LegalSupply.com Lost To eLegalSupply.com: “The Transfer Of A Domain Is Equivalent To A New Registration”

A few weeks ago told you about a UDRP had been filed on the domain name legalsupply.com.

At the time there was no indication who filed the UDRP seeking control of the domain, but the decision has just been issued and the complainant is  eLegalsupply.com, LLC.

And guess what?

eLegalSupply.com just took the generic domain name LegalSupply.com away from the domain holder based off a Trademark for eLEGALSUPPLY.COM which was filed years after the original registration.

Moreover in the wild, wild west of UDRP decision the one member panel decided that “The Transfer Of A Domain Is Equivalent To A New Registration”

Yup against a ton of UDRP decisions that went the other way.

No wonder most domainer’s think that the UDRP is nothing more than a Crap table when it comes to decisions and speaking of crap here are the relevant facts and findings by the one member panel:

Complainant has registered its ELEGALSUPPLY.COM mark with the United States Patent and Trademark Office (“USPTO”)  filed January 28, 2008; registered August 5, 2008.

Respondent’s <legalsupply.com> domain name is confusingly similar to Complainant’s ELEGALSUPPLY.COM mark because it differs only by a single letter.

3.    Complainant never licensed or authorized Respondent to use the mark.

4.    Respondent’s disputed domain name resolves to a website that features a banner stating that the website is listed for sale at domainnamesales.com and displays links referencing Complainant’s competitors.

5.    Respondent has not been commonly known by the disputed domain name and the WHOIS information provides no indication that Respondent is associated with the disputed domain name.

6.    Respondent registered the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of Respondent’s out-of-pocket costs.

7.    Respondent uses the disputed domain name to intentionally attract Internet users, for commercial gain, to the resolving website by creating a likelihood of confusion with the mark as to the source, sponsorship, or affiliation of the disputed domain name and resolving website.

8.    Respondent has demonstrated a pattern of bad faith domain name registration.

“The Panel finds that Respondent was not the first person to register the domain name. ”

“As of March 1, 2007, the domain name was registered to Kevin Daste at the registrar, Network Solutions, LLC. As of April 9, 2012, the domain name was registered to Respondent at the registrar, Fabulous.com Pty Ltd.”

“The domain name must therefore have been transferred to Respondent at some point after March 1, 2007.”

“Complainant has registered its ELEGALSUPPLY.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,482,692 filed January 28, 2008; registered on the Supplemental Registry on August 5, 2008).”

“The Panel finds that using a confusingly similar disputed domain name to host links advertising Complainant’s competitors is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).

“Complainant also contends that Respondent’s disputed domain name resolves to a website featuring an orange banner on top of the screen stating that the domain name has been listed in the marketplace at <domainnamesales.com>. ”

“The Panel finds that offering the disputed domain name for sale does not indicate rights and legitimate interests under Policy ¶ 4(a)(ii). ”

“The Panel agrees with Complainant and finds that Respondent is guilty of typosquatting and lacks rights and legitimate interests in the <legalsupply.com> domain name under Policy ¶ 4(a)(ii).”

“Had the Respondent established that it was selling or otherwise dealing in legal supplies, the Panel might have decided differently, but there being no indicia of rights or legitimate interests in the disputed domain names, the Panel finds that the Complainant has met the Policy ¶ 4(a)(ii) criteria.”

Respondent was not the first person to register the domain name. ”

“As of March 1, 2007, the domain name was registered to Kevin Daste at the registrar, Network Solutions, LLC. As of April 9, 2012, the domain name was registered to Respondent at the registrar, Fabulous.com Pty Ltd. The domain name must therefore have been transferred to Respondent at some point after March 1, 2007. Even assuming that Complainant’s first use of the mark was on May 7, 2002 – which Respondent suggests and Complainant denies – that use would still pre-date Respondent’s re-registration of the domain name by at least four years and nine months.”

“The transfer of a domain name is equivalent to a new registration under the UDRP

Accordingly, it is Ordered that the legalsupply.com domain name be TRANSFERRED from Respondent to Complainant.”

