You need to get this post moved to legal disputes section, then we can have a deeper look at the issue...
On the face of it, it seems like a reverse hijacking attempt. But you would need to give more info to get useful advice. Do you need to keep your domain name secret or can you post the exact name ?
Could you have possibly missed a cease and desist letter or email ? Do they give a reason why they think they have a right to your domain name ?
Sorry for posting in wrong section.
The package of letters and information was sent to my mate. We now live far apart so I have not seen the info yet as I have only just learnt of this action being taken against us.
He said it was delivered by UPS or one of the big courier companies and signed for on delivery. I assume that's so there is proof we have this part. We are not aware of any other communication to us regarding cease and desist letter or email. I'm not sure how this normally works so may well have missed something.
As the domain is registered through a UK company my mate is calling them now to see if they have any information that may help.
Can you confirm me posting the actual domain name will NOT effect this case?.
If you can I will then post the domain.
The moderator needs to move this thread to the disputes/legal section before you post the name, otherwise it will be indexed by gooooogle.
Ok it's been moved now, post the domain if you like...
The domain is 1stquoteinsurance.com.
We have had it since 1999.
Apparently they are saying that they are using 1st quote as part of their marketing so we are infringing their website and marketing materials.
Federal Express is the courier company not UPS.
I don't see how because they have decided to use the words "1st quote" they are taking us to court?.
The dispute has been raised with WIPO Arbitration and mediation centre in Geneva Switzerland.
They have the following registered US mark, claiming a "first use" date in 2003:.
Word Mark 1STQUOTE.
Goods and Services IC 042. US 100 101. G & S: Providing on-line non-downloadable work flow computer software for use in database management and administration in the field of insurance information. FIRST USE: 20030101. FIRST USE IN COMMERCE: 20030101.
Standard Characters Claimed.
Mark Drawing Code (4) STANDARD CHARACTER MARK.
Trademark Search Facility Classification Code NUM-1ST Marks containing 1ST or the word First.
Serial Number 78892793.
Filing Date May 25, 2006.
Current Filing Basis 1A.
Original Filing Basis 1A.
Published for Opposition July 17, 2007.
Change In Registration CHANGE IN REGISTRATION HAS OCCURRED.
Registration Number 3302240.
Registration Date October 2, 2007.
Their basic problem is that they don't even claim to have begun using the mark until some 3+ years after you claim to have registered the domain name.
You aren't being taken "to court". This is a UDRP filing.
The most basic defense in this sort of situation, begins here: WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?.
Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainants non-existent right.
John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited D2001-0074, Denied.
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, Denied.
PrintForBusiness B.V v. LBS Horticulture D2001-1182, Denied.
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainants potential rights, and registers the domain name to take advantage of any rights that may arise from the complainants enterprises.
ExecuJet Holdings Ltd. v. Air Alpha America, Inc. D2002-0669, Denied.
Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc) D2003-0320, Transfer.
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer.
General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online D2003-0845, Transfer..
How did you find out about the mark?.
As I dont have the official paper work in front of me (at mates house) the way he explained it was we are being taken to court.
What is our next step that we need to take? I obvioulsy need to go and see him to get a copy of the paper work but is the defence of this domain going to cost us a lot of money?.
Looks like they applied for a tm for 1st quote in 2004 but the application was marked dead due to a failure to respond Latest Status Info.
This one sounds to me like a reverse cybersquat attempt, but I'm not a lawyer so they may be basing their dispute on some detail that I don't understand or am not aware of. I'd talk to a good domain/IP lawyer like one of the ones stickied to the top of this thread. If they're going through WIPO there are (as I understand it) procedures that need to be followed if you don't want to end up at a disadvantage...
What sort of disadvantage? We are not in the position to start laying out loads of money? Could we have to end up paying court costs?..
Things like needing to respond to things promptly and following whatever protocol is required - you don't want to lose the name on some stupid technicality!.
Some lawyers offer a free initial consultation - that may be a good place to start. At least you will get a better idea of where things stand.
If this is a UDRP, I believe many lawyers charge a flat rate for handling those.
