First of all your domain ownership predates his TM. Second of all PC101 is a pretty generic term anyway. "101" is an extremely popular number referring to education, and PC is an extremely popular acronym.
Just Google "PC 101" and "PC101" and you can see the term in use all over the internet.
Here are a few developed companies using the term, all for basically the same obvious use - http://www.pc101learnit.com/ http://www.pc101plus.com/ http://www.pc101tutors.com/.
He has no legitimate rights to this domain.
I did not have a C&D, but had a similar experience recently with a big company trying to come after me on a domain that they had no rights to. They didn't even have a TM. They basically had a meeting earlier in the week, decided on a term then tried to strong arm me. Then when I called them on their BS tactics they implied that it had worked before.
How you respond is up to you. Personally I would ignore the letter. I would welcome him to lose $1600+ filing a dispute, and ask for a RDNH finding if a dispute came.
Without doing any research and just going by what you are saying I don't see how they can prove bad faith if they have a trademark as you have owned the domain years before them, would be nice if you could get a phone record showing them calling you as well but I guess proving what the call was about would be tough too bad they didn't email you with an offer to buy, if it's me I email the guy back and tell him to pound dirt with my lawyers info for any further communication, following my exact steps although humorous might not be the best move, I would suggest emailing one of our forum members here John Berryhill and utilizing his services if they wish to play hardball as I think you would come out on top on this one...
Thank you for responding! I look forward to additional feedback!.
I think the .US bozo is just trying to strong arm me out of my domain!! He wants it for himself and he even stated how he figured the .US was probably the next best thing!.
And guess who owns the .NET and the .TV of PC101.. me!! If I'm not the one who's the most committed and invested to the PC101 name... no one is!!.
Hey... I wonder if Verizon can provide me with proof that he called me! He called twice!.
More than likely he paid some lawyer to send a C&D who probably knows very little about the claim, or intellectual law in general.
From what you have explained the claim is ridiculous.
Tell him that your ownership predates his trademark and how he has no case because it is such a general term. Tell him to take you to court, and tell him that if it goes to court you will counter-sue him for wasting your time and money spent on lawyers (etc.). And also threaten to take his .us domain from him in the counter-sue.
He'll back down right away..
Their claim has no merit based on the information provided. I've been involved in this process a few times and I think Brad is correct is advising you not to respond. IMO...
As far as I am concerned the term PC101 is far too generic for a TM in PC training/tech/education to be enforceable. You might get away with a TM for some non related field other than the obvious use.
I would not even get into a pissing contest over the .US. I think he has every right to use the term, just like you have every right to use the term.
International Class: 037.
Class Status: Active.
Repair or maintenance of computers.
Basis: 1(a) First Use Date: 1991-08-20.
First Use in Commerce Date: 2006-03-31.
International Class: 041.
Class Status: Active.
Computer education training services.
Basis: 1(a) First Use Date: 1996-08-20.
First Use in Commerce Date: 2006-03-31.
Note the "First Use" dates he provides... the First Use in Commerce Date is well after the domain... but he's claiming use back into the last century for "First Use".
Are you offering a computer repair of maintenance SERVICE?.
Are you offering a Computer education training SERVICE?.
Me, I'd tell him to get stuffed but that's just me.....
You are so right! That's why I didn't even flinch when I learned he had it. Who cares... heck, I'm pretty sure someone out there has the .org... the .cc...biz... and twenty other PC101 dot something!.
But ... I must admit... when I got the letter I was feeling like what a twit that guy is to come after ME for the .com when I had it first ... and I own .NET and .TV. What a jerk!.
Great points cartoonz.
Not only will you win if he tried to take it, you can shut him down!.
Just throw the letter away and send a cease and desist to him telling him that further communications will be considered harassment..
No attorney worth his sweat would even do one..
Who was the attorney? Names are better than anonymous.
Make the attorney pay for harassing you!..