Certainly a troubling decision for any domain holder.

Just not domainers, but any domain holder.

Comments

  1. Innocuous says

    The other side of this is that eLegalSupply.com was registered in 2002. Why was it not important to obtain the LegalSupply.com name (reg’d 1998) only now, and not during the past 10 years? What changed, and why the sudden urgency?

    Also, eLegalSupply.com was trademarked in 2008. So it seems that John Enyart (eLegalSupply.com registrant) was serious about using that as his business name, and not LegalSupply.com.

    As Ozzy would say, “All aboard!…”

  2. JamesD says

    @Robert Cline – “SOLD IUM.co $1,500″

    Robert, value of IUM.coM = $15,000+ … how do you explain that?

    ————–

    LegalSupply.com – this name easily warranted getting a lawyer to defend.

    Whoever owns LegalSupplies.com needs to watch their back in case these clowns come after that.

  3. says

    About half the time when I buy or sell a domain I use a standard domain sales agreement, and one of the sections in it transfers all trademark rights to the new owner. Would that have helped any in a UDRP case like this?

  4. w says

    so let’s say you have registered a generic domain.

    later abc corp registers a tm confusingly similar to generic domain.

    you decide to retire and you want to sell generic domain.

    can a buyer receive generic domain without being at risk of a udrp from abc corp?

  5. w says

    also is it common for a panel to consider using a name like “legalsupplies” for something other than selling legal supplies to indicate lack of a legitimate interest? as if the panel thinks every domain name must be descriptive of the nature what you will find when visiting the site. there is no such rule.

    if you go to milk dot com, there’s nothing about milk, just some random stories, recipes, etc. having nothing to do with milk. so for the purposes of the udrp does the owner lack a legtimate interest in this domain unless he can come up with some semantic connection of the site content to the word milk?

  6. says

    Hmmn… this is getting dangerously out of hand. Come on, this is the 21st Century. Are we simply gonna fold our arms and watch the ‘mighty’ reap from where they did not sow? Sedo, Afternic, NamePros, etc, please rise up to the challenge. Join us now and let’s fight this war together so that you too can remain positively bouyant. Domaining appears to being raped right now and we must quickly stem the tide NOW! It’s time to get some high profile attorneys involved in such cases. A DOMAINERS’ SOS Fund would NOT be out-of-place either.

    Unless of course there’s some missing info from this write-up, my verdict is “NOT GUILTY”. Pure & simple!

  7. says

    It’s the law in the 9th Circuit that the goodwill possessed by a prior owner transfers with a domain name at the time of its sale. That decision goes against what most UDRP panels have held, and I cite it every time it might be an issue with a UDRP. Looks like a bad decision all around. Three member panel might have helped.

  8. says

    Doesn’t anyone think it’s odd that all these companies who never challenged the rights over five or more years are waking up in the morning an it occurs to them “hey I can steal that domain for $1500″

    This is a marketing campaign by people who make money on the other side of the business by helping companies monitor and protect their brand. Imagine a tool like Lead Refs but it searches for vulnerable domainers where $1500 is a cheap gamble- bad actors, privacy shield, people who can’t afford a fight or would be afraid to reveal themselves because of risk to other assets. i’m told 80% of the time with totally baseless arguments they win by default because no one shows.

    So a commissioned sales rep calls on a the mark alerting them to a problem they never knew they had, they show all kinds of articles about cybersquatting years old and not rebutted by us and then boast that they have an 80% success rate catching names like this that would otherwise cost six figures (and they show comparables) offering their services to and know how to guide the prospect through the process. Their fee just a flat $10K which includes a one year protection plan. Then they show the Google page and argue this name will organically make the top and deliver more than the $10k in free customer acquisitions. Sounds good to me!

    Last year 10,000 catches at $10k each plus acting as broker to find suggest and sell additional names. Do the math. Follow the money! Verizon who leads this charge reclaimed 10,000 names by UDRP last year claiming 9 million visitors gained. These are powerful case studies that motivate action. Meanwhile we let them set and control the message and have done nothing to get the other side of the story out. A banner ad under keyword cybersquatting offering the facts about your right skewed from our perspective would be a great start. ICANN?

