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Q: Domain name dispute ( Answered 4 out of 5 stars,   6 Comments )
Subject: Domain name dispute
Category: Relationships and Society
Asked by: sglemmestad-ga
List Price: $7.00
Posted: 21 Oct 2003 08:34 PDT
Expires: 20 Nov 2003 07:34 PST
Question ID: 268274
I bought the domain name

Now a representative for the company is USA Consumer’s Union

called me and said they had the Trademark for this name.  I havent
used the domain name for anything. I have just registred it.  And now
they say that they want it and I have to transfer it to them at my own

My question is:  who has the right to own the domainname.  Can I keep
it and they cant do anything? Do they have any legal right on my
domainname. Because they dont automaticaaly get the right for .com
domains when they have the trademark do they?

What will happend if I refus to transfer unless they buy it from me?

Thanks alot for any help
Subject: Re: Domain name dispute
Answered By: missy-ga on 21 Oct 2003 15:07 PDT
Rated:4 out of 5 stars
Hi there,

I really, really hate being the bearer of bad tidings, sir...

It would be in your best interests to transfer the domain name in
question to Consumers Union of U.S., Inc. (the company which has been
publishing Consumer Reports since 1958), before they turn nasty and
either file a lawsuit, submit the dispute to ICANN for resolution, or
both.  If the dispute goes to arbitration before ICANN, both sides
will be required to pay $1500, and each side may incur additional
costs in the course of pursuing the matter - in this manner, the
company can legally *take* the name away from you, *and* you will
incur significant costs in the process.

According to the U.S. Patent and Trademark Office, Consumers Union of
U.S., Inc. registered the Trademark "Consumer Reports Online" on
October 12th, 1999.  The Trademark was first used on November 17th,
1997.  (To view the record, go to
[ ], select Search in the Trademarks section,
and use the Boolean Search with [ "Consumer Reports" ].  The record
will be about midway down the page.)

Under ICANN's Uniform Domain Name Dispute Policy, Consumers Union of
U.S., Inc. can make the case that the domain name you have registered
is identical or confusingly similar to their Registered Trademark, and
that you do not have legitimate right to the domain name in question.

Since you have not used the domain name at all, in spite of having
registered it more than a year ago, on September 24th, 2002:

[ ]

...they might also be able to make a solid case for "registration in
bad faith":

"a. Applicable Disputes. You are required to submit to a mandatory
administrative proceeding in the event that a third party (a
"complainant") asserts to the applicable Provider, in compliance with
the Rules of Procedure, that

    (i) your domain name is identical or confusingly similar to a
trademark or service mark in which the complainant has rights; and

    (ii) you have no rights or legitimate interests in respect of the
domain name; and

    (iii) your domain name has been registered and is being used in
bad faith.

In the administrative proceeding, the complainant must prove that each
of these three elements are present."

4. Mandatory Administrative Proceeding (a. Applicable Disputes)

If you can demonstrate that you have legitimate interests in the name,
you might stand a chance of keeping the name (should you be willing to
expend the financial resources necessary to counter Consumers Union of
U.S., Inc.'s claim:

"Any of the following circumstances, in particular but without
limitation, if found by the Panel to be proved based on its evaluation
of all evidence presented, shall demonstrate your rights or legitimate
interests to the domain name for purposes of Paragraph 4(a)(ii):

    (i) before any notice to you of the dispute, your use of, or
demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide
offering of goods or services; or

    (ii) you (as an individual, business, or other organization) have
been commonly known by the domain name, even if you have acquired no
trademark or service mark rights; or

    (iii) you are making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue."

4. Mandatory Administrative Proceeding (c. How to Demonstrate Your
Rights to and Legitimate Interests in the Domain Name in Responding to
a Complaint.)

...but the fact that you've not used the name at all in the year that
you've held it does not bode well.

Consumers Union of U.S., Inc. can also sue you under the Trademark
Cyberpiracy Prevention Act:

Trademark Cyberpiracy Prevention Act

I would not advise refusing to transfer unless they purchase the name
from you, as it would demonstrate a "bad faith" registration -
registering the domain name with the intent of profit in excess of
your documented out of pocket costs (registration and/or renewal fees
only).  You would be well advised to ask them to cover ONLY the cost
of the transfer, and nothing more.

I'm sorry the news is not more favorable to your claim on the name.


Search terms: [ "domain name dispute policy" ], [ cybersquatting law ]
sglemmestad-ga rated this answer:4 out of 5 stars

Subject: Re: Domain name dispute
From: kovanen-ga on 26 Oct 2003 04:01 PST
It is true that they can turn nasty and force you into a time
consuming arbitration and you would need to pay the arbitration fee.

But depending upon your intended use, you mat not be infringing their
trademark with your domain name. That is, you could win.

If, for example, your domain name were
used to provide consumer credit reports, or if you were to list
reports on consumers, such as voting habits, then you might be able to
argue that there is no infringement.

Infringement can only happen if there is a strong liklihood of
confusion. If you can demonstrate that the markets are different, the
products are different, the customers are different (or you have no
commercial intent) etc etc then there is less and less liklihood of
Subject: Re: Domain name dispute
From: sglemmestad-ga on 26 Oct 2003 23:01 PST
Thank you for this comment. 

I had no idea the it was registred a tradmark on this name
and I think I can prove that I had no bad faith in this
(because I really hadn't)

Thanks again for your answers. :-)

Subject: Re: Domain name dispute
From: chokra-ga on 25 Nov 2003 21:37 PST

I wouldn't worry.
Worst thing that could happen: They get tired of trying to scare you
and just go away. Best thing that could happen: They ask you how much
you want.

In the latter case, make sure you keep your backside covered. Because
there is a good chance they will try to use the evidence (emails,
phone calls etc) to show that you proactively asked them for the money
which would then imply that you purchased the domain in 'bad faith'.
Also get an attorney to handle the actual transaction on your behalf,
and add the attorney's fees to the price of the domain.

consumer-reports-online is such a generic sounding name that I doubt
any trademark authority in the US would grant a trademark on it. And
any court would believe you that you did not have any bad faith while
registering such a generic-sounding domain name.

I am just surprised that you should have given 4 stars for Missy's
answer. The woman is clueless.
Subject: Re: Domain name dispute
From: missy-ga on 26 Nov 2003 18:31 PST
Hello chokra,

The US Patent and Trademark Office, which is the Trademark authority
in the United States did, in fact, register a Trademark for "Consumer
Reports Online", which I noted in my answer above.  I'll reproduce it
for you here:

"According to the U.S. Patent and Trademark Office, Consumers Union of
U.S., Inc. registered the Trademark "Consumer Reports Online" on
October 12th, 1999.  The Trademark was first used on November 17th,
1997.  (To view the record, go to
[ ], select Search in the Trademarks section,
and use the Boolean Search with [ "Consumer Reports" ].  The record
will be about midway down the page.)"

The inclusion of dashes in the domain name does not make the name
sufficiently different from the federally registered Trademark to
declare it "safe".

If you have additional questions about Trademarks, or feel the USPTO
issued the Trademark in error, do contact them to explain your

U.S. Patent and Trademark Office
USPTO Contact Center (UCC)
Crystal Plaza 3, Room 2C02
P.O. Box 1450
Alexandria, VA   22313-1450

703-308-4357 (Put Trademarks in the subject line.)

I'm sure they'll be glad to explain the ins and outs of Trademark
registration for you.

Clueless regards,

-- Missy
Subject: Re: Domain name dispute
From: sglemmestad-ga on 27 Nov 2003 00:41 PST
I'm Learning more and more about this things. Thanks for alle the help.

They pushed me pretty hard for a while, and Yes they have trademark on
this name. But it doesnt give them the right to own the domain name.

