Trademarked domain name

[Icarus]

I own the trade mark (not registered) for a software product and as it is a unique name I also own copyright to it.

The domain name ????.com name was stolen some years back. and used for typeins much to my annoyance but I could not afford to go through the reclamation process I just let it ride. (I never imagined how popular the name would become)

A while back I got shirty so I wrote to the registrar and the owner and his laywers and told them I would take legal action if the did not stop using the domain. to my surprise it was stopped. and typing in the domain name now gets a 402 forbidden message

Great my letter had some success.

Now the domain is due for renewal. and I want it, but being cash strapped I dont want to pay snapnames etc. to steal back what is rightfully mine.

So I was wondering if I could send a letter to the .com registrar and advise them of my legal ownership of the name and that they are not permitted to sell the name.

I figure it this way, the registrar is essentially the publisher of the name, given that if they sell it (profit from it) they are in breach of both copyright and trademark laws.

As such I have a legal right to demand that they do not sell it to a third person.

Does that sound reasonable?

Has anyone ever sued a registrar for selling copyrighted material. I would think the chance of success was very high

What are my chances of blocking any further sale of the name to any one other than myself?

 

[Dave_Z]

Assuming the domain name was never deleted and re-registered after it was
allegedly stolen, your actual only challenge is to prove the name was indeed
hijacked from you.

This won't be easy to resolve since the domain name has already expired, so
it's now the registrar who technically "owns" the name 'til it's either renewed
or deleted due to non-payment. And they have no obligations whatsoever to
anyone regarding the expired name except to allow its last registered owner
to renew it or not.

But hey, you can test the waters if you feel otherwise. Sometimes it never
hurts to try.

 

[Icarus]

Sorry you missed the point entirely

The Domain Name is my intelectual property. I "OWN" it because it IS my trademark.

When I say stolen I didn't mean hijacked.

My point is the Domain Name is my intelectual property and therefore NO-ONE registrars included has the right to trade on it.

for an example

If ICANN sold the domain name cocacola.com I believe Coke could sue ICANN because ICANN has no rights whatsover to trade on the words coca cola

By selling the name to a third party ICANN are in fact "publishing" the name and therefore are subject to copyright and trademark laws.

By extension if ICANN allows a registrar to sell cocacola both the registrar and ICANN have breached copyright. (and the new owner of course)

The reason Google and Yahoo and MSN have a copyright claim procedure in place is not because they are nice guys. but because they realise that its possible for someone to sue them for showing copyrighted material, even though they are only a search engine.

So my argument is I could sue ICANN and any registrars as well as the eventual owner of the domain name for breach of copyright

 

[jberryhill]

By selling the name to a third party ICANN are in fact "publishing" the name and therefore are subject to copyright and trademark laws.

Bulldada. They are specifically exempted under 15 USC 1114:

http://www4.law.cornell.edu/uscode/html/uscode15/usc_sec_15_00001114----000-.html
(iii) A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.

In other words, you'd have to show that ICANN had a specific knowing intent directed at your domain name. Since the domain name registration system is an automated system, nobody at an office in Marina Del Ray was sitting around one fine day thinking, "Let's go screw this guy".

Classic uninformed bluster.

In fact, prior to the ACPA, and still included, section 1114 was intended to address nitwits who would sue phone book publishers and newspapers because some third party had taken out an advertisement therein which infringed a trademark. You might find the entirety of section 1114 to be educational concerning your utterly wrong notion that publishers of third-party material are liable for trademark infringement. They aren't, and that's the clear meaning of the law.

 

[abs636]

Good info to keep in mind for the future...

 

[DNQuest.com]

Just a suggestion, maybe you should read the many threads here before you post anything else.... PLEASE!

You obviously don't know the domain process, so read up and learn the process.

BTW- domain names can not be copyrighted.

I will give you a point which you are 100% correct, you can sue anybody you like. Having a case is something else, and you don't have one.

