opinion Trademarked Name - To Dispute or Not

[Cush]

I have a friend who launched a business and obtained a Trademark from the USPTO for the spelling of the business name and a typo of the name. He owns the domain for the correct spelling, but not the incorrect spelling. Upon searching a WHOIS record for the domain typo, it shows that it was registered two days after the Trademark approval from the USPTO. The price it is listed for is not a huge sum, but not a small amount either. It's the amount that a business will say "this stings, but let's just pay it and be done with it".

I advised my friend to take this to ICANN because he owns the trademark for the name and therefore shouldn't have to pay a five figure sum for a 2 month old domain that was never registered before. He is thinking about just paying it and being done with it.

I understand the quick solution to this is to pay the seller and move on, but how long does the dispute resolution take with ICANN if you have the proof that you own the trademark prior to the domain registration and the seller (likely) just scraped the USPTO database and cross checked it against unregistered .com names to flip the names to the proper trademark owner?

 

[Bob Hawkes]

I believe the UDRP process is normally completed within 60 days (that time period is mentioned in this guide to the process that may be helpful in other ways as options are considered).

https://www.wipo.int/amc/en/domains/guide/

It also gives the cost of the process, independent of any advisory or legal fees incurred.

For a case involving between 1 and 5 domain names, the fee for a case that is to be decided by a single Panelist is USD1500 and USD4000 for a case that is to be decided by 3 Panelists.

Note that should the registrant agree to settlement prior to the case being considered my understanding is there is a lower fee (I don't recall the amount right off).

-Bob

 

[bmugford]

I advised my friend to take this to ICANN because he owns the trademark for the name and therefore shouldn't have to pay a five figure sum for a 2 month old domain that was never registered before. He is thinking about just paying it and being done with it.

Five figures covers quite a wide range. Does that mean $10K or $99K?

I have no idea on the merits of the actual case.

A dispute is going to cost thousands of dollars between the filing fee, lawyer fees, and possible fee for a three member panel.

Practically speaking, sometimes it makes more sense to buy a domain than spend thousands of dollars with no certainty of what will happen.

Brad

 

[draco]

Your friend can probably get a free consultation with a trademark attorney to evaluate the case. Find one that has experience with domains and UDRP's.

I hope your friend doesn't pay. It only encourages this sort of activity. And you can bet that the person will come up with another typo version of your friend's domain to try to sell it to them too.

 

[Gabriel360]

Get your friend to reach out to @jberryhill to evaluate the merit of the case.

If it's something that is a BLATANT violation of your friend's trademark, a well-drafted cease and desist letter may compel the registrant to delete or transfer the domain name.

 

[jberryhill]

how long does the dispute resolution take with ICANN if...

The length of time is independent of the facts. This is typical of a case in which I represented a complainant:

------------
https://www.adrforum.com/DomainDecisions/2084180.htm

Complainant is Chai Research Corp. ("Complainant"), represented by John Berryhill, Pennsylvania, USA. Respondent is Philipp Lukits / ECOM BROS Media e.U. ("Respondent"), Austria.

[...]

Complainant submitted a Complaint to Forum electronically on February 16, 2024.

[...]

Accordingly, it is Ordered that the <chaiapp.pro> domain name be TRANSFERRED from Respondent to Complainant.

[...]

Dated: March 22, 2024
--------------
In that case, as is typical of most UDRP proceedings, the respondent didn't show up, so there wasn't much for the panel to do. But 45 to 60 days is a typical range.

The filing fee at ADRForum, in contrast to WIPO, is $1350. At the CAC (another UDRP provider), it is $800-$1100, since they charge an optional additional $300 if it looks like the case is going to be complex.

The time required to write up the complaint, and hence the cost, depends on the facts.

A lot of folks think they just fill out a form, pay the fee, and get a domain name. But you do actually have to have some idea of what you are doing, what you are required to prove, and what evidence you might want to present to prove the three things you need to show.

As also mentioned above, whether the UDRP is or is not a good fit or a good first move, also depends on the facts.

 

[jberryhill]

Your friend can probably get a free consultation with a trademark attorney to evaluate the case.

Yup. I'm happy to look at something for a couple of minutes for an initial read. If people keep asking me questions after that, then I'm going to want to know who is paying for my time.

 

[DomainNature]

What if that is just coincidence that someone registered another domain that look similar?
Sometimes I reg shorter domains or with repeating letters to create brandables, even if it's 2 word combo domain not only out of dictionary words. Only by coincidence I may chk the TM website and find a TM or not, I don't care about that much when I reg them.

 

[bmugford]

I think the "bad faith" prong is a higher bar than some people realize.

What type of trademark is it?

Is it fanciful, arbitrary, suggestive, descriptive, etc.?

Does the term have an established history of usage predating the trademark approval?

Simply registering a trademark does not automatically give you global protection for every possible usage, as well as all possible typos.

Is the domain being used in some trademark infringing manner?

Do random people really browse the TM database in order to register typos of newly approved trademarks?

Regardless, no matter the facts of the case, you would need a qualified lawyer to actually craft a proper complaint.

