Do you know for a FACT that it is the radio station?..
Well, in the email they identified them self as an employee of the radio station and it came from the domain of the company that owns the radio station according to Wikipedia...
A wipo case costs $1500 to start. Ask close to that (if you want). http://www.wipo.int/amc/en/domains/fees/index.html.
I would also post in the legal section here.
Good luck, gary...
That was my first thought actually, to explain to them that a UDRP would cost 1500+attorney fees and likely be unsuccessful, and offer to sell it somewhere in that same range...
I am not a lawyer but I strongly recommend to you to not send an offer.
Let them make an offer and then both of you begin negotiation.
What is "astronomical" for them? $1,000, $10,000 or $100,000?.
Do they know how much the costs for fighting are?.
I will not make any comments about the fact the name is not TMed.
Maybe, and I hope, you are legally on solid ground but, again, I am not a lawyer.
BTW, what about asking the mods to transfer this thread to "Legal Section"?..
I don't like the fact that they initiated conversations in an aggressive manner; kind of unprofessional. The four letter domain name could mean anything and you've had it since 2000. Let them make an offer first, don't talk more than you need to, doesn't matter how much they ask. The fact that they initiated the conversations in an aggressive manner makes me think they might not have very good intentions.
Has the radio station existed since or before 2000? If they thought you are squatting them, ask them why? Have you developed the domain? Make them tell you why they make accusations, but don't give them more information than they need. Limit yourself to a counteroffer only if they make an offer.
Oh, I am no lawyer and this is not legal advice, but this is what I might do in this situation...
$1000 is a nice round number..
They would be lucky to acquire "their" name so late in the domain game, especially without a headache..
Most owners wouldn't even have responded to the Radio station's inquiry...
I wouldn't have even responded that it's for sale. I'm not a lawyer or anything, and you shouldn't act on what I say as if I know the laws, but whatever their offer is, I'd say "no thanks," and walk away. That gives you the power back. If they really want it, and you determine that you're in strong legal ground, they'll make you a better offer than you can hope to get than simply giving them a price.
Disclaimer: I am not a lawyer so this is not to be taken as legal advice.
At this point, I would not say anything regarding your intentions with the domain.
Since they didn't go straight to UDRP, it appears they are willing to negotiate so I would ask them what dollar amount they consider to be "astronomical" and take it from there.
I would not quote any price to them, let them do the talking. Quoting a price might backfire later if this goes to UDRP. They might try to use your price quote as evidence that you intended to profit from their mark.
Best of luck to you...
What's astronomical with us might not be astronomical with them?.
You are free to quote them whatever price tag you placed on your own domains...
I read recently somewhere that you should get the other party to admit that you are the rightful owner of the domain before you start negotiating. Forgot where I read that.....
Take 1/2 a day to find out how long the radio station has been around using those call letters.
Some 8 year ago, I had a TV station in the Midwest contact me in the same manner. Informed me that a business name I was using was their name as it was one of their program names. They would give me a chance to surrender it and save me a bunch of legal fees.
A little research showed I had this name 3 years before their show existed.
So, I was just going to breathe a sigh of relief that I was not in a legal jam, right?.
Wrong! I went after them with a cease and desist, refused an offer to buy when they discovered their predicament and the show was taken off the air.
Find out if you predate them and if you do go after them. Remember this is just a filing when you do it, they have to defend.
I promise you one thing. You fire that shot across their bow and watch them get in line.
Eveyone is a tough guy until the fight starts and they are nailed a few times.
Sometimes you have to reduce it to a hatchet fight in the middle of the street to see who has the b _ _ _ s to continue.
Thanks everybody for the input and advice.
A mod can move this to the legal forum if that is more appropriate. I wasn't sure if I should post it here or there.
The radio station appears to have been on the air for almost 30 years, though their current domain has only been registered for a year now, and again there is no trademark on the term.
From their emails, it seems they don't know much about domain names or the UDRP process as they said they would contact the FCC about getting the domain from me (the person contacting me is actually also a DJ for the station according to their website).
From what I have gathered from your advice, it would be best not to quote a price, so I will wait for them to make an offer. I will let you guys know how it ends up...
You know what it sounds like? It sounds like a frustrated DJ/talk show host that is looking to start a fire, will maybe try to ridicule you on the way. If you know somebody in the town, try to find out what program he talks in. Again, I am no lawyer, but your name should be fine because there are many things that might have meaning in those four letters and the radio station could most likely only have legal trademark protection in the reproduction of media via radio waves or something like that. Be careful...
Probably the most famous case of name disputes come from the the Nissan domain name. Nissan is the name of a man who has owned the domain since the mid nineties. You may wish to review the details of the entire case here: http://www.nissan.com/Lawsuit/The_Story.php..
If you think they have no legal case, tell them you want something like $10k, and go from there. Or make it real easy and say you want $1k. Its up to you, but make absolutely sure that they have no case...
What makes you say that?.
I'm pretty tired of rolling the same rock up the hill, but they do NOT need federal registration to demonstrate a trademark.
If they've been around for 30 years, then I'd be shocked - shocked - that they have not engaged in considerable advertising and promotion using those call letters as a mark.
It is just waaaaay too late in this game for domainers to believe the USPTO database is "the list of trademarks".
What's astoundingly pathetic about the "advice" in this thread is that call letter cases are one of the most mundane and common fact patterns in the UDRP.
The advice in this thread is utterly brain-damaged. http://domains.adrforum.com/domains/decisions/96363.htm.
Complainant, The WBEZ Alliance, Inc., is an Illinois not-for-profit corporation. Complainant has owned and operated one of the nations largest radio stations under it's common law marks since 1990. From 1943 to 1990 the mark was owned and operated by the Chicago Board of Education. Currently, Complainant is the only broadcaster using the call letters "WBEZ" in the world. Complainant maintains an audience of almost a half million listeners each week. http://domains.adrforum.com/domains/...ons/135008.htm.
Complainant, Clear Channel Communications, Inc. was assigned the radio station call letters WKGR by the Federal Communications Commission (FCC) on March 10, 1984, and has broadcast under that station identifier in West Palm Beach, FL, since that date. Complainant has expended significant time, money, and effort establishing public recognition of it's mark as identifying it as the source of it's radio broadcast services. These expenditures include the use of it's call letters during radio broadcasts, on signs and advertisements, as well as on brochures and other promotional materials. http://domains.adrforum.com/domains/...ons/155460.htm.
The fact that Complainant has operated the television station under the call sign WAWS since 1981 supplies the rights necessary to satisfy the requirement of Policy 4(a)(i).
WAWS is identical to the domain name <waws.com>. The only difference between the two is the addition to the domain name of the generic top-level domain (gTLD) com after the letters waws. The top level of the domain name such as com does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Pomellato S. p. A v.
V. McCrady, D2000-0429 (WIPO June 25, 2000). http://domains.adrforum.com/domains/...ons/637920.htm.
The Panel finds that Complainant has established common law trademark rights in KUHF by virtue of continuous commercial use for more than 55 years. Complainant submitted many pages of exhibits evidencing the widespread, long-standing public recognition of it's radio station KUHF and it's specialized programming, a long list of prominent national and local financial supporters, and the FCC designation of the call letters KUHF to Complainants radio station. http://domains.adrforum.com/domains/...ons/724378.htm.
Complainant, Capstar Radio Operating Company, has used the WAMX mark in connection with the operation of it's FM radio station, WAMX 106.3, since May 29, 1997. Complainant was assigned the WAMX station identifiers by the Federal Communications Commission (File No. BLH 19970529KA assigned May 29, 1997), and uses the identifiers as it's mark in connection with radio broadcasting and with events and promotions sponsored by the radio station, including the popular Babe of the Day promotion, as well as the WAMX X-Fest concert series. Additionally, Complainant utilizes the WAMX mark in conjunction with various advertising and promotional materials, including signs, print advertisements and brochures. Complainant has registered the <x1063.com> domain name, and uses it's website to inform Internet users about it's radio broadcasts and accompanying events and promotions. The WAMX mark is used prominently throughout Complainants website.
Complainant has established rights in the common law trademark WLIW through more than thirty years of continuous and extensive use. It is undisputed on this record that Complainant has created substantial consumer recognition in the WLIW mark sufficient to establish it's rights in the mark pursuant to Policy 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug.