 

[Icarus]

Thanks jberryhill I was not aware that domain names and vendors were exempted

As a website owner does that protect me from being sued for registering cocacola.info, as long as I dont mention any coca cola copyrighted information on the site?

 

[jberryhill]

Thanks jberryhill I was not aware that domain names and vendors were exempted

As a website owner does that protect me from being sued for registering cocacola.info, as long as I dont mention any coca cola copyrighted information on the site?

No. The point of the exemption is to protect ICANN, the registries, and the registrars from the kind of thing suggested above in this thread - i.e. being held liable because someone registered an infringing domain name.

If YOU register cocacola.info, then not only are you NOT a "domain registration authority" referenced in the statute, but you also know exactly what you are doing.

If you are a registrar, then you have no idea what your customers are registering on any given day. You run an automated system, subject to ICANN rules, where people come and register whatever they want. In that situation, holding the registrar liable for some sort of intentional bad faith act would be silly.

 

[Icarus]

Thanks for the clarification

It seems to me though that the current rules prevent the appropriate authorities from being pro-active. why bother if there are no repercussions

A lot of expense could be avoided by allowing trademark holders to register trademarks. If someone then attempts to register a trademark they are notified a claim is held over that phrase.

I get people registering all sorts of variations of my trademark in multiple ways. All for the purpose of stealing traffic from me.

The trademark is unique so I am confident in that prior statement.

The current resolution system is far from perfect. As the trademark owner I have to bear the full cost of reclaiming what is rightfully mine. People are free to register hundreds of variations.

The theft of my names is invariably registered to countries where the owners are effectivally out of legal reach.

Then there is the current trend of registrars to allow people to anonymously register. (I am sure this is in breach of ICANN rules) so in effect trademark theft goes unpunishable.

If ICANN allowed a trademark owner register their trademark and then simply either refuse registration of any domain that uses the trademark as part of the domain. or provide some sort of mediation service that would be at the cost of both parties.

ie: The registering person would apply for the name. The database flags it as contentious.
The registering person would then need to deposit a small sum to start the mediation process. the owner would be contacted and they to would have to deposit a sum to continue the mediation process. If they fail to respond the registration is automatically approved.

And so on until a winner is declared the loser pays the costs and the winner whether the trademark owner or the other party has their funds returned.
So they had better be sure before making their claim.

As it is currently, it is virtually impossible to protect ones own trademark. As the owner I have to pay for the process. Whether I win or lose the cost is mine. and that truly sucks!

Unless the system has changed recently.

 

[TheRaceCard]

Brand identity, dilution and protection

Protecting one's trademark is serious business. If at any point you fall short of your responsibility to vigorously protect said mark, you risk losing the umbrella of protection provided by a registered trademark. Waiting 2 or 3 years to dispute an integral component of your brand's presence does not serve your case very well.

Furthermore, the registrars exist to facilitate EASE of COMMERCE. They have no business pre-qualifying MILLIONS of consumers daily, who are likely NOT in violation of any trademarks. Merely having a similar phrasing or letter arrangement does not an infringement case build. Also, what about trade and service marks which carry symbols, and or images? How do the registrars protect their interests?

Having been both the sender and recipient of cease and resist letters, I can tell you that IP litigation is can be expensive as heart surgery. Simultaneously protecting your brands and preparing to squash any infringers, is all you can do. Which leads me to my next point; trademark and copyright disputes are civil matters, subject to civil, not criminal prosecution. Granted there are crimes associated with IP infringement. However, it might clarify things for you to get over the concept of being stolen from....even though that's how it feels.

This is my first post, so pardon any unspoken rules I may have broken. I am sure to be a fixture here. This is an awesome forum...kinda like AA for domaniacs.

 

[Zeeble]

Just a suggestion, maybe you should read the many threads here before you post anything else.... PLEASE!

You obviously don't know the domain process, so read up and learn the process.

