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Unregistered Trademark. The death of domaining?

Labeled as question in Legal Discussion started by Avtar629, Apr 16, 2019.

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  1. Avtar629

    Avtar629 MarketDN.com Gold Account VIP

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    I wanted to come back to this. Of course I'm not saying that words like You,Cheap,Tube,Street are not fair game.

    But as it stands all you need is some slick buyer who just wants your domain on the premise that you approached them because they own YouTube.com to see YouTV.com or YouParty.com.

    I've seen people send me emails saying "we emailed you because you have the same keyword as my domain and was wondering if you would like to acquire my domain with similar keywords."


    My real question which I did not ask is...

    What's stopping someone whom you've reached out to from hiring a hungry TM lawyer to threaten you? There is no cost to them is there? The lawyer will just pass on the cost to the defendant.

    The threats always end with we can come after you from anywhere between $5,000-$100,000.

    When faced with a threat like that even if the domainer feels they are right they have no choice and now the buyer has a brand new domain for the price of a threat.

    Again I'm not talking about a domainer who obviously made the mistake of registering the web address of YouTubes.com and then had the brass nuts to try to sell it to YouTube.com

    So is it now totally out of the options for domainers to contact potential buyers who have similar keywords I their domains.

    How can domainers operate a business when they can't approach potential buyers with similar keywords.

    Side note I think I just came up with a great idea to stop spammers who scrape the who's database.

    Tell the spammer to give the domain owners info. Then get a TM lawyer and send a cybersquatter complaint and get the domains handed over to you for free.

    That will stop all those spammers from harassing us all with their garbage domains.

    I don't even think a lawyer is necessary.

    All you need to say is "we are confident that we will win because you are trying to sell a domain similar to ours. Containing our unregistered trademark."

    I know I'll get chewed out yet again. But I lik asking questions no one else asks. Because someone on NP might find it useful.

    If this thread helps even one domainer my job here is done.


    Edit: again I'm not talking about whether they would win a case or not but whether they can threaten you will a lawsuit if you don't handover the domains you just tried to sell them.

    Since defending such a case a domainer would need to hire a lawyer and none will work for free until the case is won. Anyone can sue anyone these days. It's a game chicken basically. See who flinches first.
     
    Last edited: Apr 18, 2019
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  2. bmugford

    bmugford www.DataCube.com PRO ICA Member VIP ★★★★★★★★★★

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    This is not personal injury law, it is TM law. You are not going to generally see large settlements.

    I can't imagine many good lawyers are going to take a case on some type of contingency basis.
    Lawyers, like any other profession, want to be compensated for their time and abilities.

    But your premise is correct, and applies really the to legal system in general. Merits of a case don't always matter. You often get the amount of justice you can afford. It might be a messed up system in many ways, but it is the same in every field.

    Brad
     
  3. jberryhill

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

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    The words just come flowing out at random.

    Let's see if we can understand you.

    You are talking about domainers who can't afford a lawyer. A trademark owner is going to hire a lawyer who works for the trademark owner for free, because by some kind of magic, the lawyer is going to get money out of the domainer who can't afford a lawyer.

    Is that seriously what you are attempting to say in the hope that it makes sense to other people?

    If the domainer doesn't have enough money to pay a lawyer, then where is the magic money going to come from to pay the trademark owner's lawyer in your weird scenario?

    Lawyers work on contingent fee arrangements in the kinds of situations that Brad mentioned - personal injury suits where there is either a deep-pocketed defendant or an insurance company on the other side. The reason they do that is because they can generally negotiate a settlement that makes it worth their time - BECAUSE THEY KNOW THERE'S A LOT OF MONEY ON THE OTHER SIDE.

    There is no trademark lawyer who is going to work for free to threaten individuals in all sorts of jurisdictions who may not have a pot to piss in, and somehow get money out of people who don't have any.

    Explain this a little further. Let's use an example. Brad has a trademark on BLAH. You registered blah.tld and offered to sell it to Brad. Brad gets ahold of me and I say, 'No problem, Brad, lemme do this for free!"

