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GoDaddy user reviews : Good idea to invest in GoDaddy?? screamingpcs TM has got me screaming

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Have just got a legal letter from the US (i'm in Oz) that a domain I have (screamingpc) is trademarked. Apparently screamingpcs (note the s) is trademarked. Never would have thought this name would have been trademarked. Bought it only because of the quirky name.

Apparently Mr Smith (the /img/avatar6.jpg of screamingpcs.com, screamingpcs.net and screamingpc.com) has advised his legal eagles that I am using the name in connection with a website that has previously offered a search and is being used as a search engine for internet service. Huh??? This name is parked at parked. Then says my continued registration (i've only registered it once) and continued use is an infringement of the trademark.

I have been instructed to take down (whatever that means) and transfer the name to Mr Clyde Smith.

Cease use of all marks that contain screamingpc.

Cease any internet links, websites.

Provide an accounting of revenue (which is easy, it's 0).

Provide a reply from the date of the letter (just got it yesterday so it's past the 15 day reply mark).

So, what do you think? Do I delete the name or transfer it to Mr Smith????.

I know what I would like to do with it!!!.

Your thoughts are appreciated...

Comments (41)

First do a search on US Trademark Database.. and make sure the words are listed and LIVE as a TM.. if it is a TM, just delete the domain and forget about the TM holder. I always say, DONT PARK your DOMAINS.....

Comment #1

I can't see any trademark on that word?.

Here try it http://usasearch.gov/search?v%3aproj...%3aframe=form&.

Can you advise Mr Smith re trademark proofs of that keyword?..

Comment #2

If you search www.uspto.gov you'll find that he does have a TM on the term Screaming PCs...

Comment #3

Thanks for the headsup, I almost forgot that..

For the op: better drop it or submit to the tm holder..

Comment #4

...and issued after the date of registration of the domain name by more than a year...

Comment #5

I still can't see it, anyways so op wins..

Money wars continues....

Comment #6

What does that mean? That the trademark was applied for and granted a year after the domain was first registered by someone else? The trademark registration number is 3245359 so the legal doc tells me.

They are instucting me to transfer the name. Should I delete it instead? How do I delete a domain name registered thru godaddy?.

They must be spewing having the net and not the com. I wonder why they didn't bother registering it when it was available. Couldn't have wanted it very much!!! I wonder why trademark checks aren't the responsibilty of the seller.

Thanks for your help folks. I have been instructed to reply so any more info would be grateful. They are threatening me with the fullest extent of Australian law. They'd have to find me first and I presume it would take many years and cost many many thousands!!! I might see if squealingpcs is available...

Comment #7

If they registered the TM after a year of REG... I would then not park the domain.. I would direct it to a single blank page.

Advice the TM holder, that their actions are been recorded for bad faith as well. Its called reversal Highjacking... and state that legal action will be taken to cover the damages caused by their attitude... and also state, that they are more then welcome to make an offer... but do not discuss anything related to you wanting to sell the domain.

All the best!..

Comment #8

...with a US trademark registration.

Good luck with that...

Comment #9

Agree with the above. He needs to have an international trademark in order to do that. And, they are pretty expensive. Furthermore, if he applied for one right now, then it wouldn't help his case because you registered that domain prior to his trademark application...

Comment #10

If he goes WIPO route though isn't it likely he would lose Mr. Berryhill? I mean on face value of course as I haven't gone beyond this thread to investigate...

Comment #11

Dont not even think of transferring the name to him. If you he wants it, he has to buyt it off you and check his trademark to see if it is a international trademark, if it's not then he basically cannot do anything. Many owners like that ask you to transfer the name. You cannot be held for anything because you did nothing wrong and you no content on the website that violated the copyrights of him. The name can be sold to him but dont give it to him for free...never...

Comment #12

I have no opinion on that question, nor have I stated one...

Comment #13

General question using this "case", John. When, if ever, does the date of use.

In commerce (20051011 in this one) possibly make a difference, even though.

The domain name was registered before it's "namesake" application was given.

Its registration date? (sorry, just can't readily think of the right words...).

(Then again, this application also has a disclaimer...)..

Comment #14

There is no such thing. A WIPO is about as close as you can get for domains though. They have complete jurisdiction over the internet domain name system for most extensions. Short of being sued in court WIPO can take any domain away in a UDRP decision.