  9. The Leg-End says

    I look forward to when they do this to a regular joe who owns a prized domain they spent all their cash on, and he is similar in state of mind to michael douglas in falling down
    THEN the panelists and complainants will wake up and smell the coffee
    A real reaction, not just rolling over
    I’d pay to see it lol, michael douglas in falling down turning up at wipo hq, new underpants time for the bunch of fags lol

  10. John Berryhill says

    @Brett

    “Three member panel might have helped.”

    It’s looking like a competent Response would have helped. It looks like the respondent went after the “validity” of the trademark registration, without ever noticing that it was a Supplemental. That, and the single member panel, strongly suggest the Response was not competent.

  11. Back in the real World says

    Owen Frager –

    I have asked several times on this site if there has been an increase in UDRPs and if so if there was some body of people who would stand to gain with increased litigation (lawyers – no offence Berryhill) who were pointing out potential cases to potential claimants.

    This would be a natural extension of the auction frontrunning some have dabbled in.

    I dont want to sound all conspiracy which is why I have asked about figures before.

  12. Overpriced says

    IMO, this ruling is terrible. The one person panel made a terrible decision. The “e” holder probably couldn’t afford the far better domain. Therefore, they decided to take it the unethical way (IMO).

    “Legal Supply” is not a typo site. It is generic. A typo of eLegalSupply, which is my opinIon is a bad domain choice, is eLegalSuply or eLegalSupplu and do forth. IMO, it is confusion of what is actually typosquatting and what is the better domain.

    This is worse than the hyphenated ultimate guitar taking the unhyphenated domain. Should Schilling help in this matter since his DNS banner probably influenced the outcome?

    IMO, the ruling shows lack of knowledge in trademark. The e site never applied for the generic trademark name. IMO, the one panel and the company accepting the domain lack integrity. You need integrity to operate in the legal field.

    Horrible decision. Not people who own e domains can take the generic site. This indicates to companies to get the e and i domain, trademark the name, and then pursue a IDRP against the much valuable generic site. Unethical practice across the board.

  13. Philip Corwin says

    @Owen — I recently posted an article at both circleid.com and internetcommerce.org which discussed that fact that 2011 UDRP filings at WIPO and NAF combined were flat notwithstanding a 9% ncrease in domain registrations last year — and that the number of domains involved in UDRPs is less than one-two hindredth of one percent of all domains.

    That article also took note of some of the recent acronym UDRP rulings and asserted that there is a clear appearance of potential conflict in the fact that TM attorneys who act as ‘neutrals’ in UDRP arbitrations can also represent complainants or respondents. This is particularly troubling on the complainant representation side — you can have a panelist or panel treading new ground, such as the recent CEAT decision at WIPO, and then trademark attorneys can market that new opening to clients/potential complainants. If there is a corresponding increase in UDRP filings as a result, WIPO can be expected to issue a press release asserting an increase in cybersquatting — when in reality there has been a further erosion in registrant rights.

  14. says

    Let’s see… so the owner of eGoogle.com should file a case against Google.com. It is after all, “confusingly similar”.

    But in all seriousness. How would you go about protecting yourself from this? Furthermore, let’s say that the UDRP continues to make ridiculous decisions like this – and the majority of domain owners concur – what recourse would we have against an entity to which we are subjected?

  15. says

    Back it’s not the lawyers they are on our side. It’s evil doers like fairwinds who ride in disguised as white knights
    Just business in the real world
    Where there is money there are vultures
    And anyone with sales skills can eat your lunch because you sit passively and leave the door open for them

    Mike Elliot frank scott day etc have been honest and open from day one they’ve established reputation and a traCk record that becomes the best defense- offense they are legitimate businesses

    Anyone who hides usually has something to hide

  16. HM says

    so the owner of eGoogle.com should file a case against Google.com. It is after all, “confusingly similar”.”

