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UDRP filed - Question

Labeled as UDRP in Legal Discussion, started by nonameman, May 7, 2017

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  1. nonameman

    nonameman Established Member

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    Hi,

    I just got a udrp (via WIPO) filed against us couple of days ago and need to respond by May 24. We are in USA.

    Complainant is from India (complainant lawyer is from India too) and they didn't have any registered TM in USA (in fact they still don't have any registered TM in USA per USPTO.gov search) when we registered the domain in Mar 2005. We don't believe we are infringing any TM.

    Their complaint basically relies on their common law TM from India as they claim.
    They only registered their TMs in Indian in last couple of years and submitted that as evidence of TMs.

    We also have evidence of running a information blog website on the domain in 2008 and then later we couldn't manage the site actively and shut it down and parked the domain. Parking page never displayed any link to or name of the complainant...just generic links. The entire blog and its pages, posts, etc are all archived in the wayback machine / internet archive and are accessible to anyone.

    We never attempted any contact with the complainant and the complainant never contacted us before.
    They claim common law TM in India and accuse us of registering domain to sell them later for huge sum (never did anything like this, never contacted them at all) and saying that we never had fair use for domain because they just submitted a recent snap shot of uniregistery parking page with generic links on it. They never mentioned that we had a full blog on it in 2008, may be they don't know about it.

    I am thinking of filing a response myself (can't afford a lawyer as I can't afford anything over 5 to 6 hundred...things are little tight) but have the following questions:

    1. Can I just send a simple response back in the email and attach a word document or pdf etc as a response to the complaint email we received.

    2. Do I need to use a specific form or response template to file response to WIPO?

    3. Is there any database that shows positive wording cases (such as parking is a bonafide business etc.) that I can use to refer to while preparing my response.

    I have just made all the notes of response points to write back after reading the complaint.

    Please let me know what you think.

    Thank you for your advise.
     
    Last edited: May 7, 2017
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  2. Kate

    Kate Domainosaurus Rex VIP ★★★★★★★★★★

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    You simply need to address the allegations made in the complaint.

    If you say that the domain name while parked, never showed any infringing links then the other party must demonstrate the opposite.
    If you say the domain used to be developed, you can demonstrate you had a legitimate purpose.
    You say the complainant filed a TM after you registered the name, then you couldn't have been willfully violating a TM that didn't exist at the time.

    And if you think the other party is lying or omitting important information, feel free to point it out. Even though they probably are not aware of past use.

    That's it, you need to address and rebuke the precise allegations made in the complaint, nothing less, nothing more. My advice would be to research the WIPO/NAF sites, perform a search against the complainant name (might have some history) and try to find similar cases.
     
  3. Lox

    Lox _____ VIP

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    WIPO Overview of WIPO Panel Views on Selected UDRP Questions
     
  4. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    While it may be "accessible to anyone", the panel is not going to know that unless you show it to them. There's not much clue in the OP as to what sort of word, phrase, or character string the domain name comprises. If the domain had some kind of relationship to your blog, then you don't want to simply handwave at it or say "go look at (some URL)". Some panelists are put off by that sort of "go look somewhere else" kind of approach, and won't go off on an internet safari to figure out what kind of defense you might have. You should explain when and why you registered the domain name - what made you think it would be a good one for your blog, and SHOW what you were doing with it. Print out examples from screenshots.com/archive.org, put them in date order as exhibits and DESCRIBE those exhibits in your response.

    Likewise with the later parking, LOOK at what the Complainant is claiming to be the goods/services in the mark and SHOW that the parking has had no relationship to those goods/services.

    EXPLAIN that you would have had no way of knowing of a supposed Indian common law mark at the time you registered the domain name. Where do you live? Would there have been any reason for you to know about them? What was their internet presence like at the time? Even now, does a Google search suggest this term is strongly or uniquely identified with them, or does it show that this is a common word/phrase/string used for all sorts of things - including your original use?

    If they are claiming that you registered the domain name for re-sale, point out that the UDRP refers to registration "primarily for the purpose" of selling it to the complainant or a competitor of the complainant. That's not really the same thing as looking to sell a useful word/phrase to anyone. What they need to prove there is that your 2008 registration was predicated on an intent based on knowledge of their mark. That was nine years ago, and it seems a little odd to say "the respondent did this in 2008 for the purpose of selling it to us" when you haven't contacted them in nine years. Point that out.

    Don't assume the panel is going to know or understand something that you don't provide them. Support your argument with evidence, and describe that evidence and what it means in your argument. You should explain what the exhibits show in such a way that it's not necessary to go look at them, even though they are attached, except to check your work.

    Do they simply claim that, or do they show evidence that they were using it as a mark in 2008? What kind of evidence of the fame and reputation of their mark do they show? Was this a small regional business about which anyone would have known? Or does their evidence show some minor use limited by geography/market, etc.?
     
  5. nonameman

    nonameman Established Member

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    Btw, we registered the domain in Mar 2005...more than 12 years ago and we will also point that we have never ever contacted them in that time to sell the domain.

    Thank you so much for all your inputs and guidance.

    It is highly appreciated.
     
  6. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    If there is no evidence of a pre-existing commercial reputation in the mark, it is sometimes helpful to do your own research into whether the company even existed at the time the domain name is registered. Don't take any assertions in the complaint at face value if they are not backed by evidence. It's surprising how often complainants just make stuff up.
     
  7. nonameman

    nonameman Established Member

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    Yes, I will make sure to check all that.
    Thank you!
     
  8. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    Sometimes.

    I always say that I try not to let a complaint get in the way of writing a good response. By that I mean that sometimes the complaint is such a POS that arguing down every irrelevant rathole in it is just not worth it, instead of explaining "here's when I registered the domain", "here's why I registered it", and "here's what I've been doing with it".

    Some complaints contain allegations that are not only dumb, but don't have anything to do with what the complainant needs to prove under the UDRP. If there's a clearly viable defense, then in those situations I will write the "response" to what would have been a better argument the complainant could have made. Because once in a while you get a panelist who doesn't care about the arguments either, but will construct a better argument than the complainant did around those facts.
     
  9. archers

    archers Account Closed (Disallowed)

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    Please share the Domain Name please. Thanks !
     

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