Classmates.com going after me for trademark. What to do?

they own the word classmats lol? WTF

 

As I have repeatedly stated, it's the usage of the domain that is likely to determine infringement. If you use the domain in a manner that conflicts with a TM holders usage, it is going to be infringement. The cost of defending a lawsuit against a registered mark can easily go over a half million dollars with appeals. You don't want to fight someone with deep pockets. Attorney fee's are rarely granted even if you were to win.

Don't tell the grocery chain that they can't trademark A&P - because they have. Not only was it granted, it has passed the period to contest the mark.

Many people don't understand the rights that a non-famous trademark holder has - it doesn't usually give them exclusive rights to use a term, only in a way that relates to their classification. No one is saying you can't have a domain with classmate or classmates in it - it just can't be used in a manner similar to the trademark holders granted usage. The VAST majority of people who register a domain with a TM in it are doing so in an attempt to ride the goodwill established by a TM holder. If you want to have website called "Dearclassmate" and sell pencils, it isn't going to infringe upon classmates.com usage - but that isn't usually why a domain like that was registered. 99% of the time, it's to establish a site that has something in common with the TM holders usage.

 

you really need to read the cases because you are wrong Target.org won Kiwi won and so have many others. Simply using the word constitutes nothing because he has interest in the domain.

He just needs to reply that he is not in violation of the UDRP, if they sue it goes to Arbitration hearings sponsored by ICANN which he will win as long as he follows the guidelines of prior court cases.

 

And you know this for a fact because? Even some domain attorneys I know do
not always guarantee one will win.

Consider this decision handled by one of the best ones around:

http://wipo.int/amc/en/domains/decisions/html/2008/d2008-0585.html

And then check this one:

http://wipo.int/amc/en/domains/decisions/html/2008/d2008-0387.html

Now why do you suppose he lost the 2nd one, even though there are lots and
lots of details in there (some of which are actually left out, though) that can
work for the respondent? Oh, and the 2nd one is now being disputed in court,
which overrides any UDRP decision.

UDRP disputes, like legal cases, are fact intensive and panel dependent. They
aren't going to be decided merely because of what's stated in an online forum
and whatever similar decisions there are.

 

The decision speaks for itself. The second case the respondent knew who the company was and registered teh domain to be critical of them. Had teh website been 'AspisSucks.com' my guess is the panel would have found differently since that is not identical to their mark and would not be found to be confusingly similar since it is evidenced that the intention of the website is to be critical (look up the clearchannelsucks.com case).

the first case, however, does apply to the one this author posted and he could most likely expect the same outcome.

ICANN UDRP Arbitration findings are legally binding and any civil case brought against one will have a tough time proving a preponderance of the evidence to suggest otherwise. (read that ICANN policy next time you register a domain name).

Im not suggesting that everyone go out and register domain names with trademarks that are also dictionary words, far from it. I am only stating the reality that the UDRP proceedings favor a webmaster more than many of you want to admit. The complainant bears the burden of proof of three things and if anyone doesn't stack up then an arbitration panel must choose in the respondents favor. It is my opinion that based on stare decisis the author of this post stands a great chance of not losing their domain dispute and once that is won will be able to use the decision to operate effectively as on online company.

 

A domain name doesn't have to have the word sucks in it to be found having
a legitimate use:

http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0674.html

Then again, neither does the domain not showing any commercial use ensure
it'll be safe:

http://www.internetlibrary.com/cases/lib_case369.cfm

That dispute was eventually settled, though.

The point here is that UDRP decisions aren't required to be consistent, which
is why it's sometimes hard to say whether the complainant or respondent will
win. And even if the complainant or respondent wins, either one can still file a
lawsuit in a court based on the UDRP's stated rules.

You're correct the complainant must meet all 3 requirements in UDRP. But if he
does, then the burden falls on the respondent to rebut 1 of 3, and his word is
not going to be enough without verifiable proof.

It's fine to opine the OP will likely win, and it's also fine if this thing leads to a
dispute and the OP subsequently wins. But if he loses, well...it's his loss, and
it could've been avoided without leading to dispute.

 

Thanks for all the help, everyone. I'll have an update and resolution soon.

 

Hope things work out, then.

 

You could do that but what good would it do you - to maintain ownership of the domain? I'd take a different approach and come up with a new term (minus the classmates part) - that says the same thing. Best of luck - trademark infringement is a tough thing to both enforce, and to fight - it's either the little guy who owns a mark losing to a bigger company that can outspend him, or in your case, the little guy who has to fight the giant that is allowed to register a common phrase like "classmate". Go figure.

 

You should transfer the domain name to me. I hide stuff really well and have dodged several lawsuits many times because companies can never find me.
Fake whois, plus invalid e-mail, plus offshore web hosting and LLC registrations = FTW

Yahoo tried suing me in 2005 for slander and for registering several domains with the word "yahoo" in them. They never found me and my sites live on.

Let me know.

 

LOL - not that I haven't thought along those lines!

 

Sued for slander? What, you told your buddy something that they overheard? lol.

Gee, a court order would give them your IP address and payment information for the domain - and a fake whois is grounds to lose the domain. WIPO actions don't care where you are hosted - not even the moon. Something tells me that you're FOS.

 

Transfer one's domain name to a total stranger in an online forum? That's very
interesting.

If Yahoo! or whoever hasn't taken any of your sites just yet, maybe because
they've not gotten around to doing more just yet, even though they are very
much capable of doing so. Just a matter of time, probably.

Enjoy it while you can, and do let us know if ever you find one taken or so for
riding on their intellectual property rights. But if you ever find one finally doing
the same to you, don't bother complaining about it.

 

Nice job! It's really nice link that you have shared with us.
Thanks!

 

Not nearly enough. If your web host was contacted by them, they would have most likely disclosed your IP and you would have been toast. Something seems a bit fake here.

 

Yeah, that's kinda retarded. Good luck to you.

 

Keep us updated- I'm completely fascinated with this story so far.

+Subscribed

 

I haven't read this entire thread, so apologies if I read something that's already been said.

Could you not just continue your website at classmate-forum.com - it doesn't have an S. The problem also seemed to be with your tagline, so maybe you could change that, then forward classmates-forum.com to classmate-forum.com (make the user hit a page that tell them that site 'no longer exists', so they're being redirected?).

Just a thought.

 

this is proof of bad faith. if the domain is already being disputed and its redirected for gain this will be seen as bad faith. As in the ClearChannelSucks.com case where the domain was redirected to a radio station online. ClearChannel held that this was a violation of their trademark and not a parody usage of the mark. They agreed to drop their suit if the owner merely made a page about how clear channel sucks and linked to his little online radio station from there.

 

Have you seeked legal advise - if so what did they say?