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Comment by awolf | Hacker News Reader

Does anyone have any experience attempting to claim a domain through arbitration?

I've been selling TapTyping on the App Store since the iPad came out almost 2 years ago but have been unable to negotiate with the individual who currently owns TapTyping.com. It was only recently that I applied for a trademark on "TapTyping" so it might still be a year before it is awarded.

The current owner has yet to do anything with the domain. It is just Godaddy parked. I've made the argument to him that at this point anything he did with the domain that was typing related would probably infringe on our future trademark but he simply replies that he "is not ready to sell the domain at this time".

I assume I am S.O.L. until my trademark goes through, but even once the trademark clears is this an open and shut low risk case as far as arbitration is concerned? Is it likely to be costly to claim domains in this fashion?

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I don't know much about copyright but infringing on something that is not yet in existence and being punished for it in retrospect seems just plain wrong to me. Is that even possible?

What should hinder him from getting the trademark himself? He apparently had the domain long before you had the intention to trademark something so he it would seem legitimate to award it to him.

"What should hinder him from getting the trademark himself"

You mean "a" trademark.

Nothing. That can be done and it's a good defensive strategy actually.

To get and defend a trademark you need to actually use the mark in commerce. Trademark exists for a specific purpose -- to avoid confusion as to the source of a product or service -- not just to sell off words and images for registration fees.

That makes perfect sense. Does having a domain with a list of links to related pages and ads constitute 'using a mark in commerce'?

Depends on the panelists and the actual page. There are udrp cases where a page of links and a search box has shown use so the claim is denied. But I've also seen cases where this hasn't happened.

"To get and defend a trademark you need to actually use the mark in commerce"

Actually there is 1b "intent to use" as well as supplemental register and state trademark registration. In varying degrees any of the above (combined with the right specific non-infringing circumstances) can be used to win a UDRP action.

As only one example even having just applied for a trademark before being approached by a trademark owner is enough to give you a leg to stand on with many panelists. At that point, if the application is 1b, you don't even have usage. Although you might because maybe you just didn't have your backup materials and decided to put the application in and change at a later date.

Now of course all of the above depends on 1) the domain name 2) the other party 3) how famous the mark is among other things.

Just out of curiosity, if that person owned TapTyping.com before you started your business, is it really possible to create a trademark after the fact that would rule out him using the domain for anything typing relate?

Looking at it from the point of view of the domain owner, if I'm developing a website/product with a long development cycle, should I be trying to trademark the name as soon as I get the domain name to avoid someone swooping in after I buy the domain but before my site goes live?

Think about it from the view of the consumer, who trademarks and the UDRP are meant to protect.

Let's say you registered Xbox.com 15 years ago and only now launch a gaming device there. Should you be allowed to profit from this name Microsoft spent the last decade associating with their product on the open market? Is there a likelihood of people assuming a relationship to Microsoft when they visit this site?

Yes, irrelevant of when you started working, it would be in the best interest of consumers to let Microsoft have that domain. You have to think of domains as something like a brand mark, not a single piece of personal property you own. If you disagree with this process you essentially disagree with the principle of trademark protection.

Of course, if you registered Xbox.com 15 years ago and today launched a cardboard packaging company there, you'd have no problem and the panel would not give that domain to Microsoft. Nissan Motors lost its dispute for Nissan.com because the site is a computer company, not an auto company.

That's bullshit. That would mean every domain name out there could be taken by somebody with a trademark application, a pen, and the application fee. Sorry, but just owning a trademark shouldn't be enough to grab a domain, particularly if the domain existed prior to the issuing of the trademark.

There's no need to play the "would mean" game -- this is the system that already exists today. I described the rationale behind the current trademark and UDRP system... a system that has been in place since 1999. Is it "bullshit"? Do you see domains getting stolen left and right?

Anyone with a trademark, a pen, and an application fee can take anyone else's domain -- IF the actual use of that domain is creating a likelihood of confusion with the mark as to the source, sponsorship, affiliate or endorsement of the website.

i registered my company's domain name in 1999 as a .net (because we were a networking company) and a squatter has been sitting on the .com since 2001. i eventually applied for and got a registered trademark on the company name.

since the squatted domain just showed a page full of ads, the whois information pointed to a holding company with a PO box in the cayman islands (how shady can you get), and they never responded to any inquiries about buying the domain, i tried to take it through UDRP.

i was betting on the squatters not responding (which would be a default judgement in my favor) and since i had a trademark on the name, i had the .net for longer than they had the .com, and the ads they were serving were somewhat related to my business (one of the 3 things you have to prove in your argument - that they were trying to be deceitful), i paid the UDRP fee ($1300) and just processed the paperwork myself.

surprisingly, the holding company responded to the dispute with lawyers, who wrote up a whole response claiming i was doing a "reverse hijacking" because i applied for the trademark after they registered the domain. maybe my arguments weren't solid enough and i should have paid a UDRP lawyer to handle it. i lost the case and didn't get the domain. not surprisingly, all of my documents that i mailed to their PO box were returned months later - their whois information was bogus.

shortly after that, they stopped serving ads on the domain, and now it just redirects to another domain. i can only hope that any money they've made on the ads from the domain was more than spent on the lawyers to respond to the case. though now i'm sure i'll never get the domain from them without paying tens of thousands of dollars.

"holding company with a PO box in the cayman islands (how shady can you get)"

Not shady at all.

"surprisingly, the holding company responded to the dispute with lawyers"

They responded because they own many names. And they can't afford to have a loss which could be held against them. Superblock.com is a decent domain so that's a reason right there to defend.

You could have checked history also by looking at whether they had defended other UDRP filings to determine your strategy.

