Lower Your Risk of UDRP Action in Generic Domain Name Investments

Domain Name Expert Answers to Your Domain Name QuestionsThe Q&A series is where we ask domain name experts, influencers and friends of DomainSherpa for their opinions. This episode we are looking at the purchasing generic word domain names for investment and resale when trademarks exist for the word.

The greatest risk to owning a high-value generic domain name is having it taken away from you during a UDRP action. If you’re spending $10,000, $50,000 or $100,000 or more on a premium generic domain name and you want to lower your risk of UDRP, URS or lawsuit, then pay attention to these four attorneys and the tactics they suggest.
Jack from Philadelphia asks: “I found a domain name for sale that I want to purchase, but when I do a search at the USPTO [United States Patent and Trademark Office] there are multiple registered trademarks for the word/acronym. If the domain name I want to buy is a generic word or acronym – like Rock.com, Jump.com or AQI.com (these are just examples) – and I want to offer a product or service in a completely different class than what is currently registered at the USPTO then I think I’m fine. But what if I want to purchase the generic domain name for investment and resale? On one hand, the more trademarks that are registered in different classes, the more potential buyers there are. But on the other hand, the more trademarks, the more potential UDRP cases that I might have to defend against. What can I do to make sure my purchase is a safe investment from a trademark perspective?”

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David Weslow

When considering purchasing a domain name for use in providing a product or service, or adopting a new product or business name, the appropriate assessment under U.S. law is whether the proposed use of the new name is likely to cause consumer confusion with any existing registered or common law trademarks for the same or similar names. This is the standard for trademark infringement under U.S. law and involves analysis of a number of factors including the similarity of the names, the strength of the trademark, the similarity of the goods/services, how the goods/services are sold, and more. Each U.S. federal court circuit has its own list of factors for consideration.

Jack is correct that identical names/trademarks can coexist for different products or services as long as there is no likelihood of consumer confusion. The use of the same or similar names by unrelated parties can be permissible when the goods or services are not related or marketed in a way that would create the incorrect assumption that they originate from the same source.

Registering or using a generic domain name for investment and resale based on the generic or plain meaning of the name can be permissible as long as the registrant does not have bad-faith intent to profit from the trademark significance of the name. Other experts are addressing the UDRP and URS; under U.S. federal law the concept of bad faith is viewed more flexibly and expansively. Registering, using, or trafficking in a domain name based on the trademark significance of the name can result in a court award of up to $100,000 in statutory damages per domain name plus attorney’s fees. Bad faith will not be found where the registrant had reasonable grounds to believe that the registration or use of the domain name was lawful, such as, for example, the operation of a non-commercial criticism site, or a legitimate business, or where the owner conducted a trademark search before registering the name.

David Weslow, Wiley Rein (@DavidWeslow)

Stevan Lieberman

A domain name is not a trademark. The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof…to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. A mark must be capable of distinguishing the products [or services] it marks from those of others.”

There are five categories of marks with respect to protection: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful.

Domain names like Rock.com or Jump.com are generic words that cannot be protected in conjunction with their known meaning. In other words, you could not protect the term rock for the purpose of selling rocks. On the other hand you could use the term rock for the purpose of selling computer services or domain name sales.

However, if you wish to use a domain name in association with goods or services, you will have to avoid using it on marks that are confusingly similar with marks that have been used by others. The concept of a different class is a good indication that the mark might not be confusingly similar, but is by no means an absolute and you should be careful to consider whether if the two stores were on the same block someone from the general public would think the stores were related even if the goods or services are in different classes.

So the first step when buying a domain name for a particular purpose – the offering of goods or services – is to do a trademark search in the country where you are going to be primarily offering your product. (Trademark rights do not cross country barriers other than through the use of trademarks and then you can only preserve those rights for a short a short period of time – you have 6 months from the date you a file a mark to file in participating countries in order to preserve your priority date.)

The second step is to get your website up using the mark and not just as a domain name, but as a mark specifically in association with your goods or services.