    That’s not a good example.
    Google is a whimsical trademark. They haven’t gone after eGoogle.com but that doesn’t mean that whoever owns it is on solid ground with it, no different than if someone bought ePepsi.com or vMicrosoft.com.

    Legal Documents is a deeply generic term. This is someone using a branded offshoot to take the generic term, so, if I start up ABCreditCards.com and obtain a supplemental TM for it, per this ruling, I can assert some right over CreditCards.com since it’s ‘similar’.

  17. Overpriced says

    If this domain was parked on Internet Traffic, then it is another reason to avoid using that Platform (IMO). You’ll probably end up losing your best domains.

    The blog owner here and FS probably don’t care whether you lose your domains (IMO). Their main concern is to probably protect their assets. Again, all talk and no action make domainers look like kids taking the bullying.

    Expect to see more bad rulings. Domain blogs will keep writing to not help your cause. Maybe this is a way to increase trademark filings. Nobody knows until they fight.

  18. BrianWick says

    Here is the irrelevant stuff as I think John Berryhill implies:
    LegalSupply.com was first registered in 1998.
    eLegalSupply.com claims a first use in 1999 in the USPTO.
    eLegalSupply.com was last registered ‘again’ in 2002.
    Archive.org shows a record in 2001 eLegalSupply.com meaning there was a prior owner and it let eLegalSupply.com expire.
    ..on and on and on….

    The fact of the matter is ‘e’??? domains have a life of their own and LEGALSUPPLY and ELEGALSUPPLY can coexist without interfering with eachother – as the 2001 Archive.org record indicates.

    Moving or moving and selling the domain offshore and add to that offshore WHOIS likely became the distraction the panel could not overcome – where the panel felt the reset button should be hit.

    I do not think a 3-member panel would have agreed

  19. says

    We all appear to be sharing almost the same ‘sentiments’. But is there no room for an appeal against this very unpopular judgement (IMO)? Natural justice demands such. Surely, this cannot be the end of the road for the concerned domainer. I think the setting up of a global DOMAINER’S SOS FUND (under whatever name) might just provide enough funds to move the case up another level… to the mainstream courts. All we appear to be doing right now is presenting our case in the people’s court where the verdict could be morally upright but definitely meaningless, at least in the short term. I wonder who is next. Father, please save your ‘poor’ children!

  20. chris says

    This is actually a problem many domainers (including Rick Schwartz with his current UDRP claim regarding SaveMe.com by a Brazilian company) will be facing in the future:

    If you are the domain owner who has registered a disputed domain BEFORE someone else registers a “confusingly similar” trademark, then you are reasonably safe.
    However, from that point on it will be difficult to sell/transfer the domain to another registrant, because that “new” owner now has acquired the domain AFTER the registered trademark right and will be much more vulnerable to a UDRP claim.
    (as a selling domainer you would actually have an ethical obligation to disclose past UDRP or other trademark issues to a buyer)

    Points to take home:

    1. Before you buy a domain do a quick search of the keywords in the search feature of the US trademark office (TESS), and search the domain name in the history of UDRP filings.
    2. If you buy a domain that has either possible trademark issues with the keywords or that has had a past UDRP claim you should only acquire it only if you are definitely planning to use it yourself for a business purpose that does not conflict with the business of a trademark holder and could not reasonably be interpreted as “confusingly similar”.
    3. If you sell a domain and are aware of possible trademark conflicts or past UDRP filings it is your ethical responsibility to disclose these to a potential buyer. Not doing so may expose you to liability for potential subsequent damages.

    Again, keep in mind: the main issue with trademark disputes is “confusingly similar”. The key purpose of trademark law is to assure that consumers are not confused about trademarked companies or products.
    If you own a domain that might cause trademark conflicts, then at least DO NOT resolve it to anything that could be construed as “misleading” or “damaging to the trademark owner” or as exploiting the trademark for your personal gain. The safest option is to not resolve it anywhere, that way there is no possibility of confusion whatsoever.

