Company claims rights to domain because prior owner has not used it.
After Domain Name Wire posted a story about the Fired.com UDRP case and contacted World2Work Corporation, the complainant, World2Work and its attorney released a statement about the case.
The company claims that it should have rights to the domain name based on its 2004 trademark filing and the fact that the current owner of the domain hasn’t used it since it was registered in 1999:
“When we examined the available domain names for our video streams, we quickly realized that the registrant of the domain “FIRED.COM” had done nothing more than sit on that name in the eight or nine years since registering it,” notes World2Work’s president, Scott Sargis. “ICANN adopted its domain name dispute procedures specifically to eliminate this form of cybersquatting and domain name warehousing (sic). Unlike the registrant, we’ve devoted substantial resources to building a line of our business under our “FIRED” brand name. The Trademark Office obviously agreed and granted our application to register that trademark and service mark. We’re now expanding our business and we believe that our registered trademark and the substantive secondary meaning attached to that mark give us superior rights to the domain name. Moreover, we should not be forced to pay the inflated fees that domain name profiteers routinely charge for warehoused domains which they have never bothered to use or develop”.
The statement seems to confuse trademark law with domain registration rights. It continues:
World2Work’s intellectual property counsel, John Franczyk, notes that under traditional trademark law principles, the owner of a trademark who has failed to use the trademark in commerce for an extended period of time is deemed to have abandoned its rights in that mark. The registration procedures under the United States Trademark Act provide an initial ten-year term for new registrations. New registrations, however, are deemed to be abandoned if the registrant fails to submit a “Section 8 & 15 Affidavit”, which attests to the registrant’s continued use of the trademark, before the sixth anniversary of the registration. World2Work accordingly notes that use of a mark is an absolute good faith requirement to maintain a trademark registration, and that a domain name registrant’s failure to use a domain in any genuine capacity fails to satisfy that requirement.
This seems to confuse trademarks and domain names. You do not have to have a trademark in order to have a domain name.
By Sargis and Francyzk’s logic, couldn’t anyone file a trademark on a generic term, start using it, and then claim its rights trump a prior domain registrant’s rights?
World2Work currently uses Fired.tv as its domain name. Does it merely want to acquire Fired.com without paying fair market value? Would this case qualify as reverse domain name hijacking?
Odds of World2Work prevailing? I’d guess 1000:1, unless the respondent completely botches the response. Nevertheless, the filing is forcing the legitimate domain owner to pony up time and perhaps cash to file a response.
Stuart says
Nothing surprises me anymore. Expect more of the same in the coming years. In-cred-a-bull! Basically, we dont want to pay fair market value so this is a cheap way to take a shot at the domain.
Enrico S. says
I agree that this one is a long shot. I certainly do not expect to see a transfer order here based on the above facts. parking your domain and serving up ad links is risky. Holding domains as an investment with no site development can also be a risk factor as well. Development of web sites in a non-infringing way (not career coaching as fired.tv has trademark rights there) is still the best way to protect your domain investment.
Frank says
Solution is rather simple.
Hire a high powered lawfirm. Bypass the b.s. known as ICANN, Sue the SOB’s for attorneys fees and damages for wasted time in a friendly jurisdiction.
Steve M says
While I haven’t examined all the many documents involved, a cursory look at their “Fired” TM shows that obtaining it required an exceedingly long and tortuous battle with the PTO.
In the unlikely event the panel mistakenly orders a transfer to World2Work (who’s above arguments as Andrew says are without legal foundation), the current registrant should include in their court effort a demand that the TM be canceled.
Andrew says
Steve, good point. Perhaps a domain lawyer can hop in on this, but I believe trademarks have been canceled after a UDRP lit the fire under someone.
Another note: when filing or responding to a UDRP, always use a lawyer that specializes in domain name law.
Andrew says
Frank, that works if you have the $$ to spend. LH.com is going to cost Lufthansa much more than the few grand it cost to file the UDRP.
Ken says
“…Sue the SOB’s for attorneys fees and damages for wasted time…”
In business v. business state or Federal court, attorneys fees and damages are not guaranteed if you win. You need to show a willful malicious intent by the other party to to deceive or abuse the system. In reality, that is a high hurdle to clear; especially if the other party can show a legal precedent for their argument. That goes a long way towards a good faith claim.
In this case the plaintiff has their own high hurdles to overcome. This is why they are going the route of UDRP first, it’s less costly to them than Federal court which would cost 50-100k at a minimum with no guarantees.
Ken says
“…I believe trademarks have been canceled after a UDRP lit the fire under someone.”
UDRP cases are not referenced when making a claim against a Federal trademark; unless the UDRP case itself made references to Federal cases in their decision. Still, a Federal lawsuit would need to be brought against the trademark owner in order to cancel the mark. Only a Federal judge has the power to cancel a mark once it has been granted.
Here, the best opportunity and least expensive route would have been to file a letter of protest when the mark “Fired” was original published for opposition. Once a mark is granted it’s much more difficult to get a trademark canceled.
Enrico S. says
Frank is right. Monitoring trademark flings and getting oppositions in place during the 30 day objection period is the easiest way to kill a trademark.
These guys are a page rank 3. It is hard to imagine they have much traffic.
Kurt has had the domain since at least 2001. Complainant’s first use in commerce is 2004, well after Kurt purchased the domain. He should win on this basis alone and obtain a reverse hijacking decision.
Ken says
When looking at the “Fired” trademark (reg. number 3269038), it appears that the registrant had some of their own issues early in the application. The examining attorney felt that there was confusion with Donald Trump’s well known usage of the term. The registrant was able to cure this in later submissions towards the application.
It’s obvious that World2Work is overreaching, but they believe they are making a good faith claim. Yet, there are two major flaws in their argument. First, simply registering a domain and not using it is NOT a valid argument towards bad faith; this has been shown in previous UDRP decisions. Second is the fact that Fired.com was registered long before the plaintiff’s claimed usage of “Fired”.
What’s interesting here is that Trump would have the best claim against Fired.com. Archive.org has saved screen shots of the original parking page from 2007 that shows competing ads for Trumps Apprentice show. This, in itself, could be used as a claim of confusion with the “You’re Fired” marks from the show which are owned by JMBP, Inc..
Andrew says
Thanks Ken and Enrico for your input.