If you are just buying the generic domain name solely for the purpose of resale and it is expensive, then it is certainly safer to not allow the domain to resolve or at the most to put a notice on the site that the domain is for sale – thereby not using the domain in association with any goods or services. For further discussions pertaining to domain names and trademarks, see: http://aplegal.com/?s=domain+name+trademark

Stevan Lieberman, Greenberg & Lieberman (@StevanLieberman)

Zak Muscovitch

When it comes to domain names, knowing the precise domain name in question is crucial. Although you indicate that the domain name corresponds to a generic word or an acronym, you do not identify the precise domain name. That presents difficulties in genuinely understanding the situation, as APPLE is a generic word, and IBM is an acronym, and registering domain names that correspond to these famous marks, for example, would obviously present different issues than merely registering a domain name that comprises the ‘generic’ word, CARS, for example, or the generally unknown ‘acronym’, QZW.

Even though very generally speaking, it is possible to register and use a domain name corresponding to a registered trademark – provided that you use it in good faith and do not infringe upon a registered mark by using it in connection with the same industry. When it comes to some trademarks, particularly famous ones, it may be difficult to genuinely register a corresponding domain name in good faith, and impossible to use it without confusion. For example, registering COCA-COLA.COM without any intention of using it for carbonated soft drinks, and using it for the sale of blue jeans, still would pose a major problem, even though you are not using the domain name in the same classes that the mark is registered for. Accordingly, a proper trademark search by a qualified domain name lawyer or trademark lawyer is crucial to understanding your position.

To answer your other question, purchasing a generic domain name for investment and resale purposes has been accepted by numerous UDRP Panels as a bona fide business, although indeed some panelists tend to either avoid this issue or tend to disagree with this practice as a general proposition. In the situation you appear to be relating, it is sometimes possible that a domain name is ‘generic’ but also corresponds to a particular trademark or trademarks, as in the APPLE situation aforementioned. In such a case, demonstrating that you have a legitimate interest in the domain name is crucial, and this, generally speaking, can be achieved by launching a bona fide website related to the generic meaning of the term, and not using the domain name in connection with any infringing pay-per-click ads or content. Furthermore, care must sometimes be taken in regard to how you market the domain name for sale. For example, offering the ‘generic’ domain name APPLE to the famous tech company by the same name may give the wrong impression as to why you registered the domain name in the first place. In other words, indication that you registered the domain name for its generic meaning rather than for its trademark significance is what would generally be required in order to protect this domain name against an allegation of bad faith in a UDRP.

Zak Muscovitch, The Muscovitch Law Firm (@DNAttorney)

Jason Schaeffer

At the outset, your hypothetical investor should not be purchasing a domain name with the intent to sell it to an existing brand owner. No, no, and no! If a buyer wishes to protect a purchase, they should be staying away from “trademark territory” in the first place.

On the other hand, if the domain is truly a generic word, then they should be in fairly safe territory to buy, develop, and monetize the asset with the caveat that they should not be monetizing the domain name with trademark related items.

In trademark law, there is a “distinctiveness spectrum” – from generic words that are not protectable to fanciful marks that are highly protected. A potential domain name can be evaluated with the same principles in mind. In your hypothetical case, if the buyer is focusing on purchasing single, dictionary word domain names and a trademark has been registered for the same word, it is likely that the trademark owner had to establish that it acquired distinctiveness or that the word is being used in a distinctive manner – like Apple using the word “apple” for technology purposes as a opposed to selling the shiny red fruit we all love. Obviously, Apple cannot stop the world from using the word “apple” to refer to the fruit, but it regularly stops people from using “Apple” in a confusingly similar way to its protected uses – its products, services and brand.

Generally, in the case of a trademark registration that is obtained on the basis of “acquired distinctiveness,” it is important to evaluate a number of factors, including evidence of sales, marketing, and consumer recognition of the brand. The potential buyer’s risk may be closely correlated to the strength of the trademark.

There are many cases where the “answer” should be fairly obvious and a commonsense approach should govern; however, in other cases the issue is less clear cut. In those cases, it would be advisable to obtain an opinion from competent legal counsel. An opinion letter can help the buyer answer these questions by evaluating the trademark(s) and providing a specific opinion on the level of risk for the buyer.

