Just been served a UDRP by Warner Bros, need help!

[keano]

The money in this matter of WB makes no difference, they can't have it becuase their marketing team is out of touch and use Mark Monitor to manage their IP, major mistake!

Whenever I dealt with Margie Milam over the years I always found her to be excellent and likewise Mark Monitor for IP protection. If I was a brand in the States I'd strongly consider using them.

I pretty much disagree with everything you've said, so I think we'll have to agree to disagree on this one.

 

[grantw]

They have no rights in the name 'Hangover' it's not a trademark, they haven't registered it as one in use with a film etc

He hasn't registered hangover.com though has he, he's registered thehangover3.com. You don't need to have a registered TM to have rights in a name and as it's the title of a forthcoming film in a series of films I doubt WB will have any problem whatsoever showing they have rights in it.

It's current use may go in the registrants favour but as keano says, if he wins he's got a domain he can't really use and will have wasted a load of time and effort defending it.

Welcome to the forum by the way. Calling establised members idiots on your 2nd post is a great way of introducing yourself

Grant

 

[Pred]

They have no rights in the name 'Hangover' it's not a trademark, they haven't registered it as one in use with a film etc, they're barking mad if they think they can just take it off you. I wouldn't worry about any legal costs, as they wouldn't stand a chance in court if the UDRP fails. I've also seen some pretty high profile disputes and I can assure you, if UDRP fails, the court can't do much. The money in this matter of WB makes no difference, they can't have it becuase their marketing team is out of touch and use Mark Monitor to manage their IP, major mistake!

I'd fight this as all above, money doesn't mean they can take what they want. First Come First Servered, 4.1 won't matter as you didn't reg in bad faith!

seriously BAD advice
not sure who you are and why you would come onto a forum and make only 3 posts in this thread
but I'm all for defending generic domains, however this is clearly a tm infringement and registrant would stand no chance of defending

plus if the complainant feels like it they could sue also. THEN you're in trouble as they claim damages and loss of earnings

we are trying to HELP original poster. not sure what you're up to to be honest

 

[aZooZa]

+1 pred. Daft comments. OP should ignore AXMatt.

 

[philipp]

seriously BAD advice

Entirely agreed. Don't do it spobin! Or be prepared for a heavy spanking

P.

 

[prkeating]

Udrp

"However, if the film was actually announced I genuinely intended to create a blog about the film and get some organic traffic going rather than just going straight for a sale."

This coupled with the "for sale" sign is enough to guaranty a loss.

Fan sites are OK but if there is ANY revenue being generated, you will lose. The only time a "for sale" sign will not hurt you is if the domain is generic/descriptive. If it is a typo or the trademark is well known, you are dead.

Defending this is IMO a waste of your time.

Here is what you can do.

1. Nothing. In this case, the UDRP will proceed. You do not need to file anything or pay anything. You will lose by default. The problem with this approach is that you are beginning a "history" of losses and if the history of losses gets too long (UDRP does not have the 3-strikes presumption of a DRS), it will be held against you. More importantly, however, defaults are the single worst thing for everyone in the industry as those are the cases that generate the worst rulings that then become "policy" within the UDRP system. So please do not go this route.

2. Contact the attorney and turn over the domain. Email is fine. They will not bite your head off.

a. You don't need to make any admissions and should not do so. Don't try to explain why you registered the domain - it will go in 1 ear and out the other with them, particularly if you had any PPC on the page.

b. IF it is at WIPO remind them they can get most of their filing fee back if the panel has not been appointed. If it is at NAF, there is no such benefit so this is not an incentive for NAF cases.

c. The domain transfer should be by push. The main benefit of this is that it is immediate and you don't have to track emails or obtain auth. codes. The complainant will have to notify the ADR provider (NAF or WIPO) that the matter should be STAYED. You do not have to sign anything. The ADR provider will issue an order. Once the Stay is in place the registrar will permit a transfer to the complainant. Have the attorney create an account at Tucows and email you the username. You can email Tucows and provide them with a copy of the NAF/WIPO order and ask that they push the domain to the user account. Be sure to cc the complainant's attorney on the email to Tucows. Once the do main is transferred the attorney should notify the ADR provider that the case should be dismissed. However, if they don't do this it will be dismissed automatically (without prejudice) within 45 days and this will be stated in the Order issued by the ADR provider.

