Woops, think I may have annoyed Twitter....

[Tiak]

Hi. Just started with this domain biz, and it seems I've already rubbed some people up the wrong way

The situation is that registering the domains 'twitter-hitter' 'twatter', 'twitterhitter' and 'twitteronline' with Godaddy, has resulted in the mail below...

>>>

Dear Sir or Madam,

The domain name(s) which has/have been registered by the Registrant potentially infringe(s) upon third parties' rights (trademark rights / right to a name). As the Admin Contact has been held fully liable by German courts for infringements of applicable laws caused by the registration of a domain name and the services or contents offered thereunder, we would like to verify that you are entitled to use the domain name(s) you have registered.

Besides this, an infringement through the registration and/or use of the domain name would constitute a breach of the Registration Agreement as the domain owner is responsible for ensuring that the registered domain name does not infringe upon third parties' rights.

The domain owner therefore is asked to comment on the above circumstances by

June 22, 12:00 CET.

Should there be no sufficient response by the deadline, we reserve to have the domain name(s) stopped from resolving via the domain name system (DNS).

Thank you for your understanding.

Please pass on this message to the registrant.
__________________________________________

>>>

It wasn't my intention to direct traffic away from Twitter, and benefit from any confusion, but merely to buy site names I thought might interest people wanting to start up domains *about* Twitter.

The 'Twatter' one for example being a pun on the word, which critics of the latest social networking phenomenon might appreciate Seems to me the 'hitter' varieties are sufficiently distinct from the brand name to be liable to action, and anyway how could they totally lock off the use of an everyday word (in conjunction with others) like 'twitter' which has been commonly used for untold centuries?

That said, I don't have long to respond to them, so any advice would be very welcome ^^

PS Being new I didn't spot the 'legal' section at first, so would appreciate a mod moving this, thanks.

 

[werty]

It's TM infringement. You are on the wrong side of the equation.

 

[tricolorro]

I don't have long to respond to them, so any advice would be very welcome ^^

Hi,

If I were you I would respond and say I registered these domains in error
and ask that they be canceled or turned over to Twitter.com.

You can't register any domains with "Twitter" in them or you're asking for trouble.

However you can use "Tweet" in your domain registrations.

Twitter folks have already said using "Tweet" is okay.

 

[werty]

If it was at godaddy, just file a refund. Check how many days have passed to see if you qualify.

 

[Tiak]

Thanks for the input people

One thing I should have made more explicit, is that it isn't Twitter themselves who are threatening to put the smackdown on me. It's merely the dude in Germany appointed to oversee potential domain trouble. I just thought the thread title was better as it was

Have definitely taken the comments on board anyway, and I'll check to see about the refund thing as it's only a matter of days since I logged them. However, I came across some interesting material since I posted the thread up...


Domain name disputes

>>>>>>>

Gripe sites

Sites such as www.natwestsucks.com or European City Guide have been problematic. Arbitrators and the courts have been inclined to order the transfer of the offending domain name particularly if there is some bad faith or a lack of legitimate use. Reasoning for this has been that a non-native English speaker may not disassociate the "suck" from the trade mark holder's mark.

However, it has been shown that those registering a domain name incorporating a known trade mark and using the domain name to host a website to air legitimate grievances against the trade mark owner can successfully defend the registration of such a domain name. To be successful in using the dispute resolution process to acquire these domain names the trade mark holder must demonstrate the registrant has acted in bad faith perhaps by demonstrating some attempt to extract a commercial gain from the trade mark holder.

In a case involving European City Guide, a valid site airing discontent at the business practices of the travel guide publisher European City Guide, the domain name was not transferred. Here it was contended that a prudent person would know that the site was criticising the company and that these were not the views of the company itself. Therefore there was no bad faith or disparagement of the trade mark. This highlights the problems that can arise with the domain name dispute process notably that inconsistent decisions arise as decisions do not have to be followed in subsequent cases.

................

Concurrent Rights

Registration is on a first come first serve basis. Simply because you have a registered trade or service mark, have a registered company name, or have been using a trade name for a lengthy period of time does not mean that another person with a legitimate reason for registering the domain and who uses it in good faith must give it up. One example of this is the Prince Sports case in which Prince Sports tried in vain to have the domain prince.com transferred from Prince Computers in the UK.

Companies with trade marks have tried to bully legitimate registrants out of attractive domain names, this has sometimes been called Reverse Domain Name Hijacking and damages can now be awarded in the US under the US Cybersquatting Act for such practice.


..........................

Requirements to bring an action under the UDRP

(1) Identical to or confusingly similar. The domain in dispute must be identical to or confusingly similar with a name, trade mark or service mark in which you have rights. Note this can cover unregistered trade marks such as names of well known personalities, e.g. the author Jeanette Winterson or names that have acquired distinctiveness through their use.

(2) No legitimate rights or interests. The registrant must have no legitimate rights or interests of its own in the disputed domain name. Legitimate use is broadly when the domain name is being used (or planning to be used) in connection with a bona fide offering of goods and services before the registrant is aware of the dispute.