Brad

 

[camcon]

I have a friend who launched a business and obtained a Trademark from the USPTO for the spelling of the business name and a typo of the name.

Maybe I'm missing something but I don't understand why your friend would trademark both the correct spelling and a typo version. Does he use/trade under both? If not, it's maybe worth noting that non use of a trademark can make it vulnerable to challenge and cancellation.

 

[Cush]

Just to clarify, the name is nothing common and due to the complexity of the name, he mistyped it during the Trademark registration process. It is a rather long single word name. The fact that it was a FRESH registration 2 days after the approval of the trademark is what leads me to believe it was a bot scraping the newly approved Trademarks. Also, it was immediately put up for sale on DAN. I tried to make an offer below what they are asking, but the seller is not accepting any counter offer.

As some of you pointed out above, it will likely be cheaper and quicker to just pay than to hire attorneys and wait for the resolution of the dispute....

 

[Recons.Com]

Just to clarify, the name is nothing common and due to the complexity of the name, he mistyped it during the Trademark registration process. It is a rather long single word name. The fact that it was a FRESH registration 2 days after the approval of the trademark is what leads me to believe it was a bot scraping the newly approved Trademarks. Also, it was immediately put up for sale on DAN. I tried to make an offer below what they are asking, but the seller is not accepting any counter offer.

As some of you pointed out above, it will likely be cheaper and quicker to just pay than to hire attorneys and wait for the resolution of the dispute....

An interesting case. If it is a long made-up name, why you assume that just this one typo is possible? Have you TM-ed and bought .com for all other possible ones? Or is it that this one specific typo is the most intuitive when trying to communicate the name orally? Why you bother so much about the typo? E.g. if even you have some short name, there are lots of possible permutations for typos and many of those are good brandables in their own right. You don't go trying to reg them all and just deal with some acceptable % of leaks. Unless your friends site is anticipated to have huge traffic and facing the general public globally, the leak will amount to negligible number.

Imagine those poor bastards at Lyft leaking the traffic to the typo of their name in Lift.com

 

[Jannes]

Just wait. The scraper-seller probably doesn't even realize that the domain is just a typo version and isn't badly needed, so if there's no interest from your friend (who else would buy it?), the seller will eventually lower the price and then most likely drop it. On the other hand, if the seller or anyone starts using the domain in bad faith, then take legal action.

 

[Goku]

If the amount is not huge as mentioned, just get it and carry on. As your business will grow, the person who owns the typo domain will just start expecting more money.

 

[zomainhacks]

Yup. I'm happy to look at something for a couple of minutes for an initial read. If people keep asking me questions after that, then I'm going to want to know who is paying for my time.

If you create a crash course on domain disputes I'll be the fisrt to give you my money!

 

[jberryhill]

What if that is just coincidence that someone registered another domain that look similar?

Whether a domain name is identical or similar to a trademark is one of three things the complainant must prove in a UDRP dispute.

The other two things boil down to "what was your intent?"

But if you are buying names and putting them on sales landers, then "what was your intent?" is going to be reduced to whether or not anyone is going to believe you.

If you register MickeyMouse.tld and say, "Oh, I registered the domain name to honor my beloved pet mouse Mickey" then nobody is going to believe you.

As @bmugford eloquently explained above, there are a lot more factors that go into these things. But, that said, it's always worth having a look at what the daily grind of UDRP cases looks like:

Here's a chunk of cases filed in the last few days:

You see any winners in there for the domain registrant?

I don't.

Thousands of these stupid things every year, because dumbasses keep registering names like this. The only one I had to Google was "The Anantara", which is apparently a large hotel chain.

 

[jberryhill]

Maybe I'm missing something but I don't understand why your friend would trademark both the correct spelling and a typo version.

Most likely, the OP doesn't understand what they are saying. No, you can't register a mark that you aren't actually using.

Most of the time, people are talking about filed applications, not issued registration. In the US, it is currently taking around nine months before an application is taken up for examination:

https://www.uspto.gov/trademarks/application-timeline

Just to clarify, the name is nothing common and due to the complexity of the name, he mistyped it during the Trademark registration process.

Yeah, that's pretty much nonsense. In order to register a mark in the US, you have to show that you are using the mark in commerce, and submit a specimen of use. If the mark was mis-typed in the application, then how your friend showed use of the mis-typed mark in order to obtain registration is something of a mystery - unless of course your friend started using the mis-typed version of the mark in order to register a typo of his actual mark. But that would be kind of silly.

One can submit an application on an intent-to-use basis but, again, even if it is deemed registrable, it is not going to be registered until the applicant submits proof of use of the mark on their goods and services. So, the facts don't add up here.

 

[Cush]

Thanks for all the input from everyone. I shared the insight a lot of you provided and he opted to pay the seller to own the misspelled version.

I know some of you asked a question as to how he filed or showed he was using a name in order to trademark it, and that was done through the use of logos / branding that were uploaded to the application. Due to the length and complexity of the name, he had registered (example) ACBDEFG and the real name is ABCDEFG.

Appreciate all the insight from everyone. I really value this community and it's knowledge.