As for the "no comment" from Mr. Berryhill. I had a feeling that's how you would answer. But either way...it's going to be up to the OP to figure out how to handle this...

Comment #15

You're not going to like the answer, but on that general question, I have to go with the lawyer's answer and say "it depends", because there is no mechanical answer to the question where you drop in the various dates of filing, first use, registration and domain registration, and come out with a binary answer.

Part of the reason for that is that while, yes we are at a domain forum and that's why we care about trademarks, the trademark registration system wasn't built to specifically address domain name conflicts. Conversely, the domain name system isn't built to embody trademark law.

There are also some differences in the way that intent-to-use (1b) and use-based (1a) applications are treated under US law. Similarly, there are differences between Supplemental and Principal registrations, and registrations which are noted 2(f) (designated acquired distinctiveness in a descriptive term).

What I have said before, but not so much recently (having become a little tired of people demonstrating their inability to appreciate the point) is that when you are looking at a data record in the USPTO, you are looking at a collection of data which, as a whole, paints a larger picture than is captured in any single data item. They all matter. Whether any particular datum is critical in a particular factual context, is going to depend on the factual context.

The alleged date of first use in a US trademark registration under 1(a) is simply an allegation. It is not relied upon for any substantive purpose during examination, but is a required allegation to file on the basis of having used the mark sought to be registered. (Okay, I can think of one situation where it might matter, but it's not important for the purpose of this discussion).

Your question about dates in a USPTO are not as important as what the UDRP is essentially driving at - Why did this person register this domain name? If there are circumstances indicating that the domain name was registered with an intent to damage or exploit the goodwill embodied in someone else's mark, then I don't care what the dates are, and neither will a UDRP panel.

However, if there are reasons to conclude that the domain registrant had no actual notice, or duty of constructive notice, relative to the claimed mark; and the claimed mark is not so inherently distinctive that the domain registration couldn't have been registered for some other reason, then one can use that set of dates, and the underlying commercial activity of the TM claimant, to demonstrate whether it was more likely or less likely that the domain registrant would have had any idea there was a TM claimant at the time the domain name was registered.

Technicalities matter... when they matter. I had a feeling you had that feeling.

Let me add one single hypothetical fact to the situation, and then ask you whether he would "win or lose a UDRP dispute":.

Let's say there is absolutely no reason why an Australian would, or even should, know of a pending US trademark registration application. And, indeed, an Australian has no duty to know of such a thing. Let's also say that the TM claimant's website was a piece of crap at the time the domain name was registered, and the TM claimant was the 10,000th Google search result for "screaming PC".

Okay, so far, so good. NOW let's say that the wife of the TM claimant's president took a vacation in Australia and had a mad, passionate affair with the domain registrant and decided to leave her husband and stay in Australia. The TM claimant then flew to Australia, got into a nasty fistfight with the domain registrant, and they both suffered a few injuries and became permanent mutually-hated enemies of each other.

A week later, the domain name was registered.

Now, with that fact in mind, would you conclude the domain name was registered in good faith or not.

You can't always just focus on a set of dates in a trademark record, absent a world of other potential facts...

Comment #16

One of the best examples / hypothetical situations I've seen posted here on NP.

Since I have little knowledge about TM's and law side of domaining in general - in fact reading most of jberryhills post got me all confused, seems like a different language!! - so anyway, can't give much advice to the OP...

But I would recommend that you look into it a bit more. Personally I wouldn't give the domain up - but I would move it away from parking and leave it blank.

There might come a day when I have a similar situation with one of my domains and I really wouldn't know where to turn - this would be the first place I would come and I'm glad there are good knowledgeable people here who would offer some advice. Namepros is amazing!.

Anyway... as you were...

Comment #17

...and should that day ever come, I'll be happy to confuse the living shit out you...

Comment #18

You know what, that pretty much answers my question earlier. Just that I've.

Somewhat recalled discussions about this in another forum, but you're right it.

Depends on the context.

Amazing sometimes, no?..

Comment #19

Lol, thanks... I hope that day doesn't come, but I'm glad to know you're here and willing to "confuse the living shit out" of me..