Just because a trademark “exists” should not be the end of the inquiry. I’ve seen many cases in which the mark can be contested depending on the factual circumstances. As with anything, if you are investing a significant sum, it’s advisable to be proactive and consult an expert before you proceed, not after an issue arises. It’s also worth noting that in some cases the opinion letter may also serve to assist a party in defending against a future claim.

Jason Schaeffer, ESQwire.com (@MrGTLD)

Have a generic question after watching this episode? Leave a response.

Interview Raw (Non-Edited) Transcript

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http://www.domainsherpa.com/generic-investing/

The greatest risk to owning a high-value generic domain name is having it taken away from you during a UDRP action. If you’re spending $10,000, $50,000 or $100,000 or more on a premium generic domain name and you want to lower your risk of UDRP, URS or lawsuit, then pay attention to these four attorneys and the tactics they suggest.

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No one ever worries about a great domain name being taken away through legal proceedings if it’s being used. For example, A&E Television owns History.com and they use it for their History Channel website. They also own a trademark for the word “history” but so do two other companies in the United States in two separate classes; one for bracelets and one for printing fonts. Go to Trademark247.com, search for the word “history” and see for yourself. The two other trademark holders have likely never thought about filing a UDRP for the domain name history.com, nor has A&E ever thought they might.

But you and I are no A&E Television, nor do we have attorneys on staff who can deal with cease and desist letters or UDRP actions submitted from companies thinking we’re infringing on their trademarks.

We just want to invest in domain names and do so honestly and effectively.

So what happens when an opportunity to purchase a generic word like history.com presents itself? How do you handle the potential threat of UDRP action BEFORE you buy the domain name? That’s what we’re going to discuss on today’s show.

Jack from Philadelphia, Pennsylvania, recently emailed DomainSherpa with a question. He wrote, “I found a domain name for sale that I want to purchase, but when I do a search at the USPTO [United States Patent and Trademark Office] there are multiple registered trademarks for the word/acronym. If the domain name I want to buy is a generic word or acronym – like Rock.com, Jump.com or AQI.com (these are just examples) – and I want to offer a product or service in a completely different class than what is currently registered at the USPTO then I think I’m fine. But what if I want to purchase the generic domain name for investment and resale? On one hand, the more trademarks that are registered in different classes, the more potential buyers there are. But on the other hand, the more trademarks, the more potential UDRP cases that I might have to defend against. What can I do to make sure my purchase is a safe investment from a trademark perspective?”

It’s a great question that Jack poses. If I were to spend $10,000, $50,000 or $100,000 on a domain name like Rock.com, Jump.com or AQI.com, I would want to make sure I had little to no chance of losing it in a UDRP case.

To answer the question, I asked four leading domain name and intellectual property attorneys for their opinions on this matter.

I must preface this video and their responses by saying that this is not legal advice. You should consult an attorney with your specific case details before making any high-dollar purchases. If you’re not willing to lose your investment, consult an attorney or don’t invest. A thirty to sixty minute discussion with an attorney is well worth the investment.

The four attorneys who provided input for this show include:
David Weslow of Wiley Rein (DavidWeslow.com)
Stevan Lieberman of Greenberg & Lieberman (APlegal.com)
Zak Muscovitch of The Muscovitch Law Firm (DNAttorney.com)
Jason Schaeffer of ESQwire.com (ESQWire.com)

Here’s what David Welsow of Wiley Rein had to say:
When considering purchasing a domain name for use in providing a product or service, or adopting a new product or business name, the appropriate assessment under U.S. law is whether the proposed use of the new name is likely to cause consumer confusion with any existing registered or common law trademarks for the same or similar names. This is the standard for trademark infringement under U.S. law and involves analysis of a number of factors including the similarity of the names, the strength of the trademark, the similarity of the goods/services, how the goods/services are sold, and more. Each U.S. federal court circuit has its own list of factors for consideration.

Jack is correct that identical names/trademarks can coexist for different products or services as long as there is no likelihood of consumer confusion. The use of the same or similar names by unrelated parties can be permissible when the goods or services are not related or marketed in a way that would create the incorrect assumption that they originate from the same source.