    From the time I do that, to the time I get money out of you, please explain to me the steps in between those two things.
     
    Last edited: Apr 18, 2019
  4. Avtar629

    Avtar629 MarketDN.com Gold Account VIP

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    That makes things even more confusing.

    So a complainant would rather pay first to sue you than pay like $2,500 ridiculous. This is why I assumed complainants can do these threats freely because the lawyers always make it a point to add to the threatening letters.

    "If you do not respond to this letter by this specified you leave us no choice but to proceed. Any and all cost for legal fees up to $100,00 will fall in you in the event we win and we are very confident we will win"

    Or something along those lines.

    Statements like that almost makes it seem like these lawyers are working just like in a personal injury scenario.

    So there are no TM lawyers that work like this? Especially if they a "confident they will win".

    So the choice really is either hand over the domains in question or call their bluff and simply ignore their threat? And hope the complainant does not feel it's worth the $2,500 or $5,000 to proceed with a case.

    As it is in the real world, everyone is "confident" and sure if themselves until they are not.

    Again boils down to playing chicken.

    I'm sure there are tons of domainers around the world who do not know the finer minute details of TM law. If there weren't Jberryhill would be out of business.
     
  5. Kate

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

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    I think you are focusing too much on the law. Nobody knows all the laws.
    So common sense is your guide in life. For the more tricky situations or when you're in doubt you consult an expert or you reconsider your plans. Taking a break from domaining is an option worth considering too :xf.wink:
    You say you surrendered several domains to TM holders, so you're still not getting it.

    And contrary to what you say in your opening post, no it's not "standard operating procedure for any domainer to reach out to potential buyers who have similar keywords in their domain".
    In fact this is a slippery road if you don't know what you're doing.
    If you are confused just stick to generic domains that can be used for their generic meaning.

    As @jberryhill would say, try Google first. Type the name and see what you find - or don't find. Do you get matches for a famous company or something. You might still have a legitimate purpose for the name regardless, but then try not to step on their toes. Is that difficult ?

    Before you even ponder the legalities of your actions, you could simply stay away from garbage/TM domains that have only one possible end user. Spend your money wisely, buy domains that are assets and not liabilities.

    Maybe you could subscribe to UDRP rulings. Read the decisions, parse the arguments and you should be able to figure out what works and what doesn't. But @jberryhill already gave you so much advice, for free. It's worth thousands of dollars.

    There is a saying that a wise man learns from his own mistakes, a genius learns from the mistakes of others. So what have you learned from your own mistakes so far ?
     
  6. Avtar629

    Avtar629 MarketDN.com Gold Account VIP

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    I'll just let these domains go. My other upcoming sales will cover the loss. 1000x over. I just don't like the bullying aspect of it where they chose to hire lawyer. If you don't want to pay for the domain because you are cheap. Then leave it at that. I'll probably just let it delete by not renewing it. And they can handreg it.

    I've contacted developers before with address domains I guess this one just felt really backed into a corner.

    Others would just pass on the domain and register 123mainnj.com or 123mainjc.com.

    The $6 bucks is worth the laugh knowing how stupid you make these people feel lol

    "Oh I'm gonna develop a $25 million dollar property on 123 Main Street.

    We're going to build a website yadda yadda".

    Domainer: "oh really? Umm what's the website name gonna be?"

    Developer: " the address."

    Domainer: "oh so you got the .com already huh?"

    Developer : "yea. the address. Why?"

    Domainer: "I own 123main.com"

    Developer: silence.......

    It's a real ego killer. I think that's why these people feel it's worth it to pay a lawyer to go after you.

    They must be so pissed to go that far. Most just say "not interested".

    So you'd rather spend $2,500 - $5,000 out of pocket on a domain you could have bought for $2,500? And that's for two domains.

    I guess you can't predict "crazy". All part of the craziness that is domaining.
     
  7. jberryhill

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

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    That's not the full range of possibilities. Another option is to find out whether or not they actually have a reasonable chance of success and, if not, to explain to them quite clearly and forcefully that they will not win, and it will be a costly mistake for them.

    Of course, that option requires being correct.

    But, no, lawyers aren't writing c&d letters on contingency, and you still haven't managed to realize why it makes no sense to do so.

    I try to help people understand things by asking questions, because things that people figure out on their own manage to stick with them better than things that you simply tell them.

    But you blew off my question on what is the sequence of events that the lawyer actually gets paid in your "contingent fee threat letter" scenario. If you'd bother to actually think about it, you'd realize why it doesn't work.

    First off, if things worked the way you believe they did, then the WORST thing you can do in response to a c&d letter is agree to transfer the domain name. If you do that, then how does the lawyer get paid?

    But, secondly, you think there is a lawyer somewhere who is going to file lawsuits against people who don't have much money, in courts all over the nation, and then get judgments and then enforce those judgments, and having put months of effort into that, find out that the people they are suing don't have any money anyway?

    Back to the point above however, let's take everything I've said about what a trademark is, and take your hypothetical conversation above:

    ----
    "Oh I'm gonna develop a $25 million dollar property on 123 Main Street.

    We're going to build a website yadda yadda".
    ---

    "I'm gonna..." "We're going to..."

    What do those phrases suggest about whether or not they have a trademark?

    Another way of getting at the same point is to answer this question: For what goods or services does someone saying "I'm gonna..." We're gonna..." have a trademark?
     
    Last edited: Apr 19, 2019
  8. Chris Wright

    Chris Wright Just play along. It could be fun. VIP

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    Would you believe... that some of the best sales techniques don't involve killing any egos?

    You've referenced "playing chicken" a few times.

    If I send you a letter that says, "A car is headed towards you. Fast. It will NOT swerve." you'll probably swerve.
     
  9. Avtar629

    Avtar629 MarketDN.com Gold Account VIP

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    That's not the full range of possibilities. Another option is to find out whether or not they actually have a reasonable chance of success and, if not, to explain to them quite clearly and forcefully that they will not win, and it will be a costly mistake for them.

    I don't have the time nor the patience. this situation is just leaving a bitter taste in my mouth about domaining. So much so that I'm in the process now of liquidating my domains and just getting out of this.

    I've come to realize that no one is immune to this situation. All you need is just some quack who's ego you just crushed to have a grudge and hire a lawyer and pull one of these.

    This jerk started off acting interested had me wait for his "We'll get back to you" then an email from the lawyer and then an email from the jerk saying "we are not interested in these domains."

    made me laugh actually.

    I feel like I was just "told on" by the class geek to the teacher for picking on him. lol

    A "reasonable chance of success"? Anything is possible right? as it 50/50.

    I'll be honest. It's scary. I can't afford to be on the losing end of a URDP at $5,000-$100K?

    forget that. it's only $14. a drop in the bucket. lesson learned. yet again.

    Most domainers aren't lawyers and what we don't know will bite us on the rump.



    But you blew off my question on what is the sequence of events that the lawyer actually gets paid in your "contingent fee threat letter" scenario. If you'd bother to actually think about it, you'd realize why it doesn't work.

    actually I thought I answered it. maybe not directly.

    I assumed this company did not pay to hire a lawyer out of pocket upfront and instead made some arrangement where the "confident" lawyer's fees would be paid by me if and when they won the case.

    why?

    because the potential buyer was too cheap to buy the domain for $2500.

    (unless of course the hiring of a lawyer just to send a threat letter costs only $500 or $600 then it makes more perfect sense. But I assume lawyers cost more than that. or I could be wrong.)

    I am assuming all this because I don't even know what the cost would have been to hire a lawyer to send me this threat letter.

    so they were too cheap to buy my domains for $2,500 but they can afford to hire a lawyer to threaten me?

    makes no sense. lol this guy must really be pissed and is doing this to prove a point or on principle.

    but that's ok. soon as I got the letter decided already to hand over the domains.

    but not to worry. I'm drafting an agreement before the deadline.

