Trademark Question (LLC)

[Avabelle]

A company has applied for a trademark under the name of one of my domain names. They have added LLC to the name.

Do I need to fight this trademark application in order to protect my domain name? Not sure what LLC means?

Thanks in advance!

 

[jberryhill]

I mean the scenario when this domain in question (owned by OP) is used strictly for local business activity in Canada...

Well, I'm not aware of the domain name, how it is being used, or where this trademark registration application was allegedly filed. Perhaps I missed something in the brief comments posted by the OP, so we don't know whether we are talking about a USPTO application and a domain name used for strictly local business in Canada, or whether we are talking about a CIPO application.

Certainly, with a US trademark application, one does not "apply to fight the application" unless one is talking about a full-blown opposition proceeding, which is an administrative trial proceeding that certainly goes well beyond simply "I applied to fight the application".

What it sounds like to me is that the OP received one of those scam emails of a common variety in which the email claims that a trademark application has been filed somewhere, it has been spotted by the helpful sender of the email, and they will fight it for a fee of some sort. This is a very old scam, which pre-dates the internet.

But, hey, the OP has been offered the personal help of someone with zero experience in trademark disputes, and who said he didn't know what UDRP stood for until a few weeks ago. What could possibly go wrong?

I'm much more concerned that the OP is being taken in by a scam, than in any guesses as to whether there is, or is not, some reason for the OP to be concerned about a junior trademark registration application, wherever it might be. But the original poster doesn't seem particularly interested in reaching an informed answer.

 

[Cruncher]

I don't believe showing old leaflets with some text on would prove trademark and rights to a specific domain.

Afterall,anyone could print some leaflets off and say they are from the 1980's and start demanding 3letter domains to be transferred to them!

 

[jberryhill]

Afterall,anyone could print some leaflets off and say they are from the 1980's and start demanding 3letter domains to be transferred to them!

That's easier said than done.

I've actually seen instances of this sort of thing in domain disputes. The problem is that if the Complainant is, for example, ExampleCorp Ltd. of the UK, and you go to the UK Companies House site and find that ExampleCorp Ltd. was formed in 2005, then those leaflets are going to be a problem.

In one case I defended involving forged evidence, this was pretty easy to figure out. The Complainant is a CPR training company, and they had presented a sample "Certificate of Completion" of their training course bearing a date of 2003. The problem was that the "Certificate" stated the person had completed a training course for a method of CPR which did not exist until 2005:

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0823.html

Although the certificate was apparently intended to provide evidence that the Complainant has been using a PROCPR trade mark since at least April 8, 2003, it seems clear from the standard form wording on the certificate itself that the document would not have come into existence until 2005 or later. The Complainant has not provided any explanation for the insertion of 2003 and 2004 dates on a form of certificate which, on its face, would not have been in existence in those years.

 

[Cruncher]

That's easier said than done.

I've actually seen instances of this sort of thing in domain disputes. The problem is that if the Complainant is, for example, ExampleCorp Ltd. of the UK, and you go to the UK Companies House site and find that ExampleCorp Ltd. was formed in 2005, then those leaflets are going to be a problem.

In one case I defended involving forged evidence, this was pretty easy to figure out. The Complainant is a CPR training company, and they had presented a sample "Certificate of Completion" of their training course bearing a date of 2003. The problem was that the "Certificate" stated the person had completed a training course for a method of CPR which did not exist until 2005:



Although the certificate was apparently intended to provide evidence that the Complainant has been using a PROCPR trade mark since at least April 8, 2003, it seems clear from the standard form wording on the certificate itself that the document would not have come into existence until 2005 or later. The Complainant has not provided any explanation for the insertion of 2003 and 2004 dates on a form of certificate which, on its face, would not have been in existence in those years.

Good point there,but if the company was proven to be around in the years stated,then fraud in these types of cases could be quite easily committed.

 

[jberryhill]

Good point there,but if the company was proven to be around in the years stated,then fraud in these types of cases could be quite easily committed.

Like I said, it's easier said than done. If a product has been on sale for any length of time, it is difficult to claim that "oh, we advertised since 1995 with these leaflets" when there is simply no digital trail of anyone mentioning the product anywhere else. I've seen a lot of crappy UDRP complaints and a lot of bogus evidence from fairly sophisticated companies. The entire point of trademark rights is that the mark embodies goodwill and reputation among relevant consumers.

Most of the time when a UDRP is filed, the complainant does not even expect the domain registrant to show up, so they don't put in a lot of work with the expectation that false statements will be scrutinized:


http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-2179

The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000. Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International registration and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature.