question Unregistered Trademark. The death of domaining?

[WhoaDomain.com]

The title doesn't do the question justice.

How can a domainer profit when all a potential buyer can do is claim "unregistered trademark" and then "Lanham act" because you reached out to them to try and sell the domain?

When I see keywords like

Lifi
Beacon
Bit
Coin
Virtual
Reit
Etf
Biometrics
Ripple
Ethereum
You
Cheap
Tube

And all the other niches mentioned on here.

It's standard operating procedure for any domainer to reach out to potential buyers who have similar keywords in their domain.

All those people have to do now is just cry cybersquatting and take the domains legally? Saying they have been using the mark first?
Without a trademark?

Not only do we have to worry about registered trademarks. Now we have to worry about non registered trademarks?

Is there any protection for the domainer?

Worst case scenario? You can register domains but you can't do outbounds? Just sit and wait?

This is very bad for domaining.

What does this mean to domainers?

 

[xynames]

Additionally, the ACPA, [15 USC 1125(d)] 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

??

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:

1. 
   
   • 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.

 

[WhoaDomain.com]

The following is my understanding of TM law. I am by no means an expert so please do not regard the following text as advice, I'm merely expressing my understanding of the matter.

Trademarks have classes for a reason. The same word or phrase can be trademarked multiple times by multiple parties all with different operating trademark classes.

I also believe trademarks are restricted to their jurisdiction (usually country). For example if you have a trademark registered in the UK it is only applicable to UK and not other countries.

Domain registrants who own a domain name whereby the keyword(s) are also a registered trademark only need to be concerned in anyway if any of the following statements are true:

• The registrant created the domain name after the trademark had been filed or status is approved/live
• The contents or website of said domain are that of the class or classes a TM operates under. So for example if I have a trademark for 'Chunky Cheese' and I sell cheese, you can't be operating under the name Chunky Cheese whilst also selling cheese, within the same jurisdiction.
• If you have content of any kind conflicting with TM classes. This includes advertising, parked pages and such.
• If you knowingly purchased the domain with the sole intention of profiting of the trademark or to sell directly to a trademark holder

If any of the above is true I think it could potentially be warranted as bad faith.

Let's expand upon the example above. If you happen to own ChunkyCheese.com and it doesn't resolve, but another party has a registered trademark, they can't automatically claim they have any right to said domain name. They need to prove you are somehow using the domain in bad faith first. If you're not then in majority of cases you have nothing to worry about.

Please note again that what I've written here is my personal understanding of the subject matter at hand. This is NOT advice. I am by no means a legal expert of any kind. I'm merely expressing my understanding.

I think @jberryhill and I'm sure others are likely to have way more knowledge than myself of TM law.

I too would appreciate others input on this.

Thanks

Thanks . I have to add that the key to the unregistered trademark owners winning case would be if the domainer reached out (innocently or stupidly enough) to the perfect buyer.

I mean what domainer would not reach out to the perfect buyer for the domain they properly curated and chose to register for the sole purpose of selling to?

I mean isn't that what domainers should do? Register the outbound.

Please bear in mind I am talking about an unregistered trademark here not a registered one.

 

[WhoaDomain.com]

I know you have posted some TM topics in the past as well, but I think you are a bit confused.
This stuff is not black & white and TM have classes.

There is a big difference between a TM and an enforceable TM when it comes to a generic use. You really think terms like "You", "Cheap", "Virtual", "Coin", etc. are protectable as stand alone generic terms, for the generic use?

95% of TM squatting is obvious. Just look at a list of UDRP filed. The vast majority are slam dunk cases.
Some fall into the grey area, which is a case by case basis.

I think you are grossly overestimating the actual risks.

Brad

Thanks Brad believe me Brad . As someone who has surrendered several domains to TM holders. Plus as someone who actually registered a trademark myself for my company. I know about the goods and services.

What triggered me posting this domain?

Recently registered an exact match address like

123broadway.com (for example)

I read an article somewhere they will build something expensive on it.

Reached out. Waited. Now I get sent threatening email to surrender domains?

Trademarks are hands off now unregistered trademarks too?

This is why I say domaining is dead.

I'm sure I'm not the only one on here that's done a "run and gun" when some new hot key term pops up like VR or Bitcoin or whatever.

If all a buyer has to do is cry cybersquatting because you tried to sell them a domain that contains keywords that they have in their LLC or are an exact match for the address of their development or in their domain.

What hope is there for the domainer? We will all just end up surrendering domains left and right because the risk of losing a lawsuit is too great.


And if you can't do outbounds for risk of getting sued for cybersquatting for profit then again what hope is there?

Might as well pack up and close up shop. Because buyers have figured out how to get our domains for free.

 

[WhoaDomain.com]

L

You've started threads before on this same topic and J. Berryhill offered you a reality check. Yet you come back for more.

https://www.namepros.com/threads/has-anyone-ever-contacted-tm-holder-to-sell.1129623/

Frankly, the title of your thread is just more clickbait bullsh*t. But don't feel bad, clickbait has been trending on NP for some time now.

This is all true but I will say let he or she who has NEVER registered a TM issue domain whether on purpose or accident cast the first stone.

Yes I have posted threads before. About TM issue domains before but I think most have minute differences here and there.

You can't just collect ever TM issue thread I've written and roll them up in one ball and call it all the same thing .

But I have bad memory so correct me if I'm wrong and I'll stand corrected.

Thanks.

 

[WhoaDomain.com]

@bmugford wanted to comment on the below.
"There is a big difference between a TM and an enforceable TM when it comes to a generic use. You really think terms like "You", "Cheap", "Virtual", "Coin", etc. are protectable as stand alone generic terms, for the generic use?"

You are absolutely correct! Such words should not be protectable.

But our opinions about it don't mean nothing when up against someone who is pissed that you own a domain they want and need but now they have to pay $5,000 for it.

It costs them nothing to hire some hot shot lawyer to threaten you.

At least as far as I know. When faced with a reasonable threat like that plus lack of TM law knowledge what choice does a tiny domainer have?

What? Go Rambo and tell them "See you in court!"

It's like a game of chicken to see who flinches first.

I'm sure 9 times outta 10 domainer just hands over the domain. Why? Because there is a 50/50 chance of winning or losing.

I wonder how many domains have been lost like this?

 

[jberryhill]

Lifi
Beacon
Bit
Coin
Virtual
Reit
Etf
Biometrics
Ripple
Ethereum
You
Cheap
Tube

Here's a good exercise in separating penguins from the other birds.

If you remember the Sesame Street game of "one of these things is not like the others", have a look at that list. As a very rough cut, one of those things is not like the others. Do you know which one it is?

For those unfamiliar with the game, it is played like this:

One of the things on that list is completely unlike the other things on the list in a very important way. If it is not obvious to you, stop domaining.

 

[frank-germany]

Here's a good exercise in separating penguins from the other birds.

If you remember the Sesame Street game of "one of these things is not like the others", have a look at that list. As a very rough cut, one of those things is not like the others. Do you know which one it is?

For those unfamiliar with the game, it is played like this:

One of the things on that list is completely unlike the other things on the list in a very important way. If it is not obvious to you, stop domaining.

I can't tell please help


maybe
Ethereum
guess thats a TM

or
Beacon ?

or

Biometrics
as its the longest


no idea

----

I got it
Ethereum

its no dictionary word

right?

 

[WhoaDomain.com]

Now there's a good question.

I don't have time to give Avtar a personal course in trademarks. Then again, I'm not an expert in bird identification. Fortunately, one doesn't need to be an expert in bird identification to get a reliable idea of whether one might be looking at a penguin or a peacock, since they are easy to tell apart. The expertise comes in when it is a more difficult problem. So, if you don't know the difference between, say, a crow and a raven, then stick to penguins and peacocks.

But don't spend your time complaining, "Ravens and crows are both medium sized black birds! How can anyone tell the birds apart! This is madness!"

What I suggested to you earlier, and what you seem resistant to wrapping your head around despite probably hundreds of posts I've written on the subject here at namepros, is that you need to forget what you think you know about trademarks, and come to grips with a basic understanding of what a trademark is. You can click on the link in my signature here and it will lead you to - literally - hundreds of legal cases in which I represented a domain name owner (and the occasional trade mark owner) in a dispute. Many of those were cases in which a common law mark was asserted. So, please, just because a concept is new to you, does not make it either new or the "death of domaining".

But what do I know, right? I'm just a guy who studied this stuff for a long time, and has been exclusively working in intellectual property matters since 1992, and then fairly exclusively in domain/trademark matters since 1998. Feel free to ignore me and believe whatever suits you.



I don't know what "now" is doing in your sentence. Common law trademark rights are certainly enforceable. Again, your basic problem arises from not having ever reflected on what a trademark is. In the US and other common law jurisdictions, a "trademark" does not come about from applying to a government office for a certificate.

A trademark arises from the use of a word/symbol/logo/whatever in commerce on goods or services which provides the function of distinguishing those goods or services from those of others in the relevant market for those goods or services. If you want to, you can then go obtain registration of that trademark, which makes it easier to prove certain elements of a claim if you want to sue someone. In the US, if you sue someone for trademark infringement using a common law mark, you first have to prove that you have a valid trademark, and that the other side knew about it. If you have registered your mark, then the registration serves as presumptive evidence of the validity and ownership of the mark. Registration also provides 'constructive notice' of the mark, as your competitor is deemed to have known about the registration. So, registration provides a lot of advantages.

What registration doesn't do, and never has done, is establish a trademark in the first place. That's been your primary mental block for, gosh, as long as you've been posting nonsense here.

So, let's take your street address example.

There is an interesting building in New York City at 20 West 34th Street. Now, "20 West 34th Street" is of course a street address, and that's pretty much all it is. I'm pretty sure that, so far, you have no idea what is at 20 West 34th Street. Neither did I until a few moments ago.

However, the building at 20 West 34th Street is a very famous building, with a very well-known name, owned by a private company which provides leasing and other services that it advertises using the name of that very famous building. You probably have no idea at all what is at "20 West 34th Street", but I guarantee you have heard of the famous building, the name of which is certainly used as a trademark.

In that example, "20 West 34th Street" is merely a street address, with no particular significance to anyone. It is not used as the name of the building. It is not used in advertising promoting the building, the leasing services, or indeed the tourist attraction which is heavily promoted as the "Empire State Building".

Word Mark EMPIRE STATE BUILDING
Goods and Services IC 036. US 100 101 102. G & S: REAL ESTATE SERVICES, NAMELY THE MANAGEMENT AND LEASING OF REAL ESTATE. FIRST USE: 19310501. FIRST USE IN COMMERCE: 19310501
Registration Number 2413667
Registration Date December 19, 2000

Now, there are a couple of things worth noting. Since you've probably read virtually none of the hundreds of posts I've written here, one important thing to note is that they claim to be the successors of people who have been at it since 1931. One of the things that helps make a trademark distinctive is how long the mark has been predominately associated with a particular source of the goods or services. So, something like "American Airlines" which is American, and an airline, has become distinctive since they too have been at it since the 1930's.

Okay, so, let's take a stroll uptown from the Empire State Building and consider something like 30 Rockefeller Plaza.

30 Rockefeller Plaza doesn't have another name, but is frequently shortened to:

As "30 Rock", it is well known as the headquarters of NBC, and was used as the name of a TV series spinoff from Saturday Night Live. It was a TM for the series title, for sure, and may well be used by the building management as one.

Another example is the building where my former firm is located. I used to work at 1601 Market Street in Philadelphia. It's across the street from an office/condo/shopping complex and tower called "Liberty Place". Now, "Liberty Place" is certainly used by the folks across the street as a mark for their various services, but what about 1601 Market?

Well, okay, spend a minute (since I sure am) taking a look at this website, and tell me what you think:

http://1601-marketstreet.com/

Let that front page load and what do you see? Would you say that "1601 Market Street" is used:

(a) merely as an address to indicate where the building is located, or
(b) as an indicator of the brand of leasing services available?

If you have a hard time choosing between (a) and (b) there, then do yourself a favor and find another hobby. Perhaps birdwatching might suit you better.

And if all this is "TL;DR" for you, then stop asking impulsive questions if you don't want answers.

Since we're talking about specific addresses now. At the risk of sounding like "well they jumped off a cliff so will I".

There's two addresses that got me into address registration.

11BeachSt.com seems to be owned by MediaTemple.net not by developer.

But this wasn't reg recently.

And then there is 60water.com owned by Rode advertising. They also own 325lex.com

Both agencies seem to provide a complete package. Domain hosting webdesign.

Wouldn't these agencies be liable for TM infringement?

As far as my current thread. Can a domainer's defense be that the address exists in other states?

I'm going to mention this.


An unregistered trademark is a mark that has not been registered at the U.S. Patent andTrademark Office (or at any of the statetrademark offices). Owners of unregistered trademarks nevertheless have legal rights within the geographic areas in which they operate.

My focus now is on "within the geographic areas in which they operate."

If it can be proven that 123main.com exists in every state in USA is that a defense?

Or is mere act of reaching out un- defendable? C

lts for Rode advertising
==============

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[WhoaDomain.com]

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brendabruyette.com 2004-02-05 GODADDY.COM, LLC
briancurry.info 2015-12-07 GODADDY.COM, LLC
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briankeiner.com 2012-11-26 GODADDY.COM, LLC
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[dande]

I think domainers are being heavily persecuted by ICANN and Co. We are not seen as real business people who deserve to make profit. We are seen as objects to be trampled on at will.

Maybe it's time to setup a Union and demand for inclusive legal framework.

 

[WhoaDomain.com]

I know you have posted some TM topics in the past as well, but I think you are a bit confused.
This stuff is not black & white and TM have classes.

There is a big difference between a TM and an enforceable TM when it comes to a generic use. You really think terms like "You", "Cheap", "Virtual", "Coin", etc. are protectable as stand alone generic terms, for the generic use?

95% of TM squatting is obvious. Just look at a list of UDRP filed. The vast majority are slam dunk cases.
Some fall into the grey area, which is a case by case basis.

I think you are grossly overestimating the actual risks.

Brad

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.

 

[WhoaDomain.com]

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.

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.

 

[WhoaDomain.com]

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.

 

[Chris Wright]

...
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....

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.

 

[WhoaDomain.com]

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.

 

[WhoaDomain.com]

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.

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.

 

[WhoaDomain.com]

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.

 

[WhoaDomain.com]

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.

Going to PM you details.

 

[xynames]

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.

 

[WhoaDomain.com]

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.

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.......

 

[xynames]

has a bad faith intent

 

[WhoaDomain.com]

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.