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What are the chances for winning UDRP?

Located in Legal Discussion, started by Bart Cieslinski, Mar 19, 2016

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  1. Bart Cieslinski

    Bart Cieslinski New Member

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    Hello everyone,

    I'm a total newby to the domain world. I've just started working for a Chinese company as a marketing manager. They are producing a world-known brand of electronics, let's call them "brand". When they were still a very small company and just started, the owner's "friend" registered a domain name brand.com without the owner's consent. Later on, he started buying the product on the market from some 3rd party distributors and started an "official" online store on the website of brand.com ... ever since the company grew very quickly and created their own website with the name of brand.net ... However, their real, official website is not well-positioned and everyone who searches for the "brand" online finds the "brand.com" website that looks like the official website of the brand. This is really confusing for all of the potential customers and is really destructive for the company.

    Moreover, the above mentioned domain squatter has recently realised his own brand of the very same product, and his aim is to destroy the brand image of the company i'm working for. For example, he sells the product and does not give any support, he sells the product and waits a long time before shipping, or does not ship it at all, provides non-working support emails on the website etc.

    I've advised my boss to file a UDRP complaint, however, he would only do so if he's 90% sure he'd win. He's sure that the squatter will do all in his powers to defend the case.

    I would really appreciate any advice if it's worth filing a case.
     
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  2. alinask

    alinask Established Member ★★★★★★★★★★

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    Your scenario looks like a typical business issue and before I'd do any action, I would consult a lawyer for advice. They have more practical experience and I believe we are not talking about a 100$ / month business profit, but bigger profits.
     
    Last edited: Mar 19, 2016
  3. JayT

    JayT Restricted (85-100%)

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    I'd say there's at least a 90% chance you can win if you can prove everything you just said.
    Say he registered in bad faith by knowing the business of said company and even sold their products. He had insider knowledge and leveraged that for his own financial gain at the cost of your companies reputation..make that a point.
     
  4. Kate

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

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    It is hard to say if UDRP would help in such a case. For the complainant to prevail, it has to be demonstrated that the respondent lacks legitimate rights over the disputed domain name. Which may not be so obvious in the present case. It is a business relationship turned sour.
    A UDRP is going to cost $1500+, and you may lose it if it isn't a clear-cut case. Rather than launch a botched UDRP, I also advise that you consult a lawyer first.
     
  5. DomainVP

    DomainVP Profile VIP

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    See if the .COM owner will sell for $5k or less.

    If they won't sell, and you can prove the claims you are making, then you should file a UDRP.

    You will have to take into consideration the domain owners responses, because they will have a chance to show their own evidence as well.

    #1. If you don't have a TM You must show that the name has become a distinctive identifier associated with the your goods and services.

    #2. You will have to show that the .COM owner lacks rights or legitimate interests in the disputed domain name.

    #3. You will have to prove 'bad faith'.

    Either hire a lawyer, or do the research on your own by reading several successful UDRP cases.

    I think the biggest issue with this case will be the passage of time, and previous possible agreements between your boss and their 'friend' who owns the .COM.

    I understand what you are saying, but it sounds more likely that they had some kind of agreement and that your boss might have had a falling out with them causing them to have to buy the product from a 3rd party. The shoddy customer service might just be his failed attempt at business, but that's not a UDRP issue unless they are doing it intentionally - and that's hard to prove unless you have messages showing so.

    This is the kind of things I suspect the .COM owner will respond with.

    It all comes down to who has documentation. You should have a serious conversation with your boss and bring up these issues.

    If your boss still fees confident about supporting these claims, then you should follow through with a UDRP filing.
     
  6. Bart Cieslinski

    Bart Cieslinski New Member

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    I must say I'm very positively surprised and thankful to such quick answers from all of You!
    To clarify some of your questions:
    - My boss did register the trademark, both in China, in the USA, in Hong Kong and some other places as well, even before the brand.com domain was registered.
    - There was no written agreement between my boss and the other company.
    - Some of the evidence I have is: we've got tens of emails from mad customers who first wrote to their customer service and never got a response, finally found our official website. We have an email from a customer who ordered goods from them and never received them. Their Facebook page, linked to their brand.com (our brand, in fact) lists their new brand with comparison to ours with clear signs of superiority of their brand over ours, at the same time pretending to be an official Facebook page of the company (having a high number of likes).
    - In several conversations with the other companies they refused to sell the domain to us.
    - I'm afraid lawyers here in China might not be very well acquainted with the domain regulations etc., that's why I wanted to ask here if UDRP without a prior court case is a good idea and worth it (my boss is willing to spend the 1500+USD giving it a try).
     
  7. betthelot

    betthelot Top Contributor VIP ★★★★★★★★★★

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    A UDRP is not set up to decide TM disputes between parties who have both used a brand name before neither of them registered that brand and both began to use it before it became famous. Without registration you are relying on common law trademark rights i.e the right to a trade mark because its common knowledge to be a brand name with a known source and not registered as a TM. You will never get over the first hurdle proving you have TM rights in the said brand. It needs to be clear cut, its not for the UDRP to decide your weak claim on common law trademark rights.
    First you need to establish common law trade mark rights, outside the UDRP, through the Chinese courts; but given no one cares about IP in rights in China, (especially those of Western brands,but I digress) you are never going to achieve it. Therefore you have been screwed by someone using your brand, your hard work, your marketing, to profit from selling their own product or a grey import.
    Welcome to membership of Screwed.club where you will find many western companies who have been screwed in the same way in China.
     
    Last edited: Mar 20, 2016
  8. DTR Alex

    DTR Alex Established Member

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    If it is possible, please register your company sooner than that person!

    And try to correct all the things related to brand legally.

    Take help of advertisement (TV, Newspaper, Radio etc.) mentioning your domain name, brand.net

    Buy a product from brand.com and if you are not treated in good manner, take legal action to disturb that person.
     
  9. betthelot

    betthelot Top Contributor VIP ★★★★★★★★★★

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    Or better still burn your money it easier and requires less effort. At the time the .com was registered, you have to prove you had TM rights then, establishing TM rights in 2016 doesn't help. UDRP is only concerned was it registered in bad faith, not who has the greater claim, not if someone is infringing the TM through grey imports that's a whole different court and if the guy infringing your rights is in China good luck with that.
     
  10. Bart Cieslinski

    Bart Cieslinski New Member

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    Thanks a lot again for your time and answers...

    I've done a little research on whois and checked the trademark registrations. Unfortunately the brand.com was registered in the beginning of 2013 and the trademark a few months later. So I guess the UDRP will be easily lost in this case as the "bad faith" will be really hard to prove. The only thing that can be proven here is the fact that my boss started producing the products under the "brand" name prior to the brand.com domain registration.

    Another question, is it possible to stop the other company from using the trademark on their brand.com website (LOGO, product pictures etc.)? Would it be an easily won case in the court? Has any of you ever had such experience? If both the companies are registered in China I guess this would have to go through the Chinese courts where the IP protection is a different story, however, both are Chinese so there shouldn't be any foreign-Chinese politically driven sidings by the court.
     
  11. loredan

    loredan Top Contributor VIP ★★★★★★★★★★

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    Even if you will manage to win in court and stop the other company from using logo, images, etc...the fact is that their website will still be up there and will continue to bother you and your customers. Perhaps the easiest and straight forward thing to do at this time is to re-brand under a different name while your company is still young and growing. I believe at this time would be faster and cheaper for your company to just re-brand rather than spending two years in court and a lot of money.
     
  12. betthelot

    betthelot Top Contributor VIP ★★★★★★★★★★

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    agreed. take it a s lesson learned
     

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