Registering or using a generic domain name for investment and resale based on the generic or plain meaning of the name can be permissible as long as the registrant does not have bad-faith intent to profit from the trademark significance of the name. Other experts are addressing the UDRP and URS; under U.S. federal law the concept of bad faith is viewed more flexibly and expansively. Registering, using, or trafficking in a domain name based on the trademark significance of the name can result in a court award of up to $100,000 in statutory damages per domain name plus attorney’s fees. Bad faith will not be found where the registrant had reasonable grounds to believe that the registration or use of the domain name was lawful, such as, for example, the operation of a non-commercial criticism site, or a legitimate business, or where the owner conducted a trademark search before registering the name.

So here’s what I take away from David Weslow’s response:
1. Do a trademark search for the domain name you want to register or purchase. If there are no trademarks, you should have no trademark hesitations about purchasing the domain name. But remember – trademarks are issued by country, so you may only be clear in your country.
2. Don’t register or purchase a domain name in hopes of selling it to a trademark holder. You cannot register Facebook, Apple or PhilipMorris dot whatever and then contact those trademark holders to sell the domain name. That’s called “bad faith”.
3. If you’re going to register or purchase a domain name, make sure you have reasonable grounds to believe that the registration or use of the domain name is lawful, such as, for example, offering products or services in a trademark class other than those trademarks already registered.

David Weslow’s full response is below, including links to resources for you to better understand what to do and not do.

Stevan Lieberman of Greenberg & Lieberman had this to say:
A domain name is not a trademark. The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof…to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. A mark must be capable of distinguishing the products [or services] it marks from those of others.”

There are five categories of marks with respect to protection: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful.

Domain names like Rock.com or Jump.com are generic words that cannot be protected in conjunction with their known meaning. In other words, you could not protect the term rock for the purpose of selling rocks. On the other hand you could use the term rock for the purpose of selling computer services or domain name sales.

However, if you wish to use a domain name in association with goods or services, you will have to avoid using it on marks that are confusingly similar with marks that have been used by others. The concept of a different class is a good indication that the mark might not be confusingly similar, but is by no means an absolute and you should be careful to consider whether if the two stores were on the same block someone from the general public would think the stores were related even if the goods or services are in different classes.

So the first step when buying a domain name for a particular purpose – the offering of goods or services – is to do a trademark search in the country where you are going to be primarily offering your product. (Trademark rights do not cross country barriers other than through the use of trademarks and then you can only preserve those rights for a short a short period of time – you have 6 months from the date you a file a mark to file in participating countries in order to preserve your priority date.)

The second step is to get your website up using the mark and not just as a domain name, but as a mark specifically in association with your goods or services.

If you are just buying the generic domain name solely for the purpose of resale and it is expensive, then it is certainly safer to not allow the domain to resolve or at the most to put a notice on the site that the domain is for sale – thereby not using the domain in association with any goods or services. For further discussions pertaining to domain names and trademarks, see: http://aplegal.com/?s=domain+name+trademark

So here’s what I take away from Stevan Lieberman’s response:
1. It’s safer to not allow the domain name to resolve. Period. Then there’s no likely confusion with registered trademarks. If someone really wants to contact you to purchase the domain name, they will perform a whois lookup and contact you.
2. If you can’t stand a domain name not resolving, you can put up a for-sale page, although it’s less safe. But don’t display any advertising that might associate the domain name with goods or services being offered by a trademark owner.

Up next Zak Muscovitch and Jason Schaefer provide their thoughts.

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Welcome back.

Zak Muscovitch of The Muscovitch Law Firm provided this information:
When it comes to domain names, knowing the precise domain name in question is crucial. Although you indicate that the domain name corresponds to a generic word or an acronym, you do not identify the precise domain name. That presents difficulties in genuinely understanding the situation, as APPLE is a generic word, and IBM is an acronym, and registering domain names that correspond to these famous marks, for example, would obviously present different issues than merely registering a domain name that comprises the ‘generic’ word, CARS, for example, or the generally unknown ‘acronym’, QZW.