Authorised distributors or licensees have been held to have legitimate rights, with unauthorised users or those claiming to be an official site not having legitimate interests. But occasionally the arbitrator will give the registrant the benefit of the doubt, particularly if the domain is a generic word or the registrant has a reasonably plausible use, e.g. Sting.com home. Other problematic areas in relation to legitimate interests are fan sites for celebrities. These are generally thought to be legitimate except where they are being used for commercial gain.

(3) Bad faith. The disputed domain must have been registered and used in bad faith. Both these elements of bad faith must be proved. The UDRP has set out a non-exhaustive list of what constitutes bad faith. These include the following:

* diverting users to other sites by creating a likelihood of confusion;
* if the registrant has multiple domains registered;
* an approach made to a party that would be interested in the domain demanding money or moneys worth greatly in excess of out of pocket expenses;
* passive holding of a domain was held to constitute bad faith if the impression that the domain was being offered for sale was given (the www.vivendiuniversalsucks.com case) and panels are increasingly inferring that the domains are being held for sale;
* offering to sell the domain on an auction site has been construed as being in bad faith; however, on occasions the fact that the registrant has offered to sell the domain by auction, or agreed to negotiate a price when contacted about the dispute does not automatically constitute bad faith for the purposes of UDRP. This was the case in the NamePros - Buy, Sell, Discover Domain Names case where the respondent had a long standing interest in the name; and
* being difficult to contact or untraceable has been construed as bad faith.

>>>>>>>>

Category: Blog Domain Name Disputes


Blog Article Feb 2009 Domain Names - Cybersquatting

William Shakespeare in Romeo and Juliet says, “What’s in a name? That which we call a rose by any other name would smell as sweet.”

About 400 years ago the bard understood that an experience is identified by the thing itself not by what it is called. So it may not be called a rose but it may smell just as sweet. There is a beautiful five petal flower found in Western Nigeria. You could often find them littered on the ground. I can still remember the sweet smell of jasmine but they were not roses. Under the law of passing off the defendant must make a misrepresentation of its trademark that is likely to deceive the public. So if I call the flower I referred to earlier a rose but it does not smell like a rose it is quetionable whether I am infact deceiving anyone. There have been several instances of people sometimes innocently registering domain names under their own names or of somebody else’s. They later find that these names are also a famous mark. A good example is the case of Italian couture designer Giorgio Armani. Mr AR Mani innocently registered the domain name Armani.com. Anyone accessing the domain on the web could immediately see that it was not the Italian couture designer. Consequently Giorgio Armani failed to get the WIPO to return the domain name. Other cases where a famous mark failed to secure the return of the same name as a domain name are: when Virgin Group lost virginmail.com to a pornographer. Easyjet lost easy-jet.com to a guy selling ink for printer cartridges. Former pop star Sting, failed to win back sting.com. So what would happen if someone registered peteradediran.com as a domain and started trading as an expert on Internet and Media Law in the UK? The answer is nothing because I already have that domain name.

>>>>>>>>>>>>>>>



I registered a domain name but have been threatened with legal action if I don’t hand it over - what to do?

^A concise and easy to understand legal outline of common dispute scennarios.

>>>>>>>>>>>>>>>


Any further comments very welcome, danke (thanks)

 

[zoogo]

Twatter shouldn't be a problem unless they've registered that too.

The rest, probably.

 

[cartoonz]

Thanks for the input people

One thing I should have made more explicit, is that it isn't Twitter themselves who are threatening to put the smackdown on me. It's merely the dude in Germany appointed to oversee potential domain trouble. ...

Appointed by whom?

 

[Tiak]

Twatter shouldn't be a problem unless they've registered that too.

The rest, probably.

Well I noticed that someone apparently unconnected with 'Twitter' has been getting away with the .com ext for years, so that should be something in my domain's defence [For the record I thought of 'twatter' independently, and was disappointed I'd missed the boat on the .com.]

This is what renowned domain dispute lawyer Simon Halberstam [though I admit I only just found that out, lol] told me:

"You may be able to defend some of these as there is recognition of the
validity of critique sites incorporating the name of the brand being
critiqued."

For anyone with an interest, I'll post an update on what happens when the rep responds to my explanation for regging these domains.

...............

Appointed by whom?

This extract from the original mail should clarify somewhat:

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the above domain name(s) is/are currently using KeySystems'
local presence service in order to comply with the .DE Registry's terms and conditions. DENIC, the .DE Registry, requires an Admin Contact with a place of general jurisdiction in Germany whenever the domain owner is located outside Germany. Our firm renders this Admin-C service and represents Mr. _____, who is named as Admin-C for the above domain name(s).

The domain name(s) which has/have been registered by the Registrant potentially infringe(s) upon third parties' rights (trademark rights / right to a name). As the Admin Contact has been held fully liable by German courts for infringements of applicable laws caused by the registration of a domain name and the services or contents offered thereunder, we would like to verify that you are entitled to use the domain name(s) you have registered.

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Cheers!

 

[tristanperry]

The domains were clearly registered in bad faith. I'd simply cancel them or look to turn them over to them.

