

[ESPtraces]

Agree with the above. He needs to have an international trademark in order to do that. And, they are pretty expensive. Furthermore, if he applied for one right now, then it wouldn't help his case because you registered that domain prior to his trademark application.

 

[labrocca]

If he goes WIPO route though isn't it likely he would lose Mr. Berryhill? I mean on face value of course as I haven't gone beyond this thread to investigate.

 

[gjvblack]

Dont not even think of transferring the name to him. If you he wants it, he has to buyt it off you and check his trademark to see if it is a international trademark, if its not then he basically cannot do anything. Many owners like that ask you to transfer the name. You cannot be held for anything because you did nothing wrong and you no content on the website that violated the copyrights of him. The name can be sold to him but dont give it to him for free...never.

 

[jberryhill]

If he goes WIPO route though isn't it likely he would lose Mr. Berryhill?

I have no opinion on that question, nor have I stated one.

 

[Dave_Z]

...and issued after the date of registration of the domain name by more than a year.

General question using this "case", John. When, if ever, does the date of use
in commerce (20051011 in this one) possibly make a difference, even though
the domain name was registered before its "namesake" application was given
its registration date? (sorry, just can't readily think of the right words...)

(Then again, this application also has a disclaimer...)

 

[labrocca]

check his trademark to see if it is a international trademark

There is no such thing. A WIPO is about as close as you can get for domains though. They have complete jurisdiction over the internet domain name system for most extensions. Short of being sued in court WIPO can take any domain away in a UDRP decision.

As for the "no comment" from Mr. Berryhill. I had a feeling that's how you would answer. But either way...it's going to be up to the OP to figure out how to handle this.

 

[jberryhill]

When, if ever, does the date of use in commerce (20051011 in this one) possibly make a difference, even though the domain name was registered before its "namesake" application was given its registration date? (sorry, just can't readily think of the right words...)

You're not going to like the answer, but on that general question, I have to go with the lawyer's answer and say "it depends", because there is no mechanical answer to the question where you drop in the various dates of filing, first use, registration and domain registration, and come out with a binary answer.

Part of the reason for that is that while, yes we are at a domain forum and that's why we care about trademarks, the trademark registration system wasn't built to specifically address domain name conflicts. Conversely, the domain name system isn't built to embody trademark law.

There are also some differences in the way that intent-to-use (1b) and use-based (1a) applications are treated under US law. Similarly, there are differences between Supplemental and Principal registrations, and registrations which are noted 2(f) (designated acquired distinctiveness in a descriptive term).

What I have said before, but not so much recently (having become a little tired of people demonstrating their inability to appreciate the point) is that when you are looking at a data record in the USPTO, you are looking at a collection of data which, as a whole, paints a larger picture than is captured in any single data item. They all matter. Whether any particular datum is critical in a particular factual context, is going to depend on the factual context.

The alleged date of first use in a US trademark registration under 1(a) is simply an allegation. It is not relied upon for any substantive purpose during examination, but is a required allegation to file on the basis of having used the mark sought to be registered. (Okay, I can think of one situation where it might matter, but it's not important for the purpose of this discussion)

Your question about dates in a USPTO are not as important as what the UDRP is essentially driving at - Why did this person register this domain name? If there are circumstances indicating that the domain name was registered with an intent to damage or exploit the goodwill embodied in someone else's mark, then I don't care what the dates are, and neither will a UDRP panel.

However, if there are reasons to conclude that the domain registrant had no actual notice, or duty of constructive notice, relative to the claimed mark; and the claimed mark is not so inherently distinctive that the domain registration couldn't have been registered for some other reason, then one can use that set of dates, and the underlying commercial activity of the TM claimant, to demonstrate whether it was more likely or less likely that the domain registrant would have had any idea there was a TM claimant at the time the domain name was registered.

Technicalities matter... when they matter.

As for the "no comment" from Mr. Berryhill. I had a feeling that's how you would answer.

I had a feeling you had that feeling.

Let me add one single hypothetical fact to the situation, and then ask you whether he would "win or lose a UDRP dispute":

Let's say there is absolutely no reason why an Australian would, or even should, know of a pending US trademark registration application. And, indeed, an Australian has no duty to know of such a thing. Let's also say that the TM claimant's website was a piece of crap at the time the domain name was registered, and the TM claimant was the 10,000th Google search result for "screaming PC".

Okay, so far, so good.

NOW let's say that the wife of the TM claimant's president took a vacation in Australia and had a mad, passionate affair with the domain registrant and decided to leave her husband and stay in Australia. The TM claimant then flew to Australia, got into a nasty fistfight with the domain registrant, and they both suffered a few injuries and became permanent mutually-hated enemies of each other.

A week later, the domain name was registered.

Now, with that fact in mind, would you conclude the domain name was registered in good faith or not.

You can't always just focus on a set of dates in a trademark record, absent a world of other potential facts.

 

[RicoShay]

:D One of the best examples / hypothetical situations I've seen posted here on NP

Since I have little knowledge about TM's and law side of domaining in general - in fact reading most of jberryhills post got me all confused, seems like a different language!! - so anyway, can't give much advice to the OP...

But I would recommend that you look into it a bit more. Personally I wouldn't give the domain up - but I would move it away from parking and leave it blank.

There might come a day when I have a similar situation with one of my domains and I really wouldn't know where to turn - this would be the first place I would come and I'm glad there are good knowledgeable people here who would offer some advice.

Namepros is amazing!

Anyway... as you were.

 

[DN BROKER]

Thank you for the 101... I learned something!