    I'll let him and lawyer land on their own swords.

    I'll keep you all updated. It's been fun. Thanks all for all your input. bad or good. positive or negative. it's all input.
     
  10. Kate

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

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    Just buy better domains. Non-infringing domains.

    I have bought and sold hundreds of domains in two decades, never run into such problems. It's only a minority of domainers who get in trouble, that could have been avoided most of the time.
    If you have good names you may still have to deal with jealous people, tire kickers etc on the occasion, but people don't send their lawyers or (launch UDRP) on a whim.

    It's not that easy for an adversary to prevail against you if you don't give them the ammo in the first place.
     
  11. Avtar629

    Avtar629 MarketDN.com Gold Account VIP

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    True. Currently I am in yet another situation. but different in that I didn't register a domain because they already have a business. again pure accident. they started branding using my web address. I registered first. That is for sure.

    this time around buyer contacted me to buy the domain. I did not reach out. I did not even know they could be a buyer. just liked the name and regged it.

    reached out via Afternic for a price. It's a pretty big company. a simple Google found this out.

    Countered with $250K

    of course they want cheaper.


    They already hint at buying a cheaper .com.

    I suspect now their next move is to Trademark the term of my .com. and then buy the cheaper .com.
     
  12. jberryhill

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

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    [​IMG]
     
    Last edited: Apr 23, 2019
  13. JayT

    JayT LIFESAVINGS.ONLINE VIP

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    @Avtar629 I read some of your posts and you are always asking "is this right"? Somehow you don't seem to know right from wrong, or try justifying doing some squatting somehow, IDK. Normal people just do what they feel is right and not worry about the outcome because they know they are fundamentally OK.

    And technically, reaching-out, as you put it is an unsolicited offer, aka SPAM, no matter how much they might need the name. You already looking bad in URDP in any circumstance.
     
    Last edited: Apr 23, 2019
  14. xynames

    xynames XYNames.com PRO VIP

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    It’s rare that a common law TM holder would sue. Would need to sue basically only if there is local infringement and no one else is using the mark in that area. Couldn’t get damages or attorney’s fees. Would sue just to stop you from infringing.
     
  15. Avtar629

    Avtar629 MarketDN.com Gold Account VIP

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    Bottom line if you have the cohones to reg questionable domains. Don't contact the enduser.

    I hate this thread has devolved into a "newbie reg a TM bad bad" attack open call.

    But I've seen some domains for sale that are wait more TM issue-ish than mine to be sure and they blatantly have landing pages on them. And these aren't amateurs by far.

    Not saying because the experts jump a cliff then it must be a good idea. But it is what it is.

    Here's one (remove ****)


    Mer***ced***esHou***e.com


    This domain is a two-fer.

    It's not only squatting on the Mercedes trademark. It's also squatting on an unregistered exact match trademark for an address.

    Of course what matters is when it was registered.

    Just saying. I'm sure there are tons of other examples out there.

    It's easy enough for the person I reached out to to flip the script in their favor.

    The truth is. This domain was available to reg. Had I not. Maybe someone worse than me could have registered it. India? China? Someplace out USA jurisdiction.

    But of course the buyer doesn't give a crap. With respect spare me the "you are cybersquatters and that's all you are. I registered these domains. maybe in the hope the buyer will appreciate me securing it for them. That's a Hero.

    Not a cybersquatter.

    They have a choice really. Someone reasonable or someone unreasonable like Chinese squatters who will slap a $100k on a domain.

    Me? I would have been happy with $2500.

    No one here is gonna make me feel bad. After this though. I will refrain from registering such domains .

    As there are no good people in the world. None ever see the big picture. Domainers know too that what these guys are doing is some grimey shady stuff and they just want to get the domain for free like little babies.

    An unregistered trademark can be used by anyone so long as the other user is not in the same location.

    As someone who has gone thru a trademark process. I know it can get very expensive.

    There is a reason for it. Because you need to register your trademark for the goods and services you provide.