They must prove 2 things.  1. that they have TM  (they have!)
                           2. They must prove my bad faith in this.'

and they cant do that because I have never used the domain name yet in
lack of time and I have never contacted anyone to sell it or make
money on it.

But the sad thing is I live in Norway and they pushed me with lots of
pre-made lawery stuff (wich I bet the have used in different TM cases
before since they have been around since 1942)

And even if I have the right for the domain they can make me come to
USA to meet in court. And even if I win I cant afford to come, and
that means if I dont show up. They automatically gets the rights for
the name.

SO i said in a email to them that I couldnt fight such a big company
and I was willing to transfer the domainname to them if they startet
the prosess on transferring. They said OK.

That was 1 month ago.  I haven't heard from them since. And I still
have my domainname registred in my name. !!
Subject: Re: Domain name dispute
From: ramblingdiatribe-ga on 04 Jun 2004 00:45 PDT
I have some experience in these matters at a personal level as I've
been involved in domain name dispute processes more than once in the

Firstly, there is no cost to you when someone files with ICANN -- they
pay approximately USD$10,000.00 for one or more domain names, and then
they get to pick two arbitrators (and you get to pick one).  I believe
each arbitrator has to be from a different country, but my memory is
foggy on this point.

Secondly, if someone wants to sue you for infringement of their
intellectual property (e.g., a Trademark, Registered Trademark,
Copyright, Patent, etc., violation), then there could be costs to you
depending on which country you're in (they generally have to come to
your country to sue you when it comes to gTLDs such as .com, .net,
.org, etc. -- note that all the two-letter ccTLDs are handled locally
by their respective countries and the local legal systems have
jurisdiction over them).  If you're both in the same country, then
there's definitely a possibility they can go through the courts
instead of ICANN, and if you're in the USA that could be bad news if
you have to hire a lawyer or pay any court fees (you might consider
settling for less if you are certain you're going to lose, but you
really should consult a lawyer about all of this first).

Thirdly, if you have to create an ICANN defence, definitely get a
lawyer.  In the cases I was involved in (I won't indicate how I was
involved), when defences made use of technicalities, the judgement was
always in the favour of the defence.  My conclusion from this was that
they arbitrators followed the "letter of the law" so-to-speak.  One
such technicality has to do with the date the Trademark was granted
vs. the date the domain name was registered -- if the domain was
registered first then they can't claim you had any malicious intent
unless they can prove you knew about their plans to apply for a
Trademark before you registered the domain name.  Arguing your past,
current, and intended use of the domain name can also be helpful if it
differs greatly from their cause.

With regards to terminology, here are a few more points of interest:

1. TM means Trademark, and is the step before the encircled letter "R"
(which means "Registered Trademark").

2. "Cybersquatting" is a heavily mis-used term.  In the old days
(approximately 10 years ago) when Network Solutions was the only
Registrar, one could register a domain name and not have to pay for 30
days.  If after 30 days no payment was collected, the domain name
would be terminated.  People who did this regularly with the same
domain name were, essentially, "cybersquatters" since a "squatter" is,
for example, someone who doesn't pay for property they're using
without permission.  In the case of someone who has paid for a domain
name, they can't be accused of "squatting" or, in this case,
"cybersquatting," even if the name really should belong to someone
else (it never did, so permission isn't actually required to register
it either).  The best term I can think of to describe someone who
intentionally purchases domain names that are similar to well-known
trade names (e.g., products, companies, famous people, trademarks,
etc.) for various reasons (usually to sell for a great profit) is
"domain baron."  In fact, there's a guy who does just this with his
web site:

Oh yeah, if they use the term "cybersquatting" in their ICANN
complaint, ask for a concise definition of "squatting," "cyber," and
"cybersquatting."  Depending on how they define this, you may be able
to get some of their arguments stricken from their complaint if it
looks like they're accusing you of stealing (which you're obviously
not if you paid for the registration).

Good luck, and be sure to consult a lawyer if they decide to go after
this in a formalized manner.

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