I have been in the domain business (as an attorney and domainer) for a long time. For clients, we have a fairly automated program for these types of loser UDRPs. We send a standard multi-page letter and include 1 page "Transfer Letter" that includes the above (expressed as an agreement) and a waiver by which the complainant waives any claims they may have. Almost ever complainant agrees and signs. If you email me at [email protected] I will send you a template that you can use yourself.

Good luck

Paul

 

[prkeating]

poor advice II

"They have no rights in the name 'Hangover' it's not a trademark, they haven't registered it as one in use with a film etc, they're barking mad if they think they can just take it off you. I wouldn't worry about any legal costs, as they wouldn't stand a chance in court if the UDRP fails. I've also seen some pretty high profile disputes and I can assure you, if UDRP fails, the court can't do much. The money in this matter of WB makes no difference, they can't have it becuase their marketing team is out of touch and use Mark Monitor to manage their IP, major mistake!

I'd fight this as all above, money doesn't mean they can take what they want. First Come First Servered, 4.1 won't matter as you didn't reg in bad faith!"
==================

Sorry to be blunt and I know I am new to this forum but the above is the WORST advice I have seen in a long time. The UDRP does not require a registered trademark and a common law mark is easily established (they have a movie remember with lots of t-shirts, etc on the way). I can see no reason to use the domain if not in connection with the movie and the registrant admitted that was his intention. As to the views of US courts towards the UDRP, they completely disregard the UDRP and proceed under the US/State laws (the ACPA, the Lanham Act (Trademark infringement) and various state laws). The ACPA alone has a max damage claim of $100,000 per domain).

If litigation were filed, the first thing the complainant would do is obtain a restraining order (TRO). These are granted ex parte (no notice to the defendant) and last up to 14 days. They would follow up with a motion for preliminary injunction which would effectively bar you from using the domain (or any domain confusingly similar to their asserted trademark). The court would grant both. Further, the registrar (Tucows) would deliver control of the domain to the court automatically once they were notified of the complaint. They would do this because by doing so they benefit from immunity under the ACPA.

If you defended the case, you would be up to your ears in discovery and be required to disclose virtually all of your domaining activities, etc. I hope you don't have any privacy concerns.

Even if you won the case all you would have is the domain and a very large legal fees bill (losers do not pay in the US as a general rule unless it is authorized by law or contract - neither of which applies in favor of the registrant here).

Paul

 

[Edwin]

Some fantastic advice there, Paul.

If ANYONE has ANY doubts left whatsoever, Google "Paul Keating" and take a look at just how respected he is within the domain industry. He's a conference regular on legal issues, along with John Berryhill, and he REALLY knows his stuff.

 

[prkeating]

thanks

Thanks Edwin. That was nice to read after a long day

FYI, I have just relocated to London for the coming year for family reasons as my wife is taking a masters degree here. The firm is still up and running in Barcelona with the old staff and I travel there every week or so (more as winter approaches!). I am looking for an office to share if anyone knows of anything in the Chelsea/Victoria area.

I should have joined this forum long ago and have no idea why I didn't. Having taken a look at the posts, I find it one of the most active in the industry.

Regards,
Paul

"There are always 3 sides to any argument, yours, mine and the correct one."

 

[Pred]

Yep, agree with all that paul
except sign the forms

maybe you had the lawyer head on too much rather than domainer, although you're both

those forms often have something along lines of you promise never to even be involved in same industry or products etc
that could come back and bite should you ever in future years want to become involved ina particular industry

it's enough to send a simple 'without prejudice' email keeping as basic as anything and just ask where they want pushing to
thats it
never hurts to ask for an 'admin fee'. they can only say no, in which case push it, just take a few days longer at your leisure, but push all the same

better still, never reg soppy domains like this in the first place

 

[prkeating]

Yep, agree with all that paul
except sign the forms

maybe you had the lawyer head on too much rather than domainer, although you're both

those forms often have something along lines of you promise never to even be involved in same industry or products etc
that could come back and bite should you ever in future years want to become involved ina particular industry

it's enough to send a simple 'without prejudice' email keeping as basic as anything and just ask where they want pushing to
thats it
never hurts to ask for an 'admin fee'. they can only say no, in which case push it, just take a few days longer at your leisure, but push all the same

better still, never reg soppy domains like this in the first place

Pred,

No worries. My form contains only a 1-way waiver in favor of my client, an agreement to push the domain and a confidentiality sentence. Nothing more.

As to without prejudice letters, fine but it does not ensure that they don't still come after you.