    Unregistered trademarks? The "poor man's" trademark? No goods and services paid for or specified? Yet you get protection as if you did pay?

    What's the point of paying for a trademark if anybody and their uncle can own one for free?

    There's exact matches for my address domains all across the USA. These guys are denying me the right in a free open market to sell these domains to all potential end-users.

    Domainers are smart for the most part. There is a process for most domainers to properly curate all domain regs before reg.

    One main criteria is registering domains where there are more than one potential buyer. Doing the opposite is just pigeonholing yourself into a corner where your only buyer is only one.

    This is not good for business. It's actually stupid.

    The domains were not reg in bad faith as a simple Google search will prove there are matches in pretty much every state.
     
  16. Avtar629

    Avtar629 MarketDN.com Gold Account VIP

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    Going to PM you details.
     
  17. jberryhill

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

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    Are you suggesting that registration is a requirement for an action under 15 USC 1125(d), and/or that the discretionary $100k damages under 15 USC 1117(d) would not be available in such an action? Neither of those statutes require registration, so I’m curious to know how you believe they do. (In the final judgment of the somewhat tortured Jysk v. Dutta-Roy litigation, statutory damages were awarded on an ACPA claim premised on a common law mark)

    ACPA suits are not infringement actions.

    Additionally, Avtar’s primary issue here seems to be “street address” domains in US municipalities into which he is intentionally directing solicitations. We don’t know where Avtar resides or does business, but if the “local area” in question is, say, New York City, then the SDNY is as good a court as any.
     
    Last edited: Apr 24, 2019
  18. xynames

    xynames XYNames.com PRO VIP

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    What I am saying, which is correct, is that under a common law trademark claim, common law does not award trademark holders the right to collect damages or attorney's fees.

    If they may fit the issue into some other light, such as the ACPA which would additionally require bad faith use, there might be other remedies.
     
  19. Avtar629

    Avtar629 MarketDN.com Gold Account VIP

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    I mentioned this before but no one replied to it. or maybe they did but I missed it.

    What if the address in question have exact matches in pretty much every other state in the USA?

    does this apply then?
    https://www.nolo.com/legal-encyclopedia/what-good-unregistered-trademark.html

    "An unregistered trademark is a mark that has not been registered at the U.S. Patent and Trademark Office (or at any of the state trademark offices). Owners of unregistered trademarks nevertheless have legal rights within the geographic areas in which they operate. These are sometimes referred to as "common law" trademarks, as they are protected by state-based laws concerning unfair competition.

    An unregistered mark can sometimes stop a subsequent federal user in the same geographic area. Or alternatively, a larger company moving into an area may not be able to prevent a smaller competitor (whose use preceded the big company) from using a similar name. (Hence, Norman McDonald was able to continue to use his name on his hamburger stand in Philpot, Kentucky, although he had to remove his copycat arches.)

    Limited Rights for Unregistered Trademarks
    As noted, an unregistered first user of a trademark can often claim trademark rights within the relevant geographic area. This means that even though the first "Precious" store might be able to stop a second "Precious" from opening in its town, it cannot stop another "Precious" from opening in Hawaii or New York or Florida. It also cannot stop a second Precious from registering an Internet domain or selling goods online using the "Precious" name.

    So, while unregistered trademarks enjoy certain limited rights, the best approach for most businesses is to register your trademark if possible. This advice is particularly true if there is any possibility that you might expand, opening additional locations or doing business outside of your specific town or municipality."

    I am a domain investor. I do not register domains BECAUSE there is only one possible buyer. That would be stupid and bad for business. It is standard operating procedure for a domain investor to investigate all domains prior to registration to make sure there are more than one possible potential buyer.

    To deny me rights to own and try to sell the domains in question would deny my right to operate the legitimate business of buying and selling domains.

    Taking the domains in question would also deny all potential buyers and subsequent endusers in all other states in the USA from purchasing the domains in question.

    It was not in bad faith that I registered said domains and then offered them to complainant. If I can legally sell these domains to any and all exact match address in all other states then contacting the complainant is not in bad faith. If anything is just a random coincidence.

