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Domain name and "well known marks" in the USA

Started by Zealot87, 05-03-19 at 07:35 PM

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Zealot87

Hi everyone.
I'm a Lawyer in france, with an expertise in the automotive segment.
I decided to open this topic because I'm facing a cybersquatting issue with an american company that registerd a domain .com that has the same name of a trademark under the french laws, and only in france. I'd like to know something about this topic, before passing the papers to an expert in trademarks in the USA.
The will of the company would be to avoid a judicial procedure as aconsequence of the fact that we need the domain asap. But i'd like to know what are the possibile scenarios in any case.
So, can you please me provide me with a quick insight view of what are my options, and answer to the following questions:

1) Is there a safeguard when a third party registers a domain name which is a well-know mark, also if this well know mark lacks of a formal registration ? In europe we have a specific law for this event.

2) What can we do in such an event? I was told that the company does not want UDRP dispute. So, we have to write down a letter to the registrar in which we ask for the release of the domain or we'll start a lawsuit. Can you please tell me if we have some grounds to ask for the release? Once again, please consider that:

- The company has a registered trademark in france.
- It is a well know company, but it does not operates in the usa to this date. 

Sorry for my mistekes in english and sorry if my questions may look silly.
Thank you.

MYK

.com, not some other TLD?  Is the other party in the U.S.?

Broadly speaking, your client doesn't really have an option to "write . . . to the registrar".  No registrar could survive if it randomly grants requests from third parties that just want to "avoid" the processes that have been established.  Your choices are going to be (1) buy the domain from the owner (fastest option, could be done in days), (2) file for UDRP (next fastest option, typically three months or so), or (3) go to court and litigate under whatever applicable laws there are, most likely the ACPA (a year or more).

Under UDRP, the complainant has to show use of the trademark predating the registration or last transfer of the domain.

You didn't mention when your client established their trademark, or whether the other party might reasonably have known about it, or whether the other party has clearly acted in bad faith.  These are all going to be issues under ACPA.

If you decide to go with UDRP and want a complaint drafted, I've done a few, but haven't yet gotten to file any -- the company always backed out.

Regarding your specific questions:

1) Yes, the process is the UDRP, and there is also the ACPA.  There may be other possibilities as well.  UDRP does not require a registered trademark, although that may be a consideration.  I do not know whether ACPA would even apply to a foreign trademark that has not been used in the U.S.

2) If you intend to file a lawsuit, the registrant would be the primary defendant, not the registrar.  If the WHOIS-listed registrant is an actual person or company, writing a demand letter to the registrar would at most get you a reply of "why are you writing us?"  If the WHOIS-listed registrant is an anonymous registration service (which is usually run by the registrars -- they scam an extra ten bucks a year for that privacy gimmick) then you should read their terms of service to see if they will forward such a demand letter on to the registrant, or if you have to go through the courts to do even that, e.g., by subpoenaing the name and address of the real registrant.
"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.

Zealot87

Quote from: MYK on 05-03-19 at 09:37 PM
.com, not some other TLD?  Is the other party in the U.S.?

Broadly speaking, your client doesn't really have an option to "write . . . to the registrar".  No registrar could survive if it randomly grants requests from third parties that just want to "avoid" the processes that have been established.  Your choices are going to be (1) buy the domain from the owner (fastest option, could be done in days), (2) file for UDRP (next fastest option, typically three months or so), or (3) go to court and litigate under whatever applicable laws there are, most likely the ACPA (a year or more).

Under UDRP, the complainant has to show use of the trademark predating the registration or last transfer of the domain.

You didn't mention when your client established their trademark, or whether the other party might reasonably have known about it, or whether the other party has clearly acted in bad faith.  These are all going to be issues under ACPA.

If you decide to go with UDRP and want a complaint drafted, I've done a few, but haven't yet gotten to file any -- the company always backed out.

Regarding your specific questions:

1) Yes, the process is the UDRP, and there is also the ACPA.  There may be other possibilities as well.  UDRP does not require a registered trademark, although that may be a consideration.  I do not know whether ACPA would even apply to a foreign trademark that has not been used in the U.S.