Comment #20

Just wanted to say much thanks for all of your responses..it is 5.30am here in OZ so will read more closely when head clears and add more detail. The legal notice does say that Mr Smith has the ability through the Madrid Protocol to ensure his rights in the mark. I wonder why someone would go to such great expense through the legal system without first trying to obtain the name himself with a personal letter. Can't be worth that much, surely??..

Comment #21

For some, it's the principle.

I'm probably missing something, but the Madrid Protocol only applies to those.

Who agree to it. And New Zealand doesn't appear to be one of them...

Comment #22

We're in Australia..not sure if it applies here..and if it does not sure what it would mean!!!.

Ok, before I send an email suggesting they sit on the rough end of a pineapple I want to make sure this doesn't boomerang back, so I quote:-.

Trademark number 3,245,359 for the word mark 'Screaming PC"S' used in conjunction with computers in International Class 037.

The client owns other interests relating to common law trademark rights which grant the client protection in the literal scope of the trademark and use of the trademark in association with goods or services to prevent consumer confusion. Thus trademark rights in a mark used for computer services have a natural zone of expansion that includes inyternet services to prevent consumer confusion.

Further please note that because the mark is registered in the United States Mr Smith has the ability through the Madrid Protocol to ensure his rights in the mark SCREAMING PCS are wholly imposed to the fullest extent under Australian law.

It has come to our clients attention that you have registered and are using the domain www.screamingpc.com in connection with a web site that has previously offered a search engine for computers and computer services and is presently being used as a search engine for internet services. This appears to be a load of crap. The name has been at parked since I registered it.

We herby serve notice that that our client Mr Smith considers your registration and use of the domain www.scramingpc.com as used in connection with computers and Internet services an infringement of his rights for the registered trademark SCREAMINGPCS.

It is inevitable that consumers will be deceived into thinking that your services are in fact SCREAMING PCS services, or that SCREAMING PCs sponsors or is affiliated with your web site, all in contravention of trademark infringement, anticynersquatting, and unfair competition laws. Your continued registration and use of the domain is with authorization and is an infringement of the registered trademark. I don't have a website, or offer any services so I think they pulled this bit out of a hat!.

In order to prevent further confusion Mr Smith herby demands that I take down and transfer screamingpc.com to Mr Smith.

Cease and desist use of all marks that contain SCREAMINGPC.

Cease and desist use of all internet links, web sites and directs that includes marks confusing similar to the clients trademark.

Provide accounting details of all revenue received from the use of SCREAMINGPC. That will be easy, it's a big fat 0).

Mr Smith woyuld like to reach a quick amicable decision of this matter, however unless you comply with the demands within 15 days of this letter you'll be up shit creek and Mr Smith will take appropiate steps to protect the public (not sure what from) and enforce his rights including the initiation of domain name dispute resolution proceedings against you through the Arbitration and Mediation Centre of the World Intellectual Property Organization (whoever they are).

The trademark document attached shows that:-.

Transferred into a National Application: No.

Madrid Protocol Information.

(not available).

So, can I go and pick that pineapple ready for posting?..

Comment #23

You just made my day.

Anyways, As others have said... look up the TM and find out exactly what it is for. Remove from parking ASAP. Develop it if you can in a non-infringing way. They still have the option to file for UDRP/WIPO if they want... if you can show good faith in registering it, it will only help your case.

HE has to pay a lot of money to file UDRP... or he can just go the lawsuit way but not sure what good that would do since you are in Australia...

Or take the easy route and give it to them and move on.

[Not legal advice, and I haven't researched the tm or the domain history etc, so take it with a grain of salt ] Um... this definitely isn't from a lawyer. And, lawyers don't use terms like "you'll be up shit creek". At least no self respecting lawyer I've talked to/met. I've seen a typo or two, but those two are just funny imo.

Question: Did your parking display ads for pc's or internet services? As far as I can tell with a quick glance, that is your boundary for what you can use the name for legally. Rather, that is what you cannot use it for.

Edit 2: At a quick glance, it looks like it was a generic help forum before you registered it... That MAY be a safe bet for development. Also, your parking page is linking computers and hardware etc... IMO remove from parking and put a coming soon page up asap!..

Comment #24

I have lol... anyways I meant in a legal document.....