    An interesting example of a domain and website using a trademark (“Chevy”) is Chevy.NET.
    Chevy.COM is obviously owned by General Motors (who owns trademark rights for the words “Chevy” and “Chevy Trucks”).
    Chevy.NET is an independent website with a clear business purpose, which has a disclaimer at the top of the “About Us” page indicating that they are not affiliated with General Motors.
    Obviously this appears to be a valid use of the domain, because otherwise General Motors most likely would have claimed it a long time ago.
    (Of course it is also possible that they don’t pursue this site because it does ultimately promote their own products…)

    Interesting times, indeed…

  21. RichardL says

    How is this much different than what HSBC did in 2007 with the CreditKeeper.com case?

    To recap, the domain CreditKeeper.com was registered in 2001. TMs were established in 2004 for “CreditKeeper” by a company that HSBC later bought.

    The CreditKeeper.com domain was sold at the end of 2004.

    UDRP launched in 2007. 3 member panel found:
    – the domain name was “registered” within the meaning of the Policy by virtue of being acquired by the Respondent on or about December 15, 2004.
    – the Complainant’s TM for “CreditKeeper” gives them rights to file against CreditKeeper.com
    – a previous registrant’s good faith registration of a domain name DOES NOT immunize one who subsequently acquires the domain name from further scrutiny.
    – the Whois Privacy service didn’t forward the Cease & Desist letter to the Registrant, and the Panel found “a failure to respond to a cease and desist letter can be evidence of bad faith. ”

    So, based on HSBC and eLegalSupply.com the new game plan is:
    1) create a TM (or even a Supplemental one) on a product/service with a generic name, like HomeOwners, BabyBook or JunkCars
    2) wait for the domain to change hands
    3) launch a UDRP
    Lather, rinse, repeat.

    Sounds like a Patent Troll business, but applied to domains. And before you think that it’s bottom of the barrel people doing Patent Trolling, read this: http://anewdomain.net/2012/04/05/who-would-fund-a-patent-troll-tech-companies-computerworld/

    So, I think you’ll see more of the 3 step Domain Trolling happening in the coming years. DomainTrolling — defined here. Feel free to use the term. I’m busy… going to go file some Trademarks. Look out for my UDRPs in a couple years. Investors welcome.

    DTVI
    Domain Trolling Ventures Inc.

  22. Joseph says

    In The Landmark Group v. DigiMedia.com, L.P., NAF Claim Number: FA0406000285459, the same panelist Hugues G. Richard was of opinion that “Respondent alleges that its business model is the registration of large numbers of dictionary words commonly searched by Internet users, and that it generates revenue by providing pay-per-click advertising links… As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy.”

    In CB Publishing, LLC v. Akway International Ltd c/o Hostmaster, NAF Claim Number: FA0702000926506, the same panelist Hugues G. Richard was of opinion that the Respondent,
    who registered and parked cbpublishing.com, “has rights or legitimate interests in the disputed domain because it is using it to make a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), by advertising various publishing services”.

    In this case, according to the same panelist, parking of LegalSupply.com advertising “legal supply” services is not good.

    I wonder what is real opinion of NAF panelist Hugues G. Richard on parking of domains incorporating dictionary terms?

    The only logical explanation seems to be that this panelist decides the case first (how he feels to be honest) and prepares argumentation to its decision later. What makes LegalSupply.com case different? Maybe it is that the Respondent was not completely honest, claiming that it registered the domain name in 1998? Providing false or misleading information by one party may always prompt the Panelists to decide in favor of the other party…

  23. Overpriced says

    @Brian,

    “I’m mad as hell and I’m not going to take it anymore”

    -The Network (Howard)

    The Network is UDRP
    The viewers are domainers

    Who is more powerful?

  24. Overpriced says

    @Chris,

    Easy solution is to deal with less expensive domains. Develop your websites to give web surfers good information.

    Anytime an end-user has a need, they will want to take something that belongs to another. It is usually a far better domain than they run.