Here is one case they one and one they lost. They selected the same panelist (you can choose panelists) that ruled for them in the previous case. In this case the opposite happened! (I would have never chosen the same panelist btw.)

http://www.udrpsearch.com/naf/849009

http://www.udrpsearch.com/naf/267475

"they never responded to any inquiries about buying the domain"

Did you write to them as "superblock.net" or from another address? Common mistake to write as someone who has rights to the name. That will completely spook them because the way this thing goes it can be used against you.

my emails were always from another address, if only because i didn't want them to know what i'd be using the domain for and possibly raise the asking price.

That's good.

But another reason a domain owner won't respond is because they don't think a particular buyer is legitimate enough to offer a price that they will sell for. So they start with a little friction and see what happens. Additionally if you were a big fish buyer, you would also follow a certain pattern if initially rebuffed. All this depends on the domain and the situation of course. If a large company wants your name they could start out any number of ways. But eventually they will throw a decent offer on the table to let you know they are serious. Obviously everything is for sale at the right price.

I hate squatters just like the next guy, but target taking over target.org is just wrong.

They are purely a commercial institution. Stay in .com and be quiet.

I would like to point out that just because a website isn't being run doesn't mean the guy isn't doing anything with the domain.

I have to say that I think you come across as pretty arrogant.

Seems like an irrelevant comment. He's not doing anything publicly with the domain and never has.

And: If he were now to start doing something with the domain related to either tapping (as in on touch screens) or typing he could reasonably be said to be creating confusion for my customers. So what part of my comment seemed arrogant? Or do you just not like the cut of my jib?

I don't think you have any right to the domain, regardless of trademark. I think it is arrogant to try to take it.

There are two sides of this: the law, and what is fair. The law is what matters for practical purposes but you are objecting on the basis of fairness. I can dig that, but I disagree.

Looking at this from the perspective of what I personally feel is fair:

My product is TapTyping. My product has been the only product on the market called TapTyping for two years.

It seems likely that any new product that came on the market named TapTyping would be in some way similar to my existing product.*

If new product also called TapTyping came along that was in some way similar to my existing product, this product would benefit from the name recognition and mind share my existing product at my existing product's expense. That would not be fair.

And finally: Domain names are a mechanism to apply a label to a resource in such a way that the when a person uses that label to access a particular resource, that person gets the resource that they were expecting. At least that's the ideal, right?

So the way I see it, no other resource on the internet is currently being accessed with the label TapTyping and all new resources that potentially could appear on the internet using this label would infringe on my existing product.

So yes: I feel entitled to the domain.

I'd love to try to see it from your perspective. How do you see it?

* Sure: someone could come out with TapTyping lawn care and in this case I wouldn't object. But in the case of this particular name it doesn't seem likely.

"domain through arbitration"

No such thing as "arbitration". There is filing a UDRP though. Or a cybersquatting lawsuit (non-starter just mentioning).

"selling TapTyping on the App Store since the iPad came out almost 2 years"

Because the domain was registered 6/2008, off the top without researching all the facts, you don't have a case from my experience. And filing will cost you (through http://www.adrforum.com) $1300 for 1 panelist and $2600 for 3 panelists. You can do this yourself but I wouldn't recommend going that route. There are other forums but last I checked adrforum.com is the most pro complainant as well as the least expensive (check, that may have changed but you won't find it for $9.95 or anything..). So if you need a lawyer to handle you need someone who specializes in this (you can write to me for suggestions). The cost for that is going to be in addition. That's if they take the case at all. The best ones might not take the case if they don't feel they will win because it will hurt their win rate.

"The current owner has yet to do anything with the domain. It is just Godaddy parked."

Of course as you know that doesn't mean anything. No requirement to use a domain name.

"he simply replies that he "is not ready to sell the domain at this time""

Could be true, or could be a standard reply to get you to offer up some money and obviously (to me that is) not jeopardize any future proceeding. Saying you will sell can be used against you.

"but even once the trademark clears is this an open and shut low risk case"

Not at all.

The advantage of filing is that the other person has to defend. That means they have to spend money and time. If the name isn't important they might just ignore the filing. In some cases when the filing is ignored the complainant gets the name by default. But not in every case. Sometimes the panelist(s) don't do that. Or they might reply, not use a lawyer, make a mistake and you might get the name.

My research indicates this is the guy that owns it (there are many Jeff Merediths but I believe this is the one based on the mit.edu and his linkedin)

http://www.linkedin.com/pub/jeffrey-meredith/19/b35/b2

How much money is the domain worth to you at this point? What you are willing to spend determines strategy.

Thanks for the response Larry. Since all I'm willing to spend is in the ballpark of the UDRP filing, my major take-away is is that coming to an agreement without the use of legal tactics is optimal for both parties.

I was surprised to hear you say I have no case though. I thought that owner of a domain needed to be able to show intent to make use of it. Otherwise, it could be argued that they are squatting the domain and holding it in bad faith. Is this not the case?

Well it's pretty easy actually to show that you are using the domain but you don't have to always even do this. You just have to not be infringing on someone else in the majority of cases or at least have a leg to stand on.

I know of a specific case where none other than American Express wanted a particular domain and wrote the scary lawyer letter. They received a letter back saying the domain was used for email. They never filed anything or took any further action. They went away. (And they had a trademark on the domain and I would say the name was valuable to them). A few years went by and the domain was then sold and the email transitioned.

I know of another case involving the NBA as well. In that case the domain pointed to a site but it had nothing to do with basketball. And many others involving less prominent trademark owners.

There is plenty of nuance in this business. It's hard to summarize everything or make generalizations. Every situation and strategy is different. In ways it's like the difference between reading about medicine on the Internet and seeing an actual doctor. Certain combination's of circumstances change strategy and management. No way to understand and read about it. It comes from experience and actual practice.

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