Comment #25

Mr Berryhill, you obviously know your extra "fact" is flawed.

The wife gets it all in the divorce and moves to Bermuda...

Comment #26

We now have a web page for www.screamingpc.com which will be upgraded later to advertise a genuine slot car business we have (the hire out of a mobile slot car track) for kids parties as shown in the pic. Screamingpc has now become screaming performance cars (slot cars do scream under speed).

So, whatdja reckon...has this put me in the clear?.

Once again many thanks to you all for your great advice which I will be acting on, including encouraging my wife to take everything and move to Bermuda...

Comment #27

In the clear? Not necessarily... they can still pursue it if they want, and the fact that it was parked won't help. The fact that you are showing intent to develop will severely limit their ability to make a valid claim imo. I think you made the right decision to begin development though to limit the potential damage...

Comment #28

But couldn't he claim (and have to prove) common law rights well before the official registration?.

Note: I see jberryhill already addressed this issue in response to Dave zan's posting in this thread (page 1).

Patrick.

Making changes after the fact usually doesn't help...but don't give up.

Patrick..

Comment #29

It really depends how long it was parked just how convinced a panelist would be of intended development...often people will just make a simple change and claim differing use, which is why it doesn't hold much water with some panelists... I think the op has shown significantly more intent to develop in a non-infringing way than many do when they change it.

And yeah, they could claim rights before registration, however they would more likely use the 'first in commerce' date of the TM. If they really wanted to grab the domain by filing for a TM, aka reverse hijack the domain, the first in commerce should have been pre domain registration. Then, a reasonable panelist would require proof that they had obtained common law rights before the domain was registered. Unfortunately not all panelists are reasonable...

Comment #30

I guess the big question is, will this cost me zillions (i'm flat broke) to try and hang on to it if they start proceedings to obtain it back...

Comment #31

I would hold onto it. I think you have a strong case on a personal as well as legal front. It was registered before his business was established. As it's been said "a business name is a name til registered".

Hold on, til he at least compensatese you for it (and dont squib out )..

Comment #32

...and it is usually interpreted as an admission that you were doing something wrong in the first place. Most often, it's a very bad idea...

Comment #33

Honestly, I would ignore it, ask for money, or proof of trademarking, and still won't give it up...

Comment #34

Erm... asking for money is like asking for a butt whooping... don't ask for anything unless you are ready to give it up...

Comment #35

It's a long throw to third ..... the runner sliiiiiides and...... safe!.

Q:.

Would the fact, that the name was available to register, render the argument disingenuous?.

Is there an onus for the TM holder to peruse and maintain the TM integrity?.

Nn..

Comment #36

Yep, up to the tm owner to watch over their own tm.....

Comment #37

My thinking was .....

With TM coming after the []com name reg and no back order on the []com.

It would seem there was not reasonable effort to secure the property in effort to maintain TM.

If the TM language excluded or omitted the use of the "[]com" then the exclusion would remove the []com from TM.

Just a brain freeze. I'll blame the oversight on the grand marnier.

Nn..

Comment #38

1. Ultimately the cost burden is on the plaintiff in your case.

2. The time of registration (domain) vs. filing of the TM becomes (as previously mentioned in the prior responses) is a detail..

- TM's are published for opposition. Even if you didn't know about it (sadly that's TM's for you), there was a chance to oppose his TM filing. You didn't so he got the TM..

- Going UDRP is costly. It takes time. It's frustating for the plantiff. The details will matter.

3. You are going to have to make a choice. People/companies who get TM's tend to treat them very seriously and will just keep putting money into 'protecting and enforcing' what-ever-brand they wish to create. I'm not saying it is right or wrong, it just is..

- You can keep changing the site and he will most likely keep coming..

- You can piss him off and 'sell it to yourself' and then private reg it. That would keep him going for years..

- You can ignore it. It may cause you stress and be like spam...you just know it is going to keep coming.

4. Want hope or just a laugh? http://www.nissan.com/.

Read up...

Comment #39

Hi, how does it go now? I'm new to domaining and am very careful in legal stuffs...

Comment #40

I see you continue to use the site as-is... any more word from the TM owner?..

Comment #41


This question was taken from a support group/message board and re-posted here so others can learn from it.

 

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