    Create a website dedicated to these unfair and or unethical rulings. Domainers don’t have time to follow the steps you outlined. There are domains that are more generic than LegalSupply. Some companies don’t attempt to go through an unethical route to pursue them.

    Why waste time? Chances are that ethical domainers will make ethical decisions. Previously, StatConter on InternetTraffic featured a StatCounter link. Since then, the link has been updated. It is an obvious typo owned by Name Media.

    StatCounter is nice not to take that domain. Input StatConter in Google. You will get StatCounter. However, the updates were made on the parked site to avoid such competition. Therefore, the site is not conflicting. Case closed.

    If you own a conflicting domain, change the focus to avoid unwanted attention. Close barriers that normally will create confusion and or give end-users firepower to take your domain investments.

    In my opinion, parking companies are irresponsible. They hang their customers out to dry. The parking companies should take responsibility or lose out big.

  25. BrianWick says

    Joseph –
    Very Good Stuff. Thanks for sharing it.

    And only with 200K in legal fees this case would not hold water in the USA under ACPA – the 14th Amendment of equal access (which is implied in ACPA) would shine – LEGAL SUPPLY has not even remotely taken on secondary meaning.

    I am still convinced that the perception of “running for the hills” to an offshore registrar in St. Kitts & Nevis – as Joseph might be refering to as not being “completely honest”, is where the decision was made and the Panel worked backwards from there.

  26. chris says

    @ Joseph

    The issue in this particular case is not when it was initially registered or whether parking is a ligitimate business issue, but WHEN IT WAS TRANSFERRED (i.e. acquired by a new owner, who at that time has to respect trademark rights acquired before the transfer). The critical issuer is the point in time when ownership was established.
    In this particular case the NEW owner acquired the domain AFTER the trademark was registered and was silly (or more likely ignorant) enough to resolve it to a destination with services that conflicted with the trademark holders services.
    This is actually from a legal point a correct decision and a failrly straight forward case.
    Had the NEW owner resolved the domain to no page or a page with content unrelated to the trademark holder’s services he would with near certainty not have lost the domain.

    @ RichardL

    You are making essentially the same point I made.
    A company filing a trademark AFTER a domain has been registered will most likely not succeed against the original domain owner. But if domain ownership changes they will have a shot at the NEW owner, especially if the new owner creates any hint of trademark impropriety (i.e. parking on a site with links to competitors, or any other way that may create confusion or interfernce with the trademark owner’s goods or services).
    A NEW owner will most likely be safe as long as he does not resolve the domain to any site (or at least not to a site with potential conflict issues) or if he uses it for his/her own legitimate business.

  27. Joseph says

    As to the parking… If you are still parking your generic domains using google feed, please do yourself a favor and check what ads are shown – for EACH of your domains. An example (made-up for the purposes of this post). You own BlueParrots.com and decided to park it. You even set “parrots” or “birds” keyword with your parking company. Now, you visited the domain and found ads related to, say, finances. Why? Because there is some company called “Blue Parrot LLC” providing asset management services, you never heard of this company, but google decided to ignore your suggested keyword to make more money to them (and to you). The visitors of your domain may be indeed looking for asset management ONLY! Blue Parrot LLC may indeed file UDRP and you will not win. So, if you want to be safe, you should somehow change the parking lander. Remove 1-click configuration. Set associated keywords manually. Since all “G-based” parking providers are required to show a custom search field, which may be small or large depending on lander, you should accept the fact that you will still receive parking revenue from this unfortunate confusion, as the visitors will still search for “asset management” in this search field, but at least you will be safe in UDRP sense…

  28. John Berryhill says

    “Here is the irrelevant stuff as I think John Berryhill implies”

    I was responding to the notion that “change in registrant = new registration” is some kind of new idea as a UDRP or ACPA decision principle. There’s nothing new there.

    Yes, the decision is awful for a lot of reasons, but not for that one.

    As RichardL points out above, that principle goes back further than the creditkeeper.com decision.

    Here is what panelists are trying to avoid (and I’ll get to where they run off the rails):

    Example 1
    ——–

    Albert has a domain name – fishythings.com – since 1999 and he uses it for advertising aquarium supplies and fish.

