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discuss Wipo process with my domain

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keim123

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Hi, process has started on one of my one "trademark" domain, I will probably lose. am I obliged to pay fees to the counterparty ? domain was only parked. Thanks
 
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The views expressed on this page by users and staff are their own, not those of NamePros.
In a UDRP you can only lose the domain.

However, the other party could still take legal action outside UDRP to try and recover damages.

That is probably not all that likely though.

Brad
 
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No fees unless you open a dispute or you want a Three-Member Panels.
You will loose the domain only.
 
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I wanted to give them the domain for free, but they opened an arbitration dispute process should take 20 days.
 
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For next time, never register an obvious trademark.
 
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I understand that any negative outcome will remain on record and can be referenced in any actions by others in any future claims. proving a pattern of behaviour.

Don't antagonise TM holders, It's never worth it.
 
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I wanted to give them the domain for free, but they opened an arbitration dispute process should take 20 days.

Then simply use the procedure under UDRP Rule 17. If this is a WIPO proceeding, they sent you the form to do that with the Complaint.
 
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I understand that any negative outcome will remain on record and can be referenced in any actions by others in any future claims. proving a pattern of behaviour.

A key phrase in the OP would appear to be "one of my 'trademark' domain". So that's already admitted. If it is a WIPO case that has been commenced in, say, the last day or so - "process has started" - then it is one of these:

D2023-4008 greenpeace.top Stichting Greenpeace Council - October 5, 2023

D2023-4016 shopwarenet.com Shopware AG - October 6, 2023

D2023-4018 chevron-training.com Chevron Corporation
Chevron Intellectual Property LLC - October 6, 2023

D2023-4023 travelx.net Travellers Exchange Corporation Limited - October 6, 2023

D2023-4028 ipsos-evolution.com IPSOS - October 6, 2023

D2023-4029 johnlewis.help John Lewis Plc. - October 6, 2023

D2023-4030 equnifax.com Equifax Inc. - October 5, 2023

D2023-4032 nudiejeans-us.com Nudie Jeans Co AB - October 5, 2023

D2023-4053 lavazzaltd.com Luigi Lavazza S.p.A. - October 5, 2023

D2023-4068 support-ziprecruiter.com ZipRecruiter, Inc. - October 5, 2023

D2023-4076 garogroup.com GARO Aktiebolag - October 6, 2023

D2023-4083 belmond.luxe Belmond Management Limited - October 6, 2023

D2023-4084 belmond.health Belmond Management Limited - October 5, 2023

D2023-4089 hestrasale.com
shophestra.com HESTRA-Handsken AB - October 5, 2023

D2023-4090 graingerlnc.com W.W. Grainger, Inc. - October 6, 2023

D2023-4095 fontainebleaulv.com Bowtie Hospitality LV LLC d/b/a Fontainebleau Las Vegas - October 6, 2023

D2023-3811 yakult.online Kabushiki Kaisha Yakult Honsha - October 6, 2023

D2023-3895 sanofirblx.com Sanofi - October 6, 2023

D2023-3927 teleperformance.today Teleperformance SE - October 6, 2023

D2023-3941 pylontech.net Pylon Technologies Co., Ltd. - October 6, 2023

That list might be incomplete, since it's pretty boring to go over the list.
 
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Then simply use the procedure under UDRP Rule 17. If this is a WIPO proceeding, they sent you the form to do that with the Complaint.
Disagrees, wants to continue.
 
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One more question, is lost wipo a problem when entering the usa or other risk ?
 
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I wanted to give them the domain for free, but they opened an arbitration dispute process should take 20 days.

Next time if you wanted to 'give them free' and they don't agree for it, My SUGGESTION would be: you can DELETE the DOMAIN from your registrar. Once you delete, and once it's gone from your account then you're not associated with it anymore.

Normally the domain is removed from the account upon expiry, but we can FORCE REMOVE by choosing to delete the domain from account. Once deleted it'll be available for public, unless the registrars try to recover and auction it.
 