Even though very generally speaking, it is possible to register and use a domain name corresponding to a registered trademark – provided that you use it in good faith and do not infringe upon a registered mark by using it in connection with the same industry. When it comes to some trademarks, particularly famous ones, it may be difficult to genuinely register a corresponding domain name in good faith, and impossible to use it without confusion. For example, registering COCA-COLA.COM without any intention of using it for carbonated soft drinks, and using it for the sale of blue jeans, still would pose a major problem, even though you are not using the domain name in the same classes that the mark is registered for. Accordingly, a proper trademark search by a qualified domain name lawyer or trademark lawyer is crucial to understanding your position.

To answer your other question, purchasing a generic domain name for investment and resale purposes has been accepted by numerous UDRP Panels as a bona fide business, although indeed some panelists tend to either avoid this issue or tend to disagree with this practice as a general proposition. In the situation you appear to be relating, it is sometimes possible that a domain name is ‘generic’ but also corresponds to a particular trademark or trademarks, as in the APPLE situation aforementioned. In such a case, demonstrating that you have a legitimate interest in the domain name is crucial, and this, generally speaking, can be achieved by launching a bona fide website related to the generic meaning of the term, and not using the domain name in connection with any infringing pay-per-click ads or content. Furthermore, care must sometimes be taken in regard to how you market the domain name for sale. For example, offering the ‘generic’ domain name APPLE to the famous tech company by the same name may give the wrong impression as to why you registered the domain name in the first place. In other words, indication that you registered the domain name for its generic meaning rather than for its trademark significance is what would generally be required in order to protect this domain name against an allegation of bad faith in a UDRP.

Here’s what I take away from Zak Muscovitch’s response:
1. Not all generic domain names are equal. Take Apple.com and Banana.com, for example. The prior has more than 25 registered trademarks in the United States but is broadly associated with one of the largest and most powerful technology companies in the world, while the latter has a paper products trademark you’ve likely never heard of before.
2. Anyone can file a lawsuit against you, even if it’s unfounded. Similarly, any trademark holder can file a UDRP against you, even if it’s unfounded. But not all UDRP panelists view domain name investing the same way. If you’re going to invest in domain names and a UDRP is filed against you, pay the fee to have three panelists review your case rather than the standard single panelist.
3. You can demonstrate a legitimate interest in the domain name by publishing a website related to the generic meaning of the domain name. For example, a website about rocks that is published on Rocks.com.
4. As David Weslow also mentioned, don’t register a domain name in hopes to sell it to a trademark holder.

The response from Jason Schaeffer of ESQwire.com underscores many points that we have discussed so far. He writes:
At the outset, your hypothetical investor should not be purchasing a domain name with the intent to sell it to an existing brand owner. No, no, and no! If a buyer wishes to protect a purchase, they should be staying away from “trademark territory” in the first place.

On the other hand, if the domain is truly a generic word, then they should be in fairly safe territory to buy, develop, and monetize the asset with the caveat that they should not be monetizing the domain name with trademark related items.

In trademark law, there is a “distinctiveness spectrum” – from generic words that are not protectable to fanciful marks that are highly protected. A potential domain name can be evaluated with the same principles in mind. In your hypothetical case, if the buyer is focusing on purchasing single, dictionary word domain names and a trademark has been registered for the same word, it is likely that the trademark owner had to establish that it acquired distinctiveness or that the word is being used in a distinctive manner – like Apple using the word “apple” for technology purposes as a opposed to selling the shiny red fruit we all love. Obviously, Apple cannot stop the world from using the word “apple” to refer to the fruit, but it regularly stops people from using “Apple” in a confusingly similar way to its protected uses – its products, services and brand.

Generally, in the case of a trademark registration that is obtained on the basis of “acquired distinctiveness,” it is important to evaluate a number of factors, including evidence of sales, marketing, and consumer recognition of the brand. The potential buyer’s risk may be closely correlated to the strength of the trademark.

There are many cases where the “answer” should be fairly obvious and a commonsense approach should govern; however, in other cases the issue is less clear cut. In those cases, it would be advisable to obtain an opinion from competent legal counsel. An opinion letter can help the buyer answer these questions by evaluating the trademark(s) and providing a specific opinion on the level of risk for the buyer.