    In 2002, Bob starts a clothing company specializing in selling fishnet fabric clothing. He calls it “Fishy Things”. He gets a trademark for “Fishy Things” for retail sales of clothing.

    So far, no problem. Albert can keep on doing whatever he was doing before Bob started his business.

    Now, Bob’s clothing is really successful and develops a huge reputation. This is still not a problem for Albert, but Albert should keep an eye on his web page, to make sure it stays with aquarium and fish. If Albert starts advertising clothing, some UDRP panelists (of the Andrew Christie variety) won’t care that Albert was there first. Other UDRP panelists would disagree, so long as Albert had the domain name first. This is one area where UDRP panelists disagree.

    Okay, so.. along comes Charlie. Charlie knows that Albert doesn’t really do well with the fish business, but Charlie is perfectly aware of the clothing brand. Charlie then buys the domain name fishythings.com from Albert and starts advertising clothing that competes with Bob. In fact, Charlie pays a huge premium to Albert, well over the value of the domain name, in order to get it for that purpose.
    ——-

    I’d be curious to know what the general sentiment is about whether or not Charlie has registered the domain name in bad faith?

    Because that’s the reasoning behind the “transfer as new registration” thing comes in. In Example 1, the entire reason Charlie bought the domain name, and then started doing something with it that Albert wasn’t, was because “Fishy Things” had become a big clothing brand.

    The idea that new trademarks can limit value – NOT, of course, as applied to descriptive and generic terms – is not a new one, and has always been true outside of the domain name context. There are two examples that illustrate this point. My name is “Berryhill”. Twenty years ago, if I had gone into the business of running a Mexican restaurant, I would have been free to do so, and to call it “Berryhill”. Today, I can’t do that. The reason I can’t do that, even though it has always been my name, is because there is a company in Texas that started a chain of “Berryhill” Mexican restaurants, and they have a federal trademark registration for “Berryhill” for restaurants. So, even though it’s been my name for almost half a century, there is now something for which I would be infringing, even if I used the name I’ve had all along. That is not new, and has been basic trademark law for a long time.

    Another example is senior use to federal registration. Let’s say you are operating a bakery called “XYZ” in the Chicago area. Meanwhile in California, someone else starts a bakery in California. Their business takes off and spreads to several western states and they obtain “XYZ” as a federal trademark for baked goods. The result of that situation is that you can continue to operate your Chicago bakery, and you have senior rights to them in the Chicago area where you were always operating. But their federal registration has the effect of locking you in to that Chicago area. You would not be able to expand your use of the brand beyond the area where you were originally operating. Again, that is nothing new, and it has been that way for decades.

  29. says

    John it’s still a case of one domain for every thousand matches
    Does regal the buick count over regal the cinema
    Or by default to the company with the highest revenue and most geographies
    To the French domain owner of the one that means Regal in English
    Or like handicapped spaces does a certain amount have to be offered to startups and minorities first

    In the yellow pages the heading says Legal Supply and that doesn’t mean Legal Supply Inc is entitled to the top and biggest ad- it’s open to all.

    Maybe directories are the answer I think condominiumizing untapped sub-domain potential is where the bread and fairness lies remember Rick Schwartz Men.com: Men seeking Men enter here women seeking men enter there

  30. John Berryhill says

    “1. Before you buy a domain do a quick search of the keywords in the search feature of the US trademark office (TESS), and search the domain name in the history of UDRP filings.”

    The only problem I have with that suggestion, which is not a bad one, is that you have to understand that:

    “Things in TESS” are not necessarily “Trademarks”

    I see things from domainers all of the time where they say stuff like, “There is a live trademark in TESS” when they are talking about a refused, but not yet abandoned, application for some generic or descriptive term. Likewise Supplementals. Likewise 2(f) registrations relative to a domain name which was registered not long after the claimed date of “first use”.

    It’s not rocket surgery, but domainers are just awful at interpreting what TESS records actually mean, or in using search terms inclusive enough to find relevant things.