EDIT: I just noticed JBerryhill posted before my first post - ignore me, listen to him!..
My advice is not to do anything drastic, like handing over the domain or deleting it until you are clear about what exactly is happening. Look at the communication and understand exactly what it is..
Can your friend scan it and send you a copy ?
It looks as though from what my mate is telling me this has gone to the UDRP panel and we will be contacted in due course. I think they need to decide if the company filling the complaint has a legitimate complaint and a case.
Dose that sound right?.
Funny thing is if they had offered a reasonable sum for this domain we probably would have sold it.
Also they are saying we are cyber squatting as we have only so far parked the domain. Is that true? I always thought domain parking was a legitimate business model? They have decided years after we purchased the domain to use the term "1st quote"..
You can search US trademarks on the USPTO website under the TESS system.
You can search some international trademarks on the WIPO site/Madrid system here: http://www.wipo.int/ipdl/en/madrid/search-struct.jsp.
Doesn't look like anything international has been registered, only US, according to the post above..
I'd be very careful what I say about this even here - the thread is closed to search engines, but who knows if their lawyer lurks on domain forums?.
<<they are saying we are cyber squatting as we have only so far parked the domain.>>.
They can't exactly go to the panel and say "we just like this name and want you to get it for us" - they have to give them a reason (justified or not) for filing their complaint. I would definitely contact a lawyer to get more feedback on the situation.
I am not qualified to give any legal advice, but it looks more and more to me like a reverse hijacking attempt. You mentioned having the domain parked, maybe it was showing one of their ads and that is what sparked their interest ? Maybe the decision will go against them and their complaint will be thrown out. Keep us updated and the best of luck...
From what I have read here their claim is ridiculous.
As I don't have the paper work in front of me can someone explain the procedure here?.
As things stand at the moment do we (mate and me) have to respond to the information we have been sent?.
The way my mate has explained it is it's going to the panel for them to decide if there is a case. If there is we will then have to comment.
From what I have found on the net it looks like we need to respond now?.
I wont be able to go and get the paper work until at least the weekend and if there is only 20 days to act on this we are already cutting it fine.
Not a great start to the year but I guess I will learn something positive from this.
Another angle to look at this from is that even if you win at WIPO, you may not be able to use the domain for it's obvious insurance use if they now have a TM on it. Simply owning a domain name does not grant you any TM rights.
So you would rightfully own the domain, and they would rightfully own use of the term to sell insurance. That would mean the domain has been rendered useless to you.
My prediction is that WIPO rules in your favor and this company then contacts you to purchase it...
Determining where you are in the process without looking at exactly what has been received is a fool's errand.
The procedure is fairly straightforward: ICANN | Uniform Domain Name Dispute Resolution Policy ICANN | Rules for Uniform Domain Name Dispute Resolution Policy Well, that all depends on what, specifically, has been received. You want to be certain, at a minimum, that someone is getting email via the admin contact email address, and that it is free of spam filters. Well, he's crackers, then. He may be referring to the compliance review, but the panel is not appointed until the response deadline has passed. It depends on what, precisely, your friend received. Are you beginning to detect a pattern here? Not really.
20 days is well enough time if the fact pattern here is as simple as it seems. By the remarkable expedient of looking it up...
James, I would certainly recommend that you get in touch with a domain lawyer like Mr. Berryhill or others mentioned at http://www.namepros.com/legal-issues...me-issues.html before making any response to the action.
Regarding your concern for costs, it would start with the lawyer fees, but the rates should be reasonable enough for you to successfully defend your interest in the domain...
If a UDRP is filled against me and a domain name that I own, if I try to defend it myself and lose will I have to pay any costs? Or do I just simply transfer the domain name over?.
I cant afford to contact a professional for advice as although the domain is worth what it's worth to me I would not be in a position at the moment to pay out any money.
We have sent an email to the law firm acting for the person trying to claim the domain name as theirs, he has replied and offered to take arrange the domain transfer to his client and they will pay the fees without this going through the UDRP. But in the package that was sent to us it's mentioned that a cheque has already been sent to the UDRP for $1500 USD.