"TwitterOnline.com" especially is one that smacks of a bad faith registration.

 

[Tiak]

The domains were clearly registered in bad faith. I'd simply cancel them or look to turn them over to them.

"TwitterOnline.com" especially is one that smacks of a bad faith registration.

From Wikipedia:

"Cybersquatting (also known as domain squatting), according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price."

Nope. You seriously think I'd ask Twitter to make an offer for 'Twitter-Hitter'? Admittedly in retrospect 'TwitterOnline' was a probably a mis-step due to being new to this, but at no point have I intended to approach Twitter for an offer, or wanted them to approach me. These sites are intended as domains for discussion/satire of this trend. If I wanted to pull that sort of caper, I would have logged a whole raft of domains with just one letter typos in each.

And anyway, why should a very recent company be able to totally exclude any use of an age-old everyday word from the domain lexicon? Should all phrases incorporating 'Virgin' be outlawed because of Richard Branson's company..? What if a firm emerged calling itself 'Talk', and decided to shut out ALL uses of that word? It'd be sheer arrogance/stupidity to try and do so.

 

[cartoonz]

so they are .DE names then?
keep twatter, lose the rest faster than an infected snake.

No amount of mental aerobics is going to get around the basic fact that you registered the names in bad faith. Not in court and surely not at WIPO.

If they were .com's I'd tell you the same thing. I was wondering how the Gestappo fit in with all of this, which is why I asked. The fact that they are supremely blatant TM infringements was obvious from the start.

 

[Tiak]

Yes, they are .de, as should've been clear The fact that they are should further decrease any chance of confusion with the networking site.

"No amount of mental aerobics is going to get around the basic fact that you registered the names in bad faith. Not in court and surely not at WIPO."

Note the last sentence here in particular:

"However, it has been shown that those registering a domain name incorporating a known trade mark and using the domain name to host a website to air legitimate grievances against the trade mark owner can successfully defend the registration of such a domain name. To be successful in using the dispute resolution process to acquire these domain names the trade mark holder must demonstrate the registrant has acted in bad faith perhaps by demonstrating some attempt to extract a commercial gain from the trade mark holder."

"keep twatter, lose the rest faster than an infected snake."

Lol, I'll see how the rep answers, but I'll keep what you've said in mind

 

[labrocca]

You're on the losing end of the stick here.

Are you only looking for people to agree with you?

If you had ONLY registered Twatter then "maybe" you could have defended that. However as a group you registered Twitter-like domains and I call you on your BS.

It's bad faith. It's the definition of cybersquatting. You got caught. They want the domains. Give them up.

 

[cartoonz]

...Note the last sentence here in particular:

"However, it has been shown that those registering a domain name incorporating a known trade mark and using the domain name to host a website to air legitimate grievances against the trade mark owner can successfully defend the registration of such a domain name. To be successful in using the dispute resolution process to acquire these domain names the trade mark holder must demonstrate the registrant has acted in bad faith perhaps by demonstrating some attempt to extract a commercial gain from the trade mark holder."

See? there you go doing useless mental gymnastics again.

Look, if it smells luck a duck, walks like a duck, sounds like a duck - IT IS A DUCK!

Read this sentence again:
"No amount of mental aerobics is going to get around the basic fact that you registered the names in bad faith. Not in court and surely not at WIPO."

Stop straining your brain and dump them. Fast. Trust me, you do NOT want to try to prove any of your "wish upon a star and may moonbeams shine down on me today" theories in a legal skirmish... you will get your butt handed to you on a platter, along with a bill you'll not want to pay... and for what? Some basically useless domains?

Duck, snake, poisonous squirrel.... whatever, Lose them ALL but twatter... and make that into some sort of genital puppet show or something.

...not that I have any sort of opinion on the matter...

 

[IAmAllanShore]

Sorry for being dense - but the email you received was from a representative of the .de registry, not Twitter?
(I too would not have guessed they were .de's without your later clarification, so just making sure I am not confused as to any of the other background.)
:gl:

 

[Kaizen Bricolage]

Just count this as one more voice agreeing that it's trademark infringement. Registering any domain name that includes a trademark that you don't own, that intended to have anything to do with the business that owns the trademark, is a bad idea.

 

[Smartphone]

This is pretty simple Trade Mark infringment and trying to justify it at all is not going to work. Drop the names .

 

[JulieLA]

Twitter.com recently announced what they will allow insofar as the use of "Twitter" in third-party application names and domain names for those applications. Go read their blog for details. I'd say unless you've developed the latest Twitter app, drop the names.

 

[silverclick]

yes JulieLA: i saw that article that they released ... if you are lloking to make money off of a twitter domain that's an uphill battle but if it is in support of twiiter, they may let it slide.

Either way, safest way is to not even go there. You wouldn't want to put money & time into a domina then have it get taken from you.

 

[GiftedDomains]

Either way, safest way is to not even go there. You wouldn't want to put money & time into a domina then have it get taken from you.

maybe you should do the same with delldeals.info instead of changing to private registration ! (unless you want to support Dell lol )