    Had any other person who owned property with the exact match address registered the domains in question for the express purpose of using it for their property. Complainant would have NO OPTIONS as the registrant would definitely not sell it.

    Regardless of the complainant's unregistered trademark. He would have no recourse but to accept it as fact.

    I registered said domains in "good faith" and now in bad faith the complainant is trying to take the domains for free.

    The fact that I live in the same state as the complainant is circumstantial and irrelevant.

    To avoid all confusion. The complainant really should register a trademark that is legally enforceable nationwide.

    The burden of proof lies with the complainant to prove intent was in bad faith but given the fact that a simple Google search would net a long list of possible potential endusers for the addresses in question.

    The list would not even need to be a long list. All that is needed is maybe 1 or 2 maybe three examples of possible potential endusers.

    I had posted this TM issue on AVVO and got an interesting case I never heard of before.

    "OK, so the address is a street address, not an IP address or Internet address and the property is real property, not intellectual property. A street address is geographically descriptive. The trademark owner needs to prove they have an enforceable right. To do that for a street address they would need to prove it is recognized as a source indicator, not a geographical indicator. "30 Rock"? Maybe. The defense to cybersquatting can be that you prove that you have a good reason to own the domain. Is it your street address too, or did you register it solely because it was someone else's street address and you wanted to sell it to them? One of the early cybersquatting cases was for www.panavision.com. The squatter said there was a town in Illinois called Pana and he posted aerial photos of the town. The court was unimpressed. "

    the address was not just the complainant's address but about 12 other possible endusers and that's just from the 4 states I checked.

    I am a domain investor. Is that a good enough reason to own these domains IF my plan was to sell them to all the "PROVEABLE via Google search" other addresses in the USA?


    Would a complainant and their lawyer be at risk for misrepresentation if say they agreed to sign an agreement in which I handed over the domains in question so long as they agree to sign the agreement that states.

    1. The complainant prior to contacting the lawyer did their due diligence and researched the domains in question and that address and was confident that there are no possible other potential endusers for the domains in question.
    2. The lawyer also asserts that he did all the necessary background check on the address and found no other potential endusers for the domains all across the USA in which the defendant could have sold the domains in question to.
    3. The complainant and lawyer also will attest that the complainant's unregistered trademark gives them the SAME rights given to Registered trademark holders which includes cross border protection which makes the act of selling these domains cross border to all other potential users illegal.
    4. The complainant and lawyer will attest that soliciting the sale of the domains in question containing the complainant's unregistered trademark cross border would be illegal under the protection of the Lanham Act and by default makes the act of soliciting the sale of the domains in question to the complainant illegal also and in bad faith.
    5. The complainant and lawyer can prove intent because they did a Google search and found no other addresses in the USA that matches the complainant's address which therefore means the complainant is the only possible enduser for the domains in question and the unregistered trademark is unique and not generic enough to freely register domains containing said mark and then actively solicit the sale of the resulting domains registered.

    I will surrender my domains if the complainant and lawyer will sign the above. I am cooperating to resolve this issue as quickly as possible. I have no money for representation so I will have to defer to the expertise of the complainant and their lawyer's knowledge about this situation.

    In thee event, any and all parts to the agreement was misrepresented and false ...blah blah blah. you know the rest.


    The point? Before you accuse someone of trademark infringement and bad faith reaching out to you to try and sell.

    shouldn't you CHECK first to see if there are other street address that matches yours in other parts of the USA?

    or is that all irrelevant?

    Does it really boil down to. I reached out to complainant to sell them the exact match to their address? case closed?

    is it really that simple?

    bottomline if this guy has decided to go thru this whole process just to get these stupid domains so he can boost his ego. then it's pointless for me to WIN this and then try to sell to him.

    so in the end I'll probably give the domains up as no matter what win or lose this guy won't buy from me. and am I really going to reach out to all the other possible endusers? probably not.