Just because a trademark “exists” should not be the end of the inquiry. I’ve seen many cases in which the mark can be contested depending on the factual circumstances. As with anything, if you are investing a significant sum, it’s advisable to be proactive and consult an expert before you proceed, not after an issue arises. It’s also worth noting that in some cases the opinion letter may also serve to assist a party in defending against a future claim.

And here’s what I take away from Jason Schaeffer’s response:
1. No, no, no! Don’t knowingly register a trademark because a domain name is available and you might sell it to the trademark owner. That’s bad faith.
2. If you’re unsure, get a second opinion from competent legal counsel. All four of the intellectual property attorneys in this program can help you, and they’re all great people that I personally know and can vouch for. Pick the one you think best matches your style, and reach out to them for counsel.
3. An opinion letter can sometimes be used to defend your domain name should a UDRP be filed, and if nothing else, can show you had good faith before you purchased the domain name.

Jack from Philadelphia, Pennsylvania, I hope this has been helpful to you and other readers as well. You can – in good faith – purchase high value generic domain names for investment.

Be careful of existing trademarks, especially ones of ubiquitous brands. And if there are trademarks, play it safe by not allowing the domain name to resolve to a website or by at most having a for-sale page without any advertising. If you want to develop a website, offer a product or service or publish a website about the generic topic of the domain name.

That’s it for this question. If you have follow-on questions related to this topic that are generic in nature – and not related to your specific case – please post them in the comments below and I’ll ask our panel of Sherpas to come back and answer them.

If you have a question related to your specific situation, any of the Sherpas on this panel can provide legal counsel on domain name purchases. Their contact information is listed below.

If you have a question that you would like to have answered by multiple Sherpas on another topic, please email us using the Contact Us link in the upper left-hand corner of every DomainSherpa.com page. Select “Editorial Department” when you submit your generic question and it will come directly to me.

I’m Michael Cyger, publisher of DomainSherpa.com. Thanks to our Sherpa panel of David Weslow, Stevan Lieberman, Zak Muscovitch and Jason Schaeffer, and thanks to you for watching. We’ll see you next time.

http://www.domainsherpa.com/generic-investing/

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26 Responses to “Lower Your Risk of UDRP Action in Generic Domain Name Investments”

  1. Jeff says:

    Hey Michael,
    Great and valuable video!

    What is your opinion on buying for the intent to sell, on DN’s that are not .com’s but the matching .com’s have been sold for large amounts in the past?
    example: say rock.com sold sometime in past years for $xx,xxx and I have rock.net (or any other) and want to sell it, could I offer it to the owner of rock.com? (or anyone for that matter)

    1. Hi Jeff,

      Thanks for watching and taking a moment to post a comment.

      In response to your question:

      If you’re buying a domain name in bad faith to take advantage of a trademark owner’s IP, then my opinion is not favorable. And that could be the basis for you losing a UDRP, if filed.

      If the word is completely generic or there are multiple trademarks and no single dominant player for the word, then I think it’s a fine investment.

      Does that answer your question?

      Best,
      Michael

  2. MET says:

    I have a domain name phrase that a big company started to use. I own the DNA since 2014. There are no trademarks for the DN. The DN isn’t resolving. Can I get hit with a UDRP in the future?

    1. A company doesn’t need to be “right” to file a UDRP or URS case. That’s why complainants sometimes lose cases, and receive a designation of Reverse Domain Name Hijacking in a case.

  3. PalmBeach says:

    Help..after six months of negotiations a California company knew if they filed a UDRP the would lose. To avoid a reverse domain name hijacking ruling they filed a lawsuit against me in UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA

    1. Violation of the Lanham Act,15 U.S.C. 1125(a);
    2. Common Law Trademark and Trade Name Infringement;
    3. Unfair Competition and Unfair Business Practices Under Cal. Bus. & Prof. Code § 17200, et seq.;
    4. Common Law Unfair Competition;
    5. Tortious Interference with Contractual Relations; and
    6. Tortious Interference with Prospective Economic Advantage.

    With a DEMAND FOR JURY TRIAL…I can afford a UDRP but I can’t afford a trial….Based on the circumstances I’m almost positive I can win the case.

