Anyone famaliar with the Anti-Cybersquatting Act?

ddt · 03-02-2003, 02:23 PM

Is anyone famaliar with this? I got a letter from a law firm the other day.

Alphared · 03-02-2003, 03:55 PM

i think its when you register a website name just to hold the name. Like if you register the site www.joeblow.com for like years and do nothing with it that cybersquatting to hold the name. So if Joe Blow comes along and wants a website, he can challenge you for the name. This is so people don't buy up all the brand name and then sell it off to the companies for a huge amount. Like before all the companies like ibm, dell, etc.. went online, these people register the name just to sell it back to them.

ddt · 03-02-2003, 06:30 PM

Well, some of that's right. I know how the law reads. I'm just curious if I'm in voilation. Here's the law.

(A)

A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person -

(i)

has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(ii)

registers, traffics in, or uses a domain name that -

(I)

in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

(II)

in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

(III)

is a trademark, word, or name protected by reason of section 706 (Red Cross) of title 18 or section 220506 of title 36 (Olympics)

And here's the scenario.

There is a company we'll call company X. Company X holds a trademark for the name. They've been around since 1999. Well I was thinking of buying a franchise in a particular city. So I regstered a domain name like www.companyxofcityname.com. I get a letter from their attorneys which states that I'm in violation of the anti-cybersquatting act.

I've never once offered to sell the domain to anyone. In fact it's not my intent even today. It's up to the courts to decide if the company's trademark is "famous." Examples given were Microsoft, Exxon, and Kodak.

There is not one of their franchises in the "cityname" I used in the domain name. In fact there are none close. Kind of hard to be called famous if no one there has even heard of it.

I know there was talk from some fellow investors of someone else buying a franchise in that city, but my domain name was registered prior to that. I can bet that the only reason they found out is because they tried to register it.

I'm going to tell their atty's to **** off tomorrow AM. I've done my homework. I was just curious if anyone else could see something I didn't.

SuperMatty · 03-02-2003, 08:50 PM

I've had this happen to me, but reversely. In October of 2000 I registered www.cpubuilder.com with the intent to create a website, which I did. Then in March, Stratitech sends me an e-mail saying that since I'm planning to use that name to deal with computers, it will cause confusion in the marketplace. Nevermind, they, on the other hand, have only registered CpubuilderS as a trademark in that same month (March). So then I was forced to sign the name over to them. Seems kind of dumb to me.

CrazyLittle · 03-02-2003, 09:33 PM

Matty- no - you didn't need to sign jack -or- **** over to them.

You cannot trademark prior art.

See the Etoys.com vs. etoy.com

etoy.com was an artist's webpage that had been around since like 1994. etoys, the online toy retailer, sued etoy and lost. If somebody were to create some company named "Crazylittle(anything)" tomorrow and then write me a letter in an attempt to bully that name away for me, I would simply respond by filing my own trademark claim and then suing them for dilution damages. It's the "ownership by invention" rule. If you're the one that came up with it first, nobody can take it away from you.

Now really, you need to inform us as to what that "Company X" really is, because you're not giving us the whole picture.

ddt · 03-02-2003, 11:39 PM

company X is Homvestors. http://www.homevestors.com

I registered http://www.homevestorsofchicago.com

BTW.. short guy in the blue shirt on the home page... that's the dude who's thinking of buying the Chicago Franchise.

ddt · 03-04-2003, 11:41 AM

anyone?

MP3DUB · 03-04-2003, 12:43 PM

I know a former employer of mine had to use it recently because his business was hisdomain.com, and his biggest competitor bought hisdomains.com and pointed it at their websit (altho I still can't figure out why he didnt own both in the first place, ive got no legitimate companies, and yet have multiple spellings and .orgs and .nets for some of my domain names

).

Callahan · 03-04-2003, 03:29 PM

Part of the problem is if they know of and use the UDRP you may not have any choice in the matter. The UDRP (Uniform Domain Name Dispute Resolution Policy.. worst acronym ever) allows any other individual to file a proceeding that will be overseen by by a thid party (usually WIPO).

If they rule that the domain name should be turned over to the copyright owner (and they do look into the issue quite thoroughly) then the registrar of the name will transfer it to that individual. Unfortunately you won't have any say regarding this as ICANN says that’s the way it is and the registrars agreed to this to become accredited..

The UDRP does have a good reason behind it. It was designed to stop all the squatters out there that were just trying to make a quick buck sitting on a company's trademark. Its all grey area to me, its good and its bad (but hey, most things involving lawyers are like that

)

ddt · 03-04-2003, 04:25 PM

screw 'em. I told them they weren't getting it. The said they could make it long and expensive...

... I told them then their client is just going to have to decide if they're willing to take the loss

EDIT had to fix the typo's

RobM · 03-04-2003, 08:29 PM

Transfer it. To a friend. Several times. Make it nice and confusing for them.

ddt · 03-06-2003, 12:58 AM

done... twice already

BUT... what if I simply changed all of the contact info?

C4M · 03-06-2003, 06:14 AM

Quote:

Originally posted by ddt
done... twice already

BUT... what if I simply changed all of the contact info?

Hmm...

First of all - is homevestorsofchicago a protected mark? I'm tipping their trademark or registered mark is homevestors, which is not actually the same thing. I'm not sure of the differences between Australian and US laws in this area - check it out.

Let's be a little commercial about this: Don't say no.

If I were you I'd say: I've gone to the time and the trouble to register the domain name, and I think that under existing law and with existing precedents, that in order to wrestle the name away, there will be costs incurred in retaining and instructing counsel. In order to offset that expense and to ensure that I'm covering my costs for the time and materials employed in registering the domain name, I'll offer to simply sell you the domain for $x, which will negate the need for you to retain solicitors to try and chisel something from me to which you are probably not entitled. Solicitors are usually required to present offers to their clients.

However: It doesn't look good for you that they have a bunch of other domain names as well in the same format (if you check their site). Of course this is probably irrelevant if you can prove that they registered those after you registered yours.

C!

CrazyLittle · 03-06-2003, 11:01 AM

So if you own Homevestor of Chicago, and you buy the franchise there, what would be the scope of business for the regular "homevestor.com"? Everywhere -but- Chicago?

The reason I ask is because businesses can have the same name as long as their in different cities etc. (Also provided that there's a reasonable arguement as to why the two are obviously seperate entities)

But yeah, if you can't join 'em - see how much money you can get out of them before caving in or entrenching the fight.

ddt · 03-06-2003, 12:26 PM

I don't think I can sell it. I think if I offer it up for sale they might be able to convince a judge that I,

(i)

has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section;

Now.. if they offer to buy it from me I might sell. I won't offer it to them though.

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