  31. John Berryhill says

    @Owen

    I’m not sure I understand your reply. I agree this decision sucks. I’m simply pointing out that the reason for the suckage is not that there is a “ton of decisions” holding that transfers don’t reset the clock. There aren’t. On that particular issue, there is no surprise here.

    It DOES suck for other reasons, though.

    When you are talking about dictionary words arbitrarily applied, then you are correct, “REGAL” is a mark used for cars by one entity and for movie theaters by another. If you have REGAL.com, you can’t use it for cars, and you can’t use it for movie theaters. If you want to use it for, say, package tours of palaces, that’s fine. (now, I haven’t actually checked if someone uses it for travel agency services, but you get the point)

    Not all trademarks are created equal. Some are more distinctive than others. While “REGAL” and “UNITED” can and are used by multiple parties, there are some marks which are inherently distinctive – they don’t mean anything else but as a reference to the trademark. For example, you can’t say, “Oh I’m not using XEROX for copiers. I’m using it to sell shoes.”

  32. w says

    tess won’t tell you about tm’s in other countries.

    it won’t reveal state tm’s or potential common law tm’s.

    but what percentage of udrp’s are based on non-us federal tm’s?

  33. w says

    @richardl – it is certainly bottom of the barrel people. it’s a fear-based business. plain and simple. and as for who would fund them, it’s anyone in fear of being sued. so yeah, it’s easy to find willing participants.

    to manage p.r., they can reinvest some of the protection money toward “innovation” and let the press feed on that. puts them in a better light. but will they take on development? don’t hold your breath.

    the i.v. business is based on threats, nothing more. it was founded by a guy who regularly had to deal with simialr threats himself while at m s f t. he learned the “game”. and this is his “revenge”.

  34. Dave Zan says

    IT IS ILLÉGAL…..
    Who are they ? To do that ?

    It’s fine to feel it’s illegal. Do read your registrar’s contract, though.

    All generics are in dire danger and can never rest.

    The best thing to do is also get the

    .Co

    as well.

    Well, it looks like .co also uses UDRP for domain-trademark dispute resolution:

    http://www.cointernet.co/domain/policies-procedures/dispute-resolution-co-domains

    Thus, so-called generic .co domains aren’t necessarily any safer than .coms.

  35. steve says

    I wouldn’t go that far Dick.
    I think his comments are far more stupid imo.

    But he has some of the best articles I’ve read last year and some of the dumbest.
    In my book that beats being down the middle of the road.
    He makes me laugh and cry.

  36. Innocuous says

    Robert, you’re right, live today, but also consider the very near future. Companies like Facebook are concerned (as they well should be) with how people are moving from computers to smartphones and apps, and how that will affect their advertising revenue.

    This isn’t about what alternative extension to .COM your website has, in fact that should be the least of your concerns. It’s about how the entire way in which people interact with the Internet will change.

    If people at the top are concerned about the potential loss of value their websites generate because of this change, those who are struggling at the middle or bottom should be even more worried. People won’t even know you exist.

    As you say, the rules are changing. But it isn’t about .CO vs .COM. That’s a trivial battle you’re waging, in comparison to the more important changes that you should be preparing for.

  37. Dave Zan says

    My comment appears to be flagged, so I’ll try again.

    Bit off-topic, but .co domains appear to use UDRP for domain-trademark dispute resolution also. Thus, so-called generic .co domains aren’t necessarily any safer than their .com counterparts, especially IF someone wants to grab a generic .co domain from another using UDRP.

  38. says

    The domaining business is in jeopardy
    with the bourgeois wielding their “cult status”
    to take independent domains from us.

    They are killing creativity and business
    smartness which are characteristics of
    entrepreneurs. It is sad!

    There is cult coup to suppress the ordinary
    domainer who wants to use his or her creativity
    to own a business on the world wide web.

    I expect an era when the heavy weights will
    start fighting themselves and when the dust
    settles, they will come to their senses.

    My 2 cents.

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