Is it weird that he'd pick a firm that's in California, while he's in Georgia and I'm in Texas? I think it's odd.
Lyte, Keep us posted on this one I am curious to it's outcome although I don't see this person coming out on top. Sounds like someone is throwing a tantrum fit because you thought of the idea way before they did...
Lyte I checked your site and his site.
Your site is if I'm corrected helping people online with computer stuff just to sum it up quick.
His site is just advertising his computer business in Canton Georgia. You have computer problems you can call them or you can go their etc.
In a sense not the same thing since. Yes I understand both do computer stuff but there is a difference in both. Where this guy from Georgia advertises a business and Lyte doesn't.
Lyte dont worry to much about it...
There are two issues. One is law and the other is the other party's willingness to spend money to sue you. If they go to WIPO be prepared to respond...
Thanks y'all for your feedback!.
Dare I ask... what's the WIPO?? What do y'all think I need to have prepared in order to respond? El Bandolero,.
Mine is just online written tutorials that people (from all over the world) follow for themselves. His site and business is helping people face to face in his local community.
Brad made an excellent point that there are hundreds of sites with "PC101" in the name and they're computer/pc/tech related too! Is he going to go after all of them? Or... could it be... he just after me!?.
IMO I think he is just going after you to get back for you not selling the name to him...
Pc 101 is very generic, are they even serious or thinking?.
Just send him a scare letter too....
I don't know what he thinks he's gaining by this! Even if I was forced to change it's content (away from pc/tech/computer stuff) people will ALWAYS go to the .COM or the .NET first when looking for a site and I own both of them!!.
Let him just try and take the domain.It will be real funny.He has not got a cat in hell's chance of getting your domain.Don't even sweat on it...
While I wouldn't cave on this myself, the fact is that the .us guy does have a Registered TM with "First Use" dates going back a ridiculously long time.
So saying it is impossible for him to win is nonsense...
I know there's NO WAY he can get the domain. Worse case scenario is that I'd have to change the subject matter to something other than computers. If that happened, I'd turn it into a PC 101 <dot> US SUCKS website. Then he can come after me on my 1st Amendment (Free Speech) rights. There are quite a few <enter big name>sucks.com sites already on the web that have stood the test of litigation...
Don't fool yourself... he could certainly get the domain.
That said, it all depends on how much he wants to spend in cost/energy to do it.
...and unless you changed the use BEFORE his c/d or further action, that won't matter at all.
Now, don't get me wrong... like I said, if it were me - I'd tell him to wiz up a rope and continue to do whatever I've been doing. All I'm saying is that there is always the risk of him escalating his game and you are not guaranteed you'll end up victorious. More factors than you might think come into play... if he suddenly decided to spend $50k in litigation, would you be able or even willing to match that level? If not, guess what... you won't have the name anymore.
That's just one reason to never say never.....
This is about PC101 not your stuff Curtis...
Any off topic posts deleted....keep it on topic please.....
Well, if that dude wants to spend $50K, let's hope he'll put it towards buying the domain!.
I'm surprised he even got a TM for such a generic term. Is it possible to depute a TM?.
Yes, you can take the offensive and attack the TM... but again, it gets pricey...
FIRST USE: 19910820. FIRST USE IN COMMERCE: 20060331.
I'd like to know how it was being used 15 years earlier in 1991. Did he give a class presentation in 3rd grade called "PC 101"?..
With this economy with all due respect Idk who would go spend 50k unless they had that much money. Yet they still risk the chance of losing and having damages against them. It is possible and all but if that were the case and they had that much money. Why not just make a nice offer for the name? That would solve everything without any arguing or going to court etc.
Lyte even if he were to make a good offer. It's up to you to sell it and you don't have too. You have as much right to use it as anyone because again I know a lot of sites use the term pc101 and it has been said here.
Also I'm sure his just trying to get back at you for not selling him the name...
