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Other >> Domain Name Forum >> Implied trademark
(Message started by: pbuffing on Jun 12th, 2007, 2:05pm)

Title: Implied trademark
Post by pbuffing on Jun 12th, 2007, 2:05pm
I am a small winery that had a domain name for 2 years also used as a tradename with the TTB and registered in my state as a dba.

The individual who had registered the domain dropped the ball.  Both he and I sent emails to the registar during a period of "pending delete", which were ignored.

The domain is now registered by a company who has lost a great # of disputes.

I have sent emails explaining my implied mark, now it is registered with a privacy protection service.

The name is parked at a site for wineries and related services in another state.

I do not have the resources to correct the problem through the courts or ICANN's arbitration.

I think the company(s)  involved need to be brought to task with a class action lawsuit.

Any chance of that happening? :'(

Title: Re: Implied trademark
Post by JSonnabend on Jun 13th, 2007, 8:43am
Why a "class action lawsuit"?  What's the class?

This is essentially a private dispute between you and the current registrant.  Perhaps you can show some harm to the general public, but that's not very likely, I believe.

- Jeff

Title: Re: Implied trademark
Post by pbuffing on Jun 13th, 2007, 12:18pm
Thank you,

I'm not sure what class, though the company in question has a inherent lack thereof.

This particular company appears to have 100's, if not 1000's of incidents similar to mine.

I'm was curious to know at what time their practices become a detrement to the common good.  How are class action lawsuits initiated?

If in the business of used cars they would be rolling back odometers.

I'm sure, in time, the loopholes in domain name registration will close and and those companies who do not actually perform a service and whose business premise is a scam in nature will disappear.

Their business model cannot remain sustainable.

Title: Re: Implied trademark
Post by Dave_Zan on Jun 13th, 2007, 11:53pm

on 06/13/07 at 12:18:36, pbuffing wrote:
Their business model cannot remain sustainable.

Because they have what you want and they're not doing what you expect?

Sorry, but this looks like someone who desires something that doesn't belong
to them from another who currently holds it. If you truly believe how they are
using it is infringing your trademark (and that's if you do have one), then it's
your burden to demonstrate that.

OTOH, if they offer to sell it for less than $1200 to $1500 (and that's if they
even bother to reply to any offer), can't you really afford it?

Title: Re: Implied trademark
Post by pbuffing on Jun 14th, 2007, 9:22am
No, I'm doing without what they have, unless I feel like spending the $1200 for filing a dispute.  However, they are a business that apparently thrives on the shady portion of domain registration.

Registrars distribute lists of expired names allowing a "class", though lacking the trait, of businesses to pounce on the names, thus hold the person or business hostage.

See below:

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

   (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

   (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

   (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

   (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The registrar in question, whom I contacted by phone, appears to thrive on situtitions like mine.  (i), (ii), and (iv), seem to apply.  Due to the # of disputes related to the company in question, they have established a pattern with a great # of incidents similar to mine, thus should be taken to task.

Title: Re: Implied trademark
Post by Dave_Zan on Jun 14th, 2007, 10:17pm
The provisions you posted above is for the UDRP. The UDRP is essentially used
to handle cybersquatting cases, although more and more parties are beginning
to see the benefits of using this to handle their respective domain - trademark
infringement disputes over going to Court.

However, the only things it does are to transfer or cancel the domain name in
dispute, or deny the two actions mentioned above. And it's not a "law", it's an
administrative procedure that's incorporated into your registrar's contract you
agree to prior to signing up with them.

Bottom line is, your beef is a civil matter that can only be resolved thru Court.
Disputes happen daily, that's what they're there for.

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