There is no charge to the domain holder, unless you request a 3-person Panel. The filing fee is paid by the disputing party.
All you can lose is the domain itself.
I believe you just lose the domain name, though there's nothing preventing them from taking further action against you in another venue, if they're so inclined. Look through the list of domain lawyers stickied in this thread and visit their websites - several will give you a free initial consultation. That might be enough to get an idea of your chances of winning this and some guidelines as to how to proceed.
IF you turn it over to them w/o going through the UDRP (from what you've posted here, it sounds to me like there's a good chance of this going in your favor), make sure you have it in writing that they will not take any additional action against you!..
The complainant has already filed and won several WIPOs for related domain names: http://www.wipo.int/search/query.htm...Aspen+Holdings.
Your circumstances may be different, in particular the fact that the domain name has been registered since 1999. In light of this, we could think of it as a reverse hijacking attempt..
However your domain is currently parked with sponsored links that are related to insurance and this is not good. WIPO rulings often deem that parking is not bona fide usage or does not suffice to establish usage rights. I don't know about how the domain has been used in the past.
Your case does not looks so good, I would try to find an arrangement with them as the initial proceedings can normally still be canceled. It all depends on how valuable the domain name is to you. If you are not prepared to retain professional advice, then it's safe to say it's not worth much and a private settlement is preferable. Good luck...
They lost at least two as well though, AspenGrove.com and eMedicine.net...
These names were not challenged by Aspen Holdings but by Aspen something entities.
The link above is a full text search on Aspen or Holdings.
At first glance Aspen Holdings have prevailed in 100% of the cases...
Which means nothing. Each case is determined on it's own facts. Post added at 08:06 PM Previous post was at 08:02 PM They get a $1000 refund if the case is resolved prior to going to a panel, which is what you left on the table...
WIPO does not care about domain parking.
Some complainants use this in their argument, but they are just trying to stack the deck.
EDIT: I shouldn't say they don't care about domain parking. Here in 2010 it is hard to find an undeveloped domain that isn't parked since most registrars now park everything that doesn't have a custom nameserver set. So "OMG it's parked!" isn't damning evidence in itself...
Please find out what you received. If it is a complaint, just respond and explain that you registered the domain name in good faith 3 years before they were in business...You should have a good case to defend the name.
Please don't just give it to them, if you do it does nothing to stop them or others that try to use UDRP to just TAKE whatever name they want...
After taking a closer look at this, I'm going to flip flop and say that you will lose. The only thing you have going for you is that your registration pre-dates their TM.
- You have had an entire decade to develop the domain. It is reasonable to say that you never will..
- The term is now a TM and this domain isn't multi-use..
- It is parked away from standard registrar parking.
The picture they may paint using these points is that while your registration pre-dates their use of the mark, you did not develop the domain into an actual business. Then instead of letting it drop, you parked it to profit off of their TM.
Whether or not that is the true series of events, that is what it looks like. Also realize that the WIPO shoots their arrow first and then paints the bullseye around it. If they feel as though a company should get a domain, they craft their written findings around that. So I'm not even sure there is a defense for this...
The simple fact is that you owned the domain prior to any TM they may have had. There is no way you could have known that 3 years later they would register a TM for that term. As far as what you've done with the domain since, that is irrelevant, because you initially registered the domain in good faith..
If you show good faith, they lose, end of story...
Do not give this to them unless they make you a nice offer. It costs you nothing to defend it. Just respond to the complaint with a letter stating that you registered the domain in good faith, because you registered it 3 years before they even had a TM and you had no way of knowing of their non-existent rights... That alone is an adequate defense. Obviously, you'd fair better with a lawyer, but even if you lose they can't make you pay anything...
I disagree which is probably the most important aspect of the case, pretty hard to prove bad faith when you registered something years before their trademark.
I think this case could be won without an attorney, if this scares you then I would hit up John and have him spank some ass, don't roll over as you have the advantage here in my opinion, can't afford a lawyer then send them a letter back saying we have retained the best ip attorney and he says you don't stand a chance and he will turn you into chop suey and then maybe they make an offer..