BTW- domain names can not be copyrighted.

I will give you a point which you are 100% correct, you can sue anybody you like. Having a case is something else, and you don't have one.

You are right a domain cannot be copyrighted or Trademarked, but the name can and the domain name is uncluded under that. So, take coca cola as an example Coca Cola is TM'ed (registered or not, it doesn't make too much difference), if I registered CocaCola.xxx Coca Cola could take legal action and would win, as the TM belongs to them for the name, and I have no right to use.

 

[Badger]

I would suggest, (bowing to JB's learned knowledge) that your recourse is futile unless the owner of the domain shows bad faith, i.e. (and this all depends upon the name and uniqueness of the product) if you own abc.com and you use it as a spelling and learning site for infants, the broadcaster of the same name wouldnt be able to take this name from you. However if you have a brand called "blahblahblah" which was unique, then any registration would struggle to defend its actions against your claim on the name.

If you cannot afford any potentially expensive snap auction e.g. then await its snap and then send the new owner a c&d letter. Otherwise, bid away with everyone else or try and get the current owner to sign it over to you before it drops...

 

[Icarus]

The current owner has just re-registered for another year. Why I don't know there is no site there at all.

Perhaps it is just to spite me. or perhaps to egg me into an expensive action just to try and drain funds from me.

The uniqueness of the name is beyond dispute, The software it refers to is unique and has been marketed since 1997 and advertised since 1996.

Although I am in Australia the primary market is the US and the secondary market is the UK

If I was to launch a UDRP claim. would the fact that it has not been used to host a site since my letter to him strengthen or weaken my case?

If I succesfully challenged the current owner in a UDRP claim would that strengthen or weaken a future civil claim against the defendant?

The current owner registered it to catch typeins (that was even the name of the redirection script)

I should also note the current owner has defended and lost at least one UDRP claim before, it seems he makes a habit of this.

Is there a way I can discover how many typins the name gets? this would then help me determine whether its worth the cost of reclamation.

 

[jberryhill]

Why I don't know there is no site there at all.

and...

The current owner registered it to catch typeins (that was even the name of the redirection script)

Make up your mind.

 

[Icarus]

registered it, past tense.

If you read previous messages you may have noted that he took down the site when I sent a cease and desist.

currently its unused, previously it was used to catch typeins.

Sorry for the confusion.

 

[Badger]

So the reaction to the C&D was to ignore it? Did you say when you wanted the name handed over by? His registrar probably renewed automatically. Have to say this is all very difficult not knowing the product / domain etc etc etc.

 

[Icarus]

Yes he ignored the C&D in that he didn't acknowledge it.
No he didn't ignore it in that within two weeks the site was off the air. I can only assume it was because of my C&D.

If I recall I requested the name be deregistered within 21 days I didn't ask for him to hand it over. (transfer ownership)

 

[DNQuest.com]

ok, stupid questioins here.

Why not tell us the name of the product since it has been in the market 1997 and advertised in 1996?
What is the name of the website?
How was it stolen the first time?
Why would you want him to deregister it and not turned over to you? (one, you can't deregister a name (thought it is possible to delete a registration a couple after at some registrars), two- putting the name out there for someone else to register doesn't make sense)

I ask these because if the domian is generic, then you may hve no shot at leglly getting it back. So if it was "stolen" because you didn't renew the domain and someone got the drop, you are out of luck. You said the name was unique, but state the domain is used for typeins. It doesn't make sense.

Just trying to see

 

[Icarus]

Thanks for your help guys

I am deleting this post as I feel it had too much personal information and it appears no one had any further comments to make.

 

[-db-]

This is my first post, so pardon any unspoken rules I may have broken. I am sure to be a fixture here. This is an awesome forum...kinda like AA for domaniacs.

We can always use another good legal mind here, especially one with a friendly personality and sense of humor. It's like a breath of fresh air in many ways. I'm looking forward to seeing you around, TRC.