A UDRP has been filed on the domain name Sidetrack.com.
The domain name is parked but with reference to pretty general stuff including a lot of links to travel sites.
Side track is a common expression and a dictionary word.
According to wikipedia.org “Side Track is railroad track that is auxiliary to the main track”.
According to thefreedictionary.com, Side Track means:
1. To divert from a main issue or course: I was sidetracked from my work by an unexpected visitor.
2. To delay or block the progress of deliberately: “a bill that would sidetrack food irradiation in this country”.
3. To switch from a main railroad track to a siding.
The complainant is Side by Side, Inc./dba/ Sidetrack.
Doing a quick check of the USPTO Side by Side, Inc. owns 3 of the 5 trademark filed on the term “Sidetrack” (the other 2 are owned by different company’s)
The earliest registration by the complainant company was 2006.
The domain name was first registered in 1998.
Interestedly enough, when it comes to the name of the company bringing the complainant, Side by Side Inc. we note that the term “side by side” has 9 federal trademarks, but none are owned by the company bringing the complaint.
3 trademarks are on the term side-by-side
There are 6 Trademark for Side By Side.
None seems to be owned by the complainant.
However the complainant bringing this UDRP does own the domain name Sidebyside.com.
Maybe one of the trademark holders of “side by side” should bring a UDRP against the complainant for its domain.
Also it should be noted that on the site sidebyside.com of the complainant the term “Side Track” is not mentioned even once.
Instead the site is dedicated to the sale of its Side By Side Leadership material.
it never ends.
The system is flawed, Cheaper to steal than purchase, Domain Shoplifting…
Fortunately the owner of SideTrack.com (Alexander Lerman) is wealthy, and can afford to defend it properly.
Here’s what many overlook: Courts are flawed too. Between court costs it’s much better to take a chance on UDRP roulette before heading to court.
Obviously, it is a hijack attempt.
It is ironic that SideBySide is a leadership training service
including coaching.
Hopefully, they are not teaching mid-level executives –
‘steal if you can get away with it’.
He is not new to the process…and old case…
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1049.html
…does this mean if the page is parked the name is in more jeopardy? Would they have done the same to a wordpress site for example, if not a fully developed site?
Just wonderin’
Windy
The majority opinion in UDRP is that a landing page is not a problem unless the links in on the page relate to the complainant TM which this does not seem to be.
His portfolio is impressive, he also owns truck.com, he cannot be very happy about this, and seems to have the means to come back swinging.
It looks like SidebySide’s trademark attorney, Nicole A. Bashor, is expanding an original use of Sidetrack from 1982
SIDETRACK
Goods and Services IC 009. US 021 023 026 036 038. G & S: Sunglasses; magnets. FIRST USE: 19820401. FIRST USE IN COMMERCE: 19820401
IC 014. US 002 027 028 050. G & S: Pins. FIRST USE: 19820401. FIRST USE IN COMMERCE: 19820401
IC 016. US 002 005 022 023 029 037 038 050. G & S: Post cards. FIRST USE: 19820401. FIRST USE IN COMMERCE: 19820401
IC 025. US 022 039. G & S: Sports jerseys, clothing, namely, T-shirts, sweatshirts and jackets; and hats. FIRST USE: 19820401. FIRST USE IN COMMERCE: 19820401
IC 026. US 037 039 040 042 050. G & S: Buttons. FIRST USE: 19820401. FIRST USE IN COMMERCE: 19820401
IC 030. US 046. G & S: Candy. FIRST USE: 19820401. FIRST USE IN COMMERCE: 19820401
IC 034. US 002 008 009 017. G & S: Book matches. FIRST USE: 19820401. FIRST USE IN COMMERCE: 19820401
to “community centers for social gatherings and meetings; Restaurant and bar services,” and entertainment services.
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The respondent should win this case hands down.
Given the info posted here, there is no bad faith, unless “parking” itself could be considered bad faith–I hope not, though.
If the complainant wins this one, then owning any undeveloped domain is a risky proposition.
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I see a house I like & should have bought over 10 years ago ! Now I want it & don’t want to pay for it ? That defy’s everything we have been bought to to believe in ! I can not see how they would win this !
This filing is a total joke. If it were sent to me, I would use it in place of my Angel Soft.
As they said, the pen is mightier than the guns,bullets, and swords
“I see a house I like & should have bought over 10 years ago ! Now I want it & don’t want to pay for it ”
Kind of like all the entitlement dislog Bullshit going around these days
Yeah, but the trademark has been in use since 1982.
RE: There are 6 Trademark for Side By Side. None seems to be owned by the complainant.