You said C&D, but not what from. Did they ask you to cease and desist from ALL use or a specific use. A C&D also isn't necessarily a demand for the domain, it's a demand to C&D from using it in an infringing way.
It is possible they had a business with that name prior to filing or prior to this interaction. However, being a computer company, they certainly would have waited a long time to on the Internet. I would ask they to provide support for their claim before doing anything. Make them do some work.
In a UDRP or WIPO filing, they do have to prove you registered AND used the domain in bad faith. Your having it before they had any public filing is in your favor since THEY need to prove you should have had knowledge of their TM if it actually existed. If they had no public filing and no domain using the name, it would be hard for you to have know and registered in bad faith. If they end up filing, I would certainly respond with a reverse domain name hijacking claim, even if it is nothing more than a scarlet letter on their reputation.
If they bypass the UDRP process and go directly to court, it costs them a lot more, but the burden of proof is less black and white as far as the "registered and used" wording.
I think this case greatly favors you, but every once in a while someone does succeed at RDNH so ignoring it may not be the best option. Sometimes the best defense is a good offense.
Best of luck...
Well, I had the benefit of talking to an attorney yesterday who specializes in trademarks/intellectual property stuff. Nice guy... if anyone wants his name IM me. He said I could go ahead and respond with these points...
1. PC101 was first in use by me prior to Mr. S registering PC101.us or filing for the trademark.
2. Mr. S knew the name "PC101" was already in use prior to registering PC101.us or filing for the trademark. He stated to me on the phone that he had "seen that someone had the .com" which is why he had to buy the .US.
3. Mr. S knew the name "PC101" was already in use when he went to purchase a domain name for his store. "PC101.com" and "PC101.net" were already taken. Therefore, he was left with PC101.us because obviously the most commonly recognized versions were already taken.
4. Mr. S applied for the trademark (August 2006) five months after he had purchased the domain name (March 2006). Again, he knew the name PC101 was already in use prior to filing for the trademark.
5. Mr. S is conducting business in the state of Georgia, not Texas.
6. My rights to PC101 as a brand are protected by "common law rights" and the "Dawn Donut Rule.".
He said he saw in the records that Mr S. did the TM filing himself in 2006 and didn't engage an attorney until July 2007. He said there's sort of a "due diligence" rule/step that anyone asking for a TM is require to perform prior to applying for the TM. They have to do a search to see if anyone is using that ...name...symbol... whatever... already! He says there's actually an affidavit (of sorts) where the person must affirm they honestly know of NO ONE ELSE using that name...
Sign... whatever. There is NO WAY this guy didn't know PC101 was already in use! Heck, it was in use before I got it!.
For those who may ever find themselves in a similar situation here's the Trademark FAQ page. Here's the part that makes me most happy... What are common law rights?.
Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration. However, there are many benefits of federal trademark registration. What is a common law search? How can I do one? Is doing a common law search necessary?.
A common law search involves searching records other than the federal register and pending application records. It may involve checking phone directories, yellow pages, industrial directories, state trademark registers, among others, in an effort to determine if a particular mark is used by others when they have not filed for a federal trademark registration. A common law search is not necessary but some find it beneficial. Telephone numbers for search firms that perform these searches for a fee can be found in the yellow pages of local phone directories and through an Internet search.
Anyway, I'm feeling much better about the whole thing after talking to this attorney! I think I'll be okay. I will keep ya'll posted!.
P.S. "You said C&D, but not what from. Did they ask you to cease and desist from ALL use or a specific use.".
The C&D said I was to stop using "PC101" for anything...
Do you still have the offer email he sent you?..
Hmm... who ya talking to?? Hi Master D,.
Welcome to the PC101 club!.
Trust me, it is not going to harm your business, or site's reputation or originality. You have no trouble from this person...
I would have thought there was no way you could loose the domain as you had control of it before the trademark.
Kinda like the person who had the domain adsence.com before adsence was born, google didnt hassle as they had no right to it...