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Author Topic: Reverse Domain/Predate Hijacking Question  (Read 586 times)

abenjamin

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Reverse Domain/Predate Hijacking Question
« on: 05-30-17 at 09:17 pm »

Hello, here's a simple question that I am not able to find the answer to after hours of research. The scenario:

I want to start a business. Let's call it "Rock Soundz"

I end up using the mark as my new company name, and perform a service or two for a few clients.

I then register it as a trademark.

I go to godaddy and find that the domain name "RockSoundz.com" is taken by a cybersquatting agency like buydomains.com, who is trying to sell the domain for $5,000. Their registration of this domain predates my trademark registration by 5 years. Their intent with the website is CLEARLY to sell the domain name, and shows what's considered as "poor intent" by ICANN.

In short, the question I ask is, can I file for a DMCA takedown and take the domain? Can I sue for it? If the domain name "RockSoundz" was registered in poor intent, BUT predates my trademark registration/company birth, is it their right to keep the name even though they are using it with poor intent?

My worries with this is that because my business is extremely small, and was started well after their cybersquatting of the domain name, am I still able to get it? The whole "domain predating trademarks" issue has me extremely flustered.

Thanks,
Adam
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MYK

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Re: Reverse Domain/Predate Hijacking Question
« Reply #1 on: 05-31-17 at 07:42 am »

1. You are confusing "DMCA" with "UDRP".  On the facts as you've stated them, you have no cause for a DMCA takedown.

2. You almost certainly cannot get the domain via UDRP or ACPA because their registration was not done "in bad faith".  I believe there was one UDRP about three years ago where the trademark rights post-dated the domain registration, and in which the arbitrator decided in favor of the complainant.  It was a clear violation of the requirements for a successful UDRP.  I don't know if it was overturned in court or if the original registrant didn't want to fight it, but it should have been overturned.  It is possible that there have been more since, but they likewise should not have happened.

This is why companies are using all the weird new TLDs like ".co", ".info", and so on.  You might consider doing a "URL hack" and registering your domain in Algeria's TLD, which is ".dz" for some bizarre reason.  Thus, you'd take "rocksoun.dz". (See, for example, "youtu.be", which is Youtube's shortened URL using a Belarusian TLD.)  I don't know whether that TLD allows foreign registrants (or if you are, in fact, in Algeria), but since the name is an example anyway, it probably doesn't matter. You might also look into the massive list of new TLDs to see if another one fits your company, like ".boats" or ".xxx".
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

abenjamin

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Re: Reverse Domain/Predate Hijacking Question
« Reply #2 on: 05-31-17 at 08:27 pm »

MYK,

Thanks so much for taking the time to answer those questions for me.

So, "In bad faith" completely excludes websites like "buydomains.com" that buy generic names like "rocksoundz.com" "rocksounds.com" "Rockmusic.com" even though their intent is to blatantly hold the domains hostage to sell? I don't understand how this isn't cybersquatting. I feel that if my company name is trademarked, and I have a legitimate reason to own the domain that uses the exact name of my company, I naturally think I should have the right to try and take it from them without having to pay them a ridiculous sum.

Something I found on an article about how to go through ICAAN stated the following:

 An action can be brought by any person who complains (referred to by ICANN as the "complainant") that:

- a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights
- the domain name owner has no rights or legitimate interests in the domain name, and
- the domain name has been registered and is being used in bad faith.
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MYK

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Re: Reverse Domain/Predate Hijacking Question
« Reply #3 on: 06-01-17 at 04:51 am »

So, "In bad faith" completely excludes websites like "buydomains.com" that buy generic names like "rocksoundz.com" "rocksounds.com" "Rockmusic.com" even though their intent is to blatantly hold the domains hostage to sell? I don't understand how this isn't cybersquatting. I feel that if my company name is trademarked, and I have a legitimate reason to own the domain that uses the exact name of my company, I naturally think I should have the right to try and take it from them without having to pay them a ridiculous sum.
I'm not going to bother arguing with you about it.  Trademarks aren't domain names, and domain names aren't trademarks.  To win, you need some PREEXISTING right;  you can't just show up and say, "Hey, I decided to call my company Microsoft today;  I deserve that domain name."  You can research the UDRP decisions yourself if you don't want to believe me.

Trademarks aren't unique.  Who owns "delta.com" when both Delta Faucets and Delta Airlines have trademark rights in the word "delta"?  Answer: the highest bidder.

You came late to the game.  You can either come up with another name, pick a different TLD in which the name is available, or pay them for their foresight.

If you want to try a UDRP, feel free.  Well, last I checked, it was "feel US$1500", but whatever.  If you win, please come back and let me know;  I haven't been watching the decisions for a couple of years now.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

Robert K S

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Re: Reverse Domain/Predate Hijacking Question
« Reply #4 on: 06-01-17 at 02:11 pm »

The .com TLD is probably overrated.  MYK's workaround ideas are gold and also standard practice for those in your situation.  If you really value the domain name and you believe your business will be a profitable one, $5,000 is chump change in comparison to what it could cost you to fight, even if you have a chance of being successful (and from what MYK says, it sounds like you don't).  Pay the squatter's ransom, chalk it up to the cost of doing business, and move on.  People have paid a lot more for domains.  I recall hearing that when Jim Jannard founded Red Digital Cinema, he paid something like $60,000 for red.com.  It showed that he was serious about his new business and about changing the industry at a time when few people thought there was a chance in hell of challenging Sony, Arri and the handful of other big players for the high-end digital video market.  Jannard's cameras quickly became the new standard for digital cinema production, and he sent the competition scrambling to catch up.  I don't think he's ever lost sleep over that $60,000.
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

Tobmapsatonmi

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Re: Reverse Domain/Predate Hijacking Question
« Reply #5 on: 06-01-17 at 06:14 pm »


 I feel that if my company name is trademarked, and I have a legitimate reason to own the domain that uses the exact name of my company, I naturally think I should have the right to try and take it from them without having to pay them a ridiculous sum.

So, riddle me this.  Since their domain name predates your company, how in the world are you going to prove to an arbitrator that you didn't see their domain, take a liking to it, then start your company (naming it per their domain name), and then try to steal their DN away from them?
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MYK

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Re: Reverse Domain/Predate Hijacking Question
« Reply #6 on: 06-02-17 at 02:57 am »

Here, OP, read this:  http://www.wipo.int/amc/en/domains/search/overview2.0/#31

Quote
3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?

See also the relevant section in the WIPO Legal Index.

Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.

There's a short list of decisions related to this. There is also a "However!" section that lists decisions going in the other direction -- essentially all of which have some special circumstance like an employee or contractor deciding to try to extort his employer, or an announced merger with a few obvious combinations of names that the new company might take (GlaxoSmithKlineBeecham for example).

And note, I wrote "essentially all", because as I wrote in my first comment, there has been at least one recent decision where the arbitrator said, "screw the rules, I'm just goin to give it to em".

I'll note also that I own a few domains, and I don't have websites up on them -- I've reserved a couple for future business plans, assuming I survive long enough, and one is used for email (as opposed to choosing "lolimreallyacat696969@yahoo.com" or something equally professional).  None of these are "bad faith" either, even though they do not appear to be visibly used.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.
 



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