    I feel bullied :-\ What are my options?

    Thank you all .. I Look forward to your shows every week.. its great :)

    1. PalmBeach says:

      For further clarification:

      Plaintiff was issued a trademark in 2012
      Plaintiff claims FIRST USE IN COMMERCE: 2007

      I registered the domain name in question in 2000
      I can show / prove FIRST USE IN COMMERCE: 2005

      1. Hi PalmBeach,

        I’m not sure an attorney is going to have communication with you regarding your specific case on a DomainSherpa page. Typically, they want to educate on general knowledge — and are willing to discuss examples — but there are too many details that can affect how they view a case for them to post their thoughts here regarding your issue.

        I suggest you contact one or more attorneys and ask them to have an initial consultation with you. Many times, they will do this for free.

        You already said you don’t have the resources to defend a lawsuit, so ask them if there is any alternative that they can suggest. Maybe one of them will work on contingency…you never know unless you ask. If they’re not willing to, ask them if they know of an attorney who will.

        Good luck to you.

        Best regards,
        Michael

        1. PalmBeach says:

          I reached out to Zak Muscovitch. He got back to me right away with a referral in San Fran who is looking over the complaint :)

          How ever things turn out I thank you and I thank Zak. Your show is awsum… Keep up the good work.

  4. Meer says:

    Very useful information on the legal aspects of domaining….
    Thanx everyone!!

  5. JTW says:

    Hi Michael,

    I’ve been following you for years and this video is by far, your best ever! I have had to engage a lawyer in the past for an IP matter and know the frustration people feel with this.

    Thanks again Michael and keep them coming.

    JTW.

    1. Much appreciated, JTW. Glad you found it useful too. These attorneys are fantastic, as is their advice.

  6. Noor Manji says:

    Great information Mike, thanks to all the contributors for sharing all this information.

    Can’t thank you all enough.

    Noor

    1. Thanks, Noor.

      I asked one of your questions of the panel on the DomainSherpa Discussion that taped today. Watch for it tomorrow morning when it airs!

      1. Noor Manji says:

        thanks Michael….can’t wait.

  7. Saul says:

    Thanks Micheal and contributors excellent useful information. Two questions:

    1. If you live outside the US and you own a generic domain name and the trademark is only applicable within the US (not Worldwide) are you more, less or equally protected from a UDRP claim?

    2. If the domain name was clearly registered on a date before the trademark was registered does that offer any greater protection for the domain name owner and if not why not?

    1. Hi Saul, anyone of my distinguished colleagues could easily answer this question, but I will take a shot;

      1. In a UDRP, if a complainant has a trademark anywhere in the world, it is enough to qualify. The UDRP was meant to deal with international-type disputes so it does not require a complainant to necessarily have a trademark in the country of the domain name owner. That being said, it is the knowledge of the trademark prior to registering the domain name, which is generally the key to bad faith registration, and lack of knowledge of a foreign mark may be enough to show the impossibility of bad faith registration in some circumstances.

      2. Generally, if a domain name preceded the trademark, the domain name could not have been registered in bad faith. However, to be accurate, the key is actually ‘the date when trademark rights arose’, rather than the trademark registration date itself, as in some cases, common law trademark rights may have preceded the actual registration by months or years. There are some panelists who have strayed from the consensus view that a trademark registration must precede the domain name registration, but such views are in the minority amongst panelists.

      1. Saul says:

        Thanks Zak excellent and much appreciated.

    2. Thanks for watching and posting follow-on questions, Saul. Thanks also to Zak for his responses. Very good information shared.

  8. Tom Carver says:

    4 highly respected domain attorneys. Wonderful time. Awesome host.

  9. Ruben says:

    Very useful information!
    Thanks!

    1. Thanks, Ruben. Glad you found it useful.

  10. Jessica Domains says:

    This is unbelievably useful. Thank you to everyone that contributed, and to Michael for organizing!

    1. Much appreciated, Jessica.

  11. Michael, thanks for today’s Q&A. Great question, and excellent resource. Also, thanks to the contributing legal experts!

    1. Thanks for watching and commenting, Angela.

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