2) If you intend to file a lawsuit, the registrant would be the primary defendant, not the registrar.  If the WHOIS-listed registrant is an actual person or company, writing a demand letter to the registrar would at most get you a reply of "why are you writing us?"  If the WHOIS-listed registrant is an anonymous registration service (which is usually run by the registrars -- they scam an extra ten bucks a year for that privacy gimmick) then you should read their terms of service to see if they will forward such a demand letter on to the registrant, or if you have to go through the courts to do even that, e.g., by subpoenaing the name and address of the real registrant.

Thank you so much for your answer.
Firstly, the party has a trademark but not in the US. But it is a mark widely know in the segment, also if to this date it stil does not operate in USA. We believed that the other party acted in bad faith, but it is not going to be easy to prove it.
Can you please provide me additional information about who I should write to inquiry a little bit further?From whois I can NOT see the registrant, but only the registrar (Registrar WHOIS Server;Registrar URL;Registrar;Registrar IANA ID).
Thank you very much for your support.

MYK

Quote from: Zealot87 on 05-08-19 at 09:15 PM
Thank you so much for your answer.
Firstly, the party has a trademark but not in the US. But it is a mark widely know in the segment, also if to this date it stil does not operate in USA. We believed that the other party acted in bad faith, but it is not going to be easy to prove it.
"Bad faith" under the UDRP is an extremely broad concept.  It may be easier to show it than you think, especially if the other party is using the domain to sell related equipment, directing advertising to rivals, or has had any contact with the trademark owner suggesting that they buy it from, rent it from, or somehow partner with the registrant.  There are even decisions stating that not directing a domain name to a website is "bad faith" because it is an attempt to deprive a trademark owner of the possibility of a registration.

Quote from: Zealot87 on 05-08-19 at 09:15 PM
Can you please provide me additional information about who I should write to inquiry a little bit further?From whois I can NOT see the registrant, but only the registrar (Registrar WHOIS Server;Registrar URL;Registrar;Registrar IANA ID).
Thank you very much for your support.
It doesn't list any name or address under the administrative contact or technical contact?  No phone numbers for either?  If it's listing the registrar in those fields, then either it is registered through a "private registration" service (usually the registrar itself) or the lack of information itself can be used to show an attempt to avoid UDRP and lawsuits, and therefore as a sign of possible bad faith.

I've sent you a PM; if you click "my messages" you can read and reply to it if you wish.  The link below may also work:

http://www.intelproplaw.com/ip_forum/index.php?action=pm
"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.

Zealot87

Quote from: MYK on 05-09-19 at 02:09 AM
Quote from: Zealot87 on 05-08-19 at 09:15 PM
Thank you so much for your answer.
Firstly, the party has a trademark but not in the US. But it is a mark widely know in the segment, also if to this date it stil does not operate in USA. We believed that the other party acted in bad faith, but it is not going to be easy to prove it.
"Bad faith" under the UDRP is an extremely broad concept.  It may be easier to show it than you think, especially if the other party is using the domain to sell related equipment, directing advertising to rivals, or has had any contact with the trademark owner suggesting that they buy it from, rent it from, or somehow partner with the registrant.  There are even decisions stating that not directing a domain name to a website is "bad faith" because it is an attempt to deprive a trademark owner of the possibility of a registration.

Quote from: Zealot87 on 05-08-19 at 09:15 PM
Can you please provide me additional information about who I should write to inquiry a little bit further?From whois I can NOT see the registrant, but only the registrar (Registrar WHOIS Server;Registrar URL;Registrar;Registrar IANA ID).
Thank you very much for your support.
It doesn't list any name or address under the administrative contact or technical contact?  No phone numbers for either?  If it's listing the registrar in those fields, then either it is registered through a "private registration" service (usually the registrar itself) or the lack of information itself can be used to show an attempt to avoid UDRP and lawsuits, and therefore as a sign of possible bad faith.

I've sent you a PM; if you click "my messages" you can read and reply to it if you wish.  The link below may also work:



Hello, there is nothing.Sorry to bother you, are you an attorney? If so, if we decide to go through i'd like to be able to contact you. Thank you again for your help.