Taylor, D2001-0168 (WIPO Mar. 28, 2001): [O]n account of long and substantial use of [KEPPEL BANK] in connection with it's banking business, it has acquired rights under the common law. That's one of only two relevant questions in this fact pattern. The other relevant question is whether they use the call letters as a mark (some stations don't).
And in answering "How is the domain used?", the answer is not "well, it could stand for this, or it could stand for that, or it might be useful for something else" - the answer is how is it being used in this universe, not some hypothetical alternate reality...
I think this trademark bullshit is ridiculous... If someone is allowed to register a domain name then they have the right to own the domain. Either trademarked names should be in registrars database and blocked from being used, or people/companies have to deal with the fact that their name has been registered as a domain and pay up.
I think domain registrars are responsible for trademark issues, not the owners. Just my opinion.....
And I think if my aunt had testicles, she'd be my uncle.
But we don't get to pick and choose the way things are...
Yes Mr. Berryhill but like you point out..what's her usage? I kind of doubt it's related to radio. So let's assume for a moment that it's not.
IMHO...she should be asking for high $x,xxx to low $xx,xxx. If indeed this is a radio station you may want to raise the stakes a bit. Asking $1k isn't enough imho.
Now assume you are using it in a way that's violating their TM. Well...maybe asking the $1k is the safe route and if that's fine for you...then go for it.
One thing you might consider. Create a list of recently sold LLLL.com's. Show it to them and say you feel your domain is in the same calibur you you expect similar price.
TDVR.com could assist you in creating that list...
Which indeed, I did point out (see my note above on "two relevant questions"). My jumping off point though, was on the insistence that "there is no trademark" which, given the manner that most broadcasters in the US use their call letters precisely as a trademark, and the frequency with which it is an issue in the UDRP, is likely to be utterly wrong.
Typically a PPC lander for a WLLL or KLLL will end up resolving to a set of links suggesting something having to do with broadcasting, thus reflecting user intent in entering the domain name in the first place.
On the question of "what's her usage?", if the answer boils down to "not much", then there's not much to work with here...
That was a good one Though I do agree, bulls$*t or not, TM infringement is a big deal with big consequences...
Probably another relevant question is what's happened since then...
How would you presume registrars do that? Blocking all TM'd keywords? Guess what? You wouldn't be able to register a whole lot of really valid terms.
And companies should have to spend hundreds, thousands and for some into the tens of thousand dollars each year to register all of their TMs in all extensions? What about typos and variants? Now you're talking about hundreds of thousands for companies like 3M, which has thousands of TMs and SMs.
And registrars should bear the brunt of protecting TM owners? That's a lot of work - to what benefit of the registrar? Who's going to pay them to do that? You've no idea how much work that is, nor how much maintenance...
It seems to me to be an inordinant amount of time has elapsed for them to start defending their trademark...
Laches will not work as a UDRP defense.
You do raise a third relevant question, though - chronology. How long has this radio station been around?..
Yeah, because it'll cost a lot more than for example, the Nissan.com lawsuit of $10million dollars back in 97. and they're still trying to sue him after almost 10 years. 10 years of going to court is a lot more of a hassle than registrars having some sort of an agreement with TM owners... It's better to resolve an issue than to just ignore it..
That's because Nissan has and never had a legitimate right to the name Nissan.com... your comment makes it sound like you didn't even read the info on it. If Nissan really wanted the name, they should have just offered him an amount he couldn't refuse, instead they keep pressing this 'entitlement' mentality trying to capture the name. It was Nissan's choice to continue barking up a tree they have and never really had a chance of winning for 10 years and still going. In fact, he sold cars under the name Nissan long before they even changed their name... so in fact he could sue them if he really wanted!.
Your idea is outlandishly impossible to implement because every tm owner would then have to track down every registrar and say this is my tm, don't let it be regged. The policing of this system would be a killer deal as there would be a lot of legitimate regs caught in the crossfire, complaints, counter complaints, et al.
The way it is now is best. It is up to the TM holders to protect their rights and property, as has been proclaimed by the courts, even recently. It is the most efficient method, and doesn't put unwieldy and unnecessary monetary stress on registrars...