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Next time if you wanted to 'give them free' and they don't agree for it, My SUGGESTION would be: you can DELETE the DOMAIN from your registrar. Once you delete, and once it's gone from your account then you're not associated with it anymore.

Normally the domain is removed from the account upon expiry, but we can FORCE REMOVE by choosing to delete the domain from account. Once deleted it'll be available for public, unless the registrars try to recover and auction it.
My understanding is that a domain name is locked when it's undergoing a WIPO proceeding. The registrant will have no control over the domain name.

That means, he'll not be able to delete the name.
 
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My understanding is that a domain name is locked when it's undergoing a WIPO proceeding. The registrant will have no control over the domain name.

That means, he'll not be able to delete the name.

Agreed. Maybe it's not possible once the domain is locked.
 
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My SUGGESTION would be: you can DELETE the DOMAIN from your registrar. Once you delete, and once it's gone from your account then you're not associated with it anymore.


What's great about the internet is there is never a shortage of people offering advice who don't know what they are talking about.

A UDRP proceeding starts by filing a complaint with a UDRP provider. It used to be required to notify the registrant upon filing. However, cybersquatters did the obvious things and either deleted or transferred the domain name. So, the procedure was updated several years ago to remove the requirement for the complainant to notify the registrant.

Instead, what happens is that upon receiving the complaint, the UDRP provider (WIPO, ADRForum, etc.) notifies the registrar and requests the registrant data. The registrar LOCKS the domain name, so that the domain name cannot be deleted or transferred, and the registrar sends the underlying registrant contact data to the complainant. The UDRP provider then invites the complainant to update the complaint with the received registrant data.

The UDRP rules aren't some sort of hidden secret on this point:

https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en

(b) Within two (2) business days of receiving the Provider's verification request, the Registrar shall provide the information requested in the verification request and confirm that a Lock of the domain name has been applied. The Registrar shall not notify the Respondent of the proceeding until the Lock status has been applied. The Lock shall remain in place through the remaining Pendency of the UDRP proceeding. Any updates to the Respondent's data, such as through the result of a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two (2) business day period concludes or before the Registrar verifies the information requested and confirms the Lock to the UDRP Provider, whichever occurs first. Any modification(s) of the Respondent's data following the two (2) business day period may be addressed by the Panel in its decision.

So, no, you can't delete the name.

Because the respondent may not have known about the trademark, or may have picked up the name in a bulk purchase, a lot of parties to a UDRP simply prefer to get the name transferred. So, if the parties agree, there is a procedure (Rule 17) under which:

(1) The parties notify WIPO they would like to transfer the name.

(2) WIPO informs the registrar to transfer the name to the complainant.

(3) the parties confirm the transfer.

(4) the proceeding is terminated.

(5) At WIPO, but not at ADRForum, the complainant receives a $1000 refund.

When WIPO commences a proceeding, they send a form for that purpose.

Sometimes, the complainant will not agree to a transfer. There are a couple of reasons for this:

1. The Complainant doesn't know that it is a safe procedure that is done between the registrar and the UDRP provider, and they don't trust the registrant, so they say no.

2. The Complainant (or the attorney) doesn't know they get a $1000 refund.

3. The Respondent had previously acted like a jackass toward the Complainant's attorney, so they don't feel like doing it.

4. The Complainant has a weak trademark and wants to make a point.

5. The Complainant has paid for enough legal time and it is simpler just to let it go, if they don't want the name right away.

There are a lot of UDRP decisions on the subject of whether the panel should go through the whole UDRP analysis and just order the name transferred by consent. It is handy to have citations to those decisions, if the reason is number 4 or 5, since agreeing to the transfer simply moves the proceeding to the point where the registrar is required to transfer the name, but without waiting a month.