Please find the information below:

Registrar WHOIS Server: whois.namebright (.com)
Registrar URL: NameBright (.com)
Updated Date: (it says the date)
Creation Date: (it says the date)
Registry Expiry Date: (it says the date)
Registrar: DropCatch(.com) 446 LLC
Registrar IANA ID: 1926
Registrar Abuse Contact Email:
Registrar Abuse Contact Phone:
Domain Status: clientTransferProhibited
Name Server: (name of the server)
Name Server: (name of the server)
DNSSEC: unsigned
URL of the ICANN Whois Inaccuracy Complaint Form: (form)
>>> Last update of whois database: 2019-05-13T09:12:04Z <<<


This is all i got from whois. Any advice?

MYK

I could be mistaken, but looking up NameBright, I found a couple of pages suggesting that the company was founded by a domain name squatter and is run in a way to help out domain name squatters.  DropCatch is apparently a part of NameBright, and is what they transfer domains to when the registration expires, so that they can decide whether to hold on to it for themselves to sell it at a higher price than just a new registration fee.  Alternately, if they're merely hiding the registrant information under their privacy protection program, according to NameBright's FAQ, they should forward a demand letter or complaint to the real registrant.

So, IMHO, filing a UDRP complaint would be reasonable, so long as your client's trademark registration predates the original registration date of the domain. (If it doesn't, you won't win under UDRP.)  You should look up UDRP decisions on the ICANN site to see if there are any on-point about registrars trying to hold domains themselves to demand higher prices than the basic fees.  On the one hand, I would be surprised if that were considered acceptable by ICANN (some of the UDRP decisions hinge on truly ridiculous pretexts), but on the other hand, I would be surprised if companies like NameBright hadn't researched the issue themselves so that they could stay within the allowed limits.

And no, I'm not a lawyer, just a weasel.
"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.

Zealot87

Quote from: MYK on 05-13-19 at 10:08 PM
I could be mistaken, but looking up NameBright, I found a couple of pages suggesting that the company was founded by a domain name squatter and is run in a way to help out domain name squatters.  DropCatch is apparently a part of NameBright, and is what they transfer domains to when the registration expires, so that they can decide whether to hold on to it for themselves to sell it at a higher price than just a new registration fee.  Alternately, if they're merely hiding the registrant information under their privacy protection program, according to NameBright's FAQ, they should forward a demand letter or complaint to the real registrant.

So, IMHO, filing a UDRP complaint would be reasonable, so long as your client's trademark registration predates the original registration date of the domain. (If it doesn't, you won't win under UDRP.)  You should look up UDRP decisions on the ICANN site to see if there are any on-point about registrars trying to hold domains themselves to demand higher prices than the basic fees.  On the one hand, I would be surprised if that were considered acceptable by ICANN (some of the UDRP decisions hinge on truly ridiculous pretexts), but on the other hand, I would be surprised if companies like NameBright hadn't researched the issue themselves so that they could stay within the allowed limits.

And no, I'm not a lawyer, just a weasel.

Thank you again. In any case the website is currently sold by a company called "hugedomain.com", as stated by the homepage of the domain. Maybe I can complain directly to them... but honestly i'm startign to think that pay the fee could be the less expensive thing to do.

Zealot87

Hello again. After reading your comments and after an internal meeting, we decided that it would be prefereable to buy the domain name.
Just to double check: can someone explain to me why the website is sold both by hugedomains.com and by namebright.com. The registrar is Dropcatch.com 446 LLC.

I can't get all the connection.

Please refer to this:

Registrar WHOIS Server: whois.namebright (.com)
Registrar URL: NameBright (.com)
Updated Date: (it says the date)
Creation Date: (it says the date)
Registry Expiry Date: (it says the date)
Registrar: DropCatch(.com) 446 LLC
Registrar IANA ID: 1926
Registrar Abuse Contact Email:
Registrar Abuse Contact Phone:
Domain Status: clientTransferProhibited
Name Server: (name of the server)
Name Server: (name of the server)
DNSSEC: unsigned
URL of the ICANN Whois Inaccuracy Complaint Form: (form)
>>> Last update of whois database: 2019-05-13T09:12:04Z <<<



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