    But this crap just pisses me off and I hate losing. Even if it's just $12 it's the principal of the thing. anyways i lose more than $12 on scratch offs. lol


    I await JBerryhill to comment which should be in 3,2,1.......
     
  20. jberryhill

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

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    Well, the Anti-Cybersquatting Consumer Protection Act, 15 USC 1125(d) is pretty much what domainers tend to get threatened with and sued for, and a registration is not required. Domainers are typically not using the domain name for anything in particular that would rise to the level of an infringement action, so that's pretty much beside the point.

    Additionally, the ACPA, unlike the UDRP, does not require bad faith use.

    ----
    15 USC 1125

    (d) Cyberpiracy prevention

    (1) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person

    (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

    (ii) registers, traffics in, or uses a domain name that -

    (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

    (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

    (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36
    .
    ------

    The relevant acts are to possessing the requisite intent and "registers, traffics in, OR uses". Simply registering the domain name with the requisite intent is a sufficient act.

    If there were any doubt about whether the ACPA requires "bad faith use" then it includes a list of non-exclusive "factors" which may suggest bad faith:

    ------
    (i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—
    ...

    (III)
    the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
    ...
    (VI)
    the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;

    --------

    So, registering a domain name that corresponds to a distinctive mark and offering to transfer it to the mark owner for financial gain without having used the domain name for any bona fide purpose, is entirely sufficient to make out a claim under the ACPA, which is the most common cause of action of concern to domainers under US law. It does not require a registered mark, nor does it require bad faith use of the domain name.

    Concerning monetary damages, again, no registered mark is required, as demonstrated in the case which I cited which (a) involved a common law mark, and (b) resulted in monetary damages under the ACPA. The relevant statute on damages under the ACPA is 15 USC 1117(d):

    -------
    (d) Statutory damages for violation of section 1125(d)(1)

    In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.

    --------



    You know, I've been at this a very long time, and one of the things that makes me a cranky old person is seeing people re-invent the same broken wheels over and over again, in search of the magic anti-cybersquatting liability bullet.

    You know all of those prostitution booking websites that used to operate in the US, like Backpage or Craigslist, where the "escorts" would have stuff like:

    "By agreeing to use this booking service, you warrant that (a) you are not a police officer and (b) you are not contracting for prostitution services... etc., etc., etc....."

    It's pretty much like putting up a neon sign flashing "PROSTITUTES HERE!"

    If they have a trademark, it's not relevant.

    Look, if you register the domain name Berryhill.tld and you try to sell it to the owners of US TM Reg. No. 3898846 for "BERRYHILL", then it really doesn't matter if there are thousands of people named Berryhill in the US. THEY are the ones that have a trademark for "BERRYHILL" for restaurant services, and THEY are the ones that you tried to sell it to.

    Just because the address exists somewhere else doesn't mean that it is not a trademark if these people are USING IT AS A TRADEMARK.

    No, it's not that simple, but you are not interested in attempting to understand why.

     
  21. xynames

    xynames XYNames.com PRO VIP

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  22. Avtar629

    Avtar629 MarketDN.com Gold Account VIP

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    Anyways. On average how much would the complainant have paid this lawyer to send me this threat?

    It would be a real head scratcher if the amount is over $2500 which was the original offer I made for both domains.

    Thanks all for the input. Very much appreciated. Learned a lot.
     
  23. xynames

    xynames XYNames.com PRO VIP

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    ?
    ??

    In determining whether the domain name registrant has a bad faith intent to profit, a court may consider many factors, including nine that are outlined in the statute:


      • Registrant’s trademark or other intellectual property rights in the domain name;
      • Whether the domain name contains the registrant’s legal or common name;
      • Registrant’s prior use of the domain name in connection with the bona fide offering of goods or services;
      • Registrant’s bona fide noncommercial or fair use of the mark in a site accessible by the domain name;
      • Registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;
      • Registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;
      • Registrant’s providing misleading false contact information when applying for registration of the domain name;
      • Registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others; and
      • Extent to which the mark in the domain is distinctive or famous.
     
    Last edited: Apr 24, 2019

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