NamesCon2020

Would this be considered cybersquatting?

Labeled as question in Legal Discussion started by calluz, May 21, 2019.

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  1. calluz

    calluz Established Member

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    Hello all,

    I recently purchased the domain w/e/t/u/n/e.com. I noticed there was a company wetune.fm and was going to reach out to them to see if they would like to upgrade to .com. I checked and they have no trademarks in the US. After further research, I found out that the founder of this company lives in Mexico City and that the name wetune is in fact trademarked in Mexico. I live in the US. Would it be cybersquatting for me to offer this to them? Would they be able to seize the domain name even though the trademark is not in the country where I reside? If anyone could offer advice it would be greatly appreciated.
     
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  2. Avtar629

    Avtar629 MarketDN.com Gold Account VIP

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    let me take this @jberryhill

    Even if there is no registered trademark local or international. they have what's called an unregistered trademark which affords them some protection "locally" but regardless don't try to sell them the domain. There's plenty of lawyers out there that will take their money to try to sue you for TM infringement under the understanding that you registered the domain in "bad faith"

    it all boils down to when the domain was registered and if you purchased it in aftermarket which means it kept it's "aging"


    or it dropped and you got it via backorder or simply registered it which means it resets the "clock" on the domain on the day you got it.

    If their business existed before the new day of the domain then you might be in trouble.

    then again that's only if you contact them. which I'm sure you are itching to do.

    Got to figure out when the domain was registered and when they started their business.

    could always check when their business license was registered plus use Archive.org to check when their website went live.

    doing all of this will make sure you are free to contact them.

    good luck.
     
  3. korganian

    korganian Top Member VIP ★★★★★★★★★★

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    Well now this thread is a problem for you since you didn't disguise the domain to keep it out of search engine results. I suggest you don't send them any emails to add more evidence to be used against you.
     
  4. calluz

    calluz Established Member

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    I bought the domain in a godaddy expired auction before it was deleted, I did not hand reg it. The domain has been around since 2004, and their company (according to linkedin) has only existed since 2016. I did not buy this in bad faith, it was only after the fact that I realized this company existed (I am aware that probably would not hold up in court). Either way, I think I am fine since the domain age is much older than their company. Thank you for the advice I really appreciate it.

    Edit: Just realized you said I am free to contact them if all of those apply. So you think I am safe as long as my domain is older than the company?
     
    Last edited: May 22, 2019
  5. calluz

    calluz Established Member

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    Due to the aging of my domain, thanks to the post by avtar629, I do not think there will be any issues.
     
    Last edited: May 22, 2019
  6. jberryhill

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

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    In general, Avtar629 has absolutely not the first clue what he is talking about, and has seized the opportunity to prove that again here.

    The excerpt below is from the WIPO Overview of panel views on various UDRP issues that arise with some regularity. It is based on summaries of many UDRP decisions, and it frequently itself used as a guide for making UDRP decisions.

    https://www.wipo.int/amc/en/domains/search/overview3.0/#item38

    3.8 Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?

    3.8.1 Domain names registered before a complainant accrues trademark rights

    Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel’s assessment of a complainant’s standing under the first UDRP element.)

    Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.

    ...

    3.9 Can the respondent’s renewal of its domain name registration support a finding of (registration in) bad faith?

    Where the respondent provides satisfactory evidence of an unbroken chain of possession, panels typically would not treat merely “formal” changes or updates to registrant contact information as a new registration.

    Also, irrespective of registrant representations undertaken further to UDRP paragraph 2, panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.

    On the other hand, the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith. This holds true for single domain name acquisitions as well as for portfolio acquisitions.

    In cases where the domain name registration is masked by a privacy or proxy service and the complainant credibly alleges that a relevant change in registration has occurred, it would be incumbent on the respondent to provide satisfactory evidence of an unbroken chain of registration; respondent failure to do so has led panels to infer an attempt to conceal the true underlying registrant following a change in the relevant registration. Such an attempt may in certain cases form part of a broader scenario whereby application of UDRP paragraph 4(b)(iv), read in light of paragraph 4(a)(ii), can support an inference of bad faith registration for the respondent to rebut.

    Facts or circumstances supporting an inference that a change in registrant has occurred may typically include a change in the content of the website to which a domain name directs to take advantage of the complainant’s mark or unsolicited attempts to sell the domain name to the complainant only following such asserted change in registrant.

    -------------

    So, in terms of relative dates, what matters in the UDRP is when YOU acquired the domain name. There are some problems with that, but that's the way these decisions go.

    If by that you mean to suggest it is a registered mark in Mexico then, no, it's not. It is a pending application for registration.

    And not only that, it is a pending application for a figurative mark for "software administration". Quite obviously, if the domain name were being used, for example, to advertising musical instrument tuning, or even automotive engine tuning, that would have nothing to do with the mark and would be perfectly consistent with the dictionary words in the domain name itself.
     
  7. calluz

    calluz Established Member

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    Thank you for giving such a detailed response. I only just recently acquired the domain. I had no intentions of selling to this company until afterwards. Looks like I will not be contacting them, it will not be worth the headaches it may cause.
     

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