The mere fact that the domain predates the trademark is not bullet-proof protection..
You still need to be careful with usage. MySpace wins UK domain name that pre-dated it's service The Register..
The Nominet DRS rules are significantly different from the UDRP...
Sure, I just want to illustrate one possible 'bad faith' angle the other party may want to take advantage of...
I totally agree with the posts advising you not to roll over and give away your domain..
Even if you don't engage a lawyer, you should defend your position and try to keep your domain..
Personally, I would not entertain any pre-hearing deals..
If, after the hearing, you are successful, and they then want to buy your domain, squeeze every last cent you can out of them..
I dont like or agree with cybersquatting, but I feel equally as strong about reverse-hijacking...
Aspen Holdings have also won the WIPO for firstquote.net (registered in early 2003. WIPO Domain Name Decision: D2009-1160 The fact that the respondent did not reply probably did not help though.
I'm not as optimistic as Jberryhill but he's clearly more qualified than I am...
I'm fairly certain I've been reading a lot of UDRP rulings lately where the registrant could prove good faith at the time of registration, and while they may have later used the domain in what could be considered a bad faith manner, there wasn't anything that could be done about it. Maybe I just dreamed that though, because I really haven't been reading a lot of rulings lately...
Most often, panelists do not go on an independent fact-finding expedition if there is no response to the Complaint...
Yeah, if you pay me $1500, I'm probably not going to go out of my way to prove you wrong either...
It's quite the opposite. I have defended 2 UDRP complaints myself and yet to lose any.
1. It's up to the domain owner whether to develop a website for the domain. It cannot be enforced and it's not against any of the ICANN rules.
2. The TM was applied for on November 10, 2004, but has been abandoned since December 19, 2005. The OP registered the domain 5 years before they filed for the TM.
3. It's perfectly legal to just park the name, as long as the ads don't infringe any trademark right.
The OP has also never offered the sale of the name to the complainant.
I see an easy win for the OP here...
Is there a time limit to respond?.
I'm always fascinated by continued suggestions after the original poster has already made a decision as to how to proceed.
Yes, it was a simple case of bad chronology on the part of the complainant...
New suggestions might help other readers that find this thread...
Been quiet as I have been waiting on some news on this. Emails have been going back and forth between us (mate and me) to the law guy who raised the complaint and also a contact on the UDRP.
As we have removed the domain name from parking the case has been dropped.
We have agreed via email not to park the domain and link to sites that are in violation of the trademark.
From our point of view this is the best solution. Its slightly complicated that while we both purchased the domain together it's in my mates Dads name and he understandably did not want anything being raised in his name.
Had this of been one of the domains that I own I would have seen this trough to the end. I think competition is good in business and while the their is a TM on part of the name we did register the name long before the mark was agreed and did not register the domain with the intention of stealing any traffic or anything like that. If the truth be known the domain receives very little traffic. The parking revenue paid for the renewal fees each year and a little change for a beer or two!.
In a way I feel like I have let you guys down as it would have been good to go all the way with this and see who won. I honestly think we had a case but hey ho.
So to end I want to say a big thank you to all those who offered advice and support. Best of luck this year and beyond.
He who knows when he can fight and when he cannot, will be victorious. - Sun Tzu.
Or something like that...
Can you develop the domain with insurance content not related to this company?.
If not, you may as well just let the domain expire...
We can use the domain for things like car insurance, house etc, as long as we dont link to a product thats the same as the trade marks product.
In time I will use the domain for an affiliate site selling insurance, just need to find a good one.
I thought the TM was held for the insurance industry? Might be best to just stay away from that industry entirely. There are still a lot of other uses you put this towards. Quotes are used for more than just insurance. Anyway, best of luck for the future!..
That means they are allowing you to publish insurance content, but you may not promote insurance plans since those are their products. So forget about trying to find an insurance affiliate program. You can't even put AdSense on the site since insurance company links will show up.
Suck it in and cancel the domain. With them watching you now, it's not even worth keeping and trying to walk a tight rope using a domain that has been severely paralyzed. The domain is First Quote Insurance dot com. There is no other use for it...