Actually you make a good point and one has to wonder why he hasn't used that for a counter-claim...
Because he isn't a vicious overreaching (even though he technically wouldn't be) prick of a company like Nissan has shown themselves to be. They even went after other companies he is/was a board member of/executive of... that were unrelated to his "Nissan" businesses... now THAT is low!..
What makes you believe that the auto company has not made generous offers to him, and that he hasn't simply been holding out for more money?.
Look at the apparent facts.
First, look at nissan.com. You think he makes money advertising a $300 barebones desktop? You can't even buy anything through the site.
Second, his whole story about the lawsuit starts with a false statement: Bullshit. We had a 1972 Datsun. The parts, the owners manual, everything was labeled "Nissan". That's like saying "General Motors was known as Chevy".
Third, that "20 years of use" included the time when he wasn't pretending to be a 'computer company', but was when he was running a business relating to foreign cars. Even if your name is Nissan, you do not have a right to use your name in connection with automobiles.
Uzi Nissan is under a permanent injunction not to use the name in connection with automobiles. As soon as Nissan Auto notices that the banner rotator he's put on the page lately includes ads for Hertz car rental, they'll be back.
And, finally, he lost out big time. If you don't think there were ongoing settlement discussions during the litigation, then you don't know how litigation works. You think his lawyers were working for free? Hell no.
What this situation looks like to a lawyer is that he took a gamble with his legal fees that he could hold out for a higher settlement offer from the auto company. He lost that gamble and there is no way on earth I am prepared to believe that he's made anywhere near his legal fees, which must have been astronomical, running a nickel and dime computer business...
Lawyers hate litigate in court.
I have yet to speak to one that does actually enjoy it. The last thing most lawyers want is to bring the suit to court and deal with judges or jury. The goal is to make a deal suitable to client and move on. At least I hope I ain't putting foot in mouth Mr. Berryhill. My buddy (music IP lawyer) hasn't been in a court room in over 20 years as an attourney...
Would this hold against a UDRP?.
If one forwarded a domain directly to a for sale page (no PPC) and entered in the sales description something along the lines of:.
"my intent was to develop this domain into a ________ website << based on an acronym in the domains letter pattern in an area that has nothing to do with the TM holder >>, however, need cash and must sell"..
I'd love to have the job of the person Nissan assigned solely to keep checking.
Nissan.com for things like that...
Going to court over preliminary motions is one thing.
Going to a trial is a failure.
A lawyer who has to go to court a lot is doing something wrong.
An attorney should be trying to help his/her client reach their objectives. A "court" is a place where neither attorney has control over the outcome...
Maybe I misread something... but wasn't mr Nissan awarded legal fees, and had every injunction reversed so far except maybe one? (Going off of memory from the legal link on his website). If that's the case, wouldn't that indicate that the judge believes Mr. Nissan's assumptions and data are correct? Or is his website disseminating incorrect information?.
I've never a 72 Datsun... so I can't comment on that..
No. He was awarded his costs for a certain period of time after a Rule 68 offer of judgment.
And to understand that, we need a short lesson on Federal Rules of Civil Procedure, Rule 68.
In a nutshell, if you are the defendant in a suit, you can say to the court:.
"I will accept a judgment against me in the amount of X".
If the Plaintiff refuses the offer of judgment and fights on after that, and the plaintiff does not win a damage award greater than X, then the Plaintiff has to pay your costs for maintenance of the suit beyond the point that you entered the offer of judgment.
What Uzi Nissan's own site says is this: So, even if you are going by his own accounting, he's $2,842,000 out of pocket on the entire shooting match.
The auto company was awarded damages corresponding to the amount of time he used the domain for car-related advertising.
Explain to me what, in your opinion, Mr. Nissan "won".
Oh... of course... He got to keep the domain name for the purpose of advertising a couple of desktops that you can't buy through the site, and for advertising that he'll fix your computer for $35 an hour.
I can see it now... In just a little over 81,000 hours, he'll reach break-even.
Assuming he works 12 hours a day, then it will only take him 18 years...
Admittedly I didn't read every document he linked to, or read the entire thing super thoroughly... I guess the $58,000 or w/e he said he "won" isn't much compared to the cool $2 mill he is out... missed that <2% part..