But reasons 1 and 2 are based on the fact that the attorney on the other side, or the pro se complainant, may simply not be aware of the procedure. That is why instead of saying "I want to transfer the name" you should help them to understand WHY they should agree with you. Domainers typically don't do that, because, as this thread demonstrates, they don't know the rules in the first place. That's why before "doing stuff" that won't help and could make things worse, it is sometimes helpful to contact any of the several attorneys in this field who are happy to take a quick look at a situation and provide a quick answer if one is possible (see note 1 below).

So BEFORE making an offer that is easy to refuse, someone in the OP's position should consider:

A. Writing to the Complainant AND the case manager stating that they would prefer to transfer the domain name UNDER UDRP RULE 17 than respond to the UDRP. Copying the WIPO case manager will cause WIPO to issue a form email which they have, that explains the procedure. This way, the complainant will receive a note from WIPO telling them that this is a normal procedure, and the respondent is on record saying they want the name transferred. This decreases the likelihood the complainant will perceive the offer as some kind of a trick.

B. Mention the $1000 refund. Again, a lot of folks don't know about the refund, which WIPO will also confirm in their email. Now, I have to be honest here. The complainant's attorney has already billed their client for the full amount of drafting the complaint and paying the fees. The complainant's attorney then finds out they can (a) get the domain name right away and (b) get $1000 that is up to them to tell their client about.

C. Point out that the transfer under Rule 17 can proceed within a few days. Going to a decision will require waiting out the 20 day response time, and then the 10 day post-decision wait time, simply to get to the exact same point where the registrar will be ready to transfer the name.

If they still say no, then follow up with a note stating that it is your Response to the UDRP to request transfer of the domain name, and pointing out that the complainant refused to accept transfer of the domain name. Upon realizing that the roles in the dispute have now reversed such that the respondent is requesting transfer and the complainant is saying "no", some complainants will come around and take that $1000 check.

As with a lot of things, it's not about what you do, but is about how you do it.
Does it work all of the time? No. But even if you don't come to an agreement, the UDRP caseload has gotten a bit backed up this year and you also have to consider the perspective of the panelist. The panelist is going to cash that $1000 check the complainant didn't want. The panelist is a lawyer who usually charges by the hour. They don't get bonus points for putting extra time into these things. If they see a complaint that is 15 pages long with 20 sets of Annexes, and a submission from the other side saying "go ahead and transfer the name" then that panelist has a choice of how they are going to spend the hours of their day.

Like most questions about the UDRP, this one is discussed in the WIPO Overview, which is organized as an FAQ, includes citations to relevant cases, and can be read in one sitting. This item, and the previous one in the list, are relevant:

https://www.wipo.int/amc/en/domains/search/overview3.0/#item410

4.10 How do panels handle cases involving a respondent’s informal or unilateral consent for the transfer of the domain name to the complainant outside the “standard settlement process” described above?

Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the “standard settlement process” described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).

In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.
 
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One more question, is lost wipo a problem when entering the usa or other risk ?

That depends. If you are in a visa waiver country, no. If you are in a country where a visa is required, then you know that obtaining a visa is highly dependent on whatever the local consular officer might find while reviewing your application for a visa, and you probably know that those decisions can be highly subjective.

But, if you keep at it, then maybe a different trademark owner would bring a lawsuit for cybersquatting, infringement, counterfeiting, etc. and obtain a judgment against you of some kind, in which case having an unpaid judgment against you could factor in to an entry decision.

That said, it is highly unlikely for a UDRP decision to be considered disqualifying for the purpose of entry to the US, and especially from a visa waiver country. If you look at the attendance of, for example, Namescon, there have certainly been people who lost a UDRP and who apparently have no problem traveling to the US from non-visa waiver countries.
 
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(see note 1 below)

I left out note 1....

I'm not fond of emails that start out with "Hi John" from someone I do not know, have never met, and who do not identify themselves. Your communications seeking legal assistance from a lawyer are confidential, and I do not understand why people feel a need to hide their identity from someone they have contacted seeking help. At the very least, do not address me as "John" if you are not going to identify yourself. I don't know how other people react to that sort of thing, but I find it both insulting and a little creepy.
 
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