… the complainant bringing this UDRP does own the domain name Sidebyside.com
TRADEMARKS, http://www.sidebyside.com/legal.html
Side by Side® is a registered trademark and registered service mark owned by Side by Side,Inc. through the United States Patent and Trademark office. Side by Side Leadership® , Structured Teamwork®, and Structured Synergy® are Side by Side,Inc. registered trademarks. Side by Side Coaching®, Side by Side Training® and Side by Side Families® are also registered trademarks of Side by Side, Inc.
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Louise,
Sidetrack is a generic term; the TM holder is likely using the name in a non-descriptive manner, and, therefore, does not hold a TM for the generic (descriptive) version of the name.
Furthermore, the domain owner is NOT using the domain in bad faith (for example, using ad links from the TM holder and/or pretending to be the TM holder via a spoof or malicious site).
Had the domain owner been using the domain in a bad faith manner, then I would agree with the complainant, but as it stands, the complainant is just trying steal someone else’s property.
From the Complainant’s (Side By Side) Website:
“We focus on leadership training and coaching. Our programs are based on extensive research, combining the results from over 3,000 studies. We adopted only those leadership practices that deliver outstanding performance improvements in individuals and teams alike. You can count on us to deliver measurable results, and pragmatic insights.”
The Respondent’s parking page shows travel ads, absolutely nothing to do with leadership training.
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“Sidetrack is a generic term” –
yes it is – plus it is defined on Dictionary.com for its obvious generic use.
This means on even playing field – for example under ACPA (with 250K in legal fees) – the burdon of secondary meaning is put on the the Complainant. Somewhere in a 3-member UDRP Panel – the US 14th Amendment of equal access would come forward.
A search of SIDE TRACK and SIDETRACK on my Google and Bing connection does not appear to show the Complainant in the first 10 results – a pretty good indication of an uphill battle for the Complainant.
Point is – at first glace – there appears to be stronger common law TMs than the Complainant’s Registered TM – end result it just appears as if it is Alexander Lerman’s turn to pay a bit of extra “tax” to protect his property and rights – As crazy as this claim might be – NOTHING can be taken for granted.
I’m fairly new to domaining, but would like to ask a question. Does anyone review these filings to determine any legitamacy of the complaint before they are accepted for the process? Or is any filing ok for a udrp?
Michael
I haven’t parked any of my names in quite a long time, instead choosing to forward every name to my parent site that offers domains for sale. The payout in parking is peanuts and I would rather ‘suggestively’ sell, and boost the awareness then collect spare change.
Now i don’t own any names that ‘should be’ at risk of any UDRP lawsuit – but do you find this to be a safer alternative from a potential UDRP suit?…. no ads to worry about … no usage of the name or any competitors on the site to worry about… etc…
Thanks in advance.
@ Ms Domainer said:
After reading that same sentence 5X, I finally understood. Sounds like a good defense, but, as @ Brian Wick observes,
I was just speculating, because of recent decisions. I have to take a break from this blog for a week.
‘Side by side’ is also a generic term – a side by side shotgun has the barrels laid out horizontally rather than stacked vertically (an over and under).
But here I am getting side-tracked…
Hello
I am the owner of TM “cupidon” ( http://bases-marques.inpi.fr/Typo3_INPI_Marques/getPdf?idObjet=3595339_FMARK-1,FMARK-2 ) registered in 2008.
After trying to buy me my domains, company easydate / Cupid Plc bought “cupidon.com” in 2011.
What are my probabilities for a UDRP ?
Tom
“”Does anyone review these filings to determine any legitamacy of the complaint before they are accepted for the process? Or is any filing ok for a udrp?””
No one reviews the filings to so if the claim is legit so yes anyone can file a UDRP against any domain, just like anyone can sue someone e;se for anything.
As the owner of a valuable generic I read about these UDRPs with some concern. Is there a way to pre-empt a UDRP attempt and to have the name protected?
Marcus
The only way to “preempt” a UDRP is if you get a C & D or email or letter prior to the UDRP being filed threating that a UDRP will be filed unless you turn over the domain you can go to federal court and file for a declaratory judgement.
There are some cases where the domain owner has done that.
I know from personal experience that not every UDRP complainant is going to notify you a head of time, some just file, and that the Federal court case is likely to cost you several times the cost of defending a UDRP
If all dictionary words and phrases are trademarked,
there is going to be problem with domaining.
I think there is trouble brewing for all domainers
in the near future.
someone needs to figure out a way to countersue and set a legal precedent to discourage this activity. it should be expensive if found frivolous or baseless and come at a heavy cost to the ones trying to reverse hijack.