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| Chilling Effects Clearinghouse > Domain Names and Trademarks > Notices > Unauthorized use of the Name(s) of The Regents of The University of California (NoticeID 148, http://chillingeffects.org/N/148) | Location: https://www.chillingeffects.org/notice.cgi?NoticeID=148 |
June 20, 2000
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Sender Information: |
Recipient Information:
Universal Computer Labs
[Private]
Bloomfield, NJ
Sent via: mail
Re: Unauthorized use of the Name(s) of The Regents of The University of California
Dear [Recipient] We have become aware that your company has registered and is using a commercial domain on the Internet, "www.uclabs.com", in connection with your Internet services business. You may be unaware that your use of this domain name violates the rights of The Regents of the University of California, constitutes trademark infringement, and is illegal. We ask that you immediately cease and desist your use of the "UCLA" and/or "UC" names on or in connection with this domain or any links to this domain. We further ask that you confirm in writing to me no later than three weeks from the date of this letter, that you have ceased such use and have taken all appropriate steps to assure that any entity with links to your domain has similarly ceased any use of The Regents' names in connection with any commercial activity, product, or service. Your confirmation must include the following: 1. That your company makes no claim to the domain name www.uclabs.com 2. That your company shall not assert any right to this domain name in the future; and Please fax such a letter to me immediately at [FAX NO] and provide a copy to Mr. [ADMINISTRATOR], Network Solutions, Inc. 505 Huntmar Park Drive, Herndon, Virginia 22070 at FAX number [FAX NO].
3. That your company has not sold, transfered to or otherwise authorized the use of this domain name by any other person or entity, nor will it attempt or purport to attempt to do so.
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Question: Isn't the domain name registration process "first come first served"? Answer: In .com, .org and .net, which are "open" to any kind of registrant, the policy is first-come, first-served, as long as you have registered and used the domain name in good faith or have legitimate interests in the domain name. However, you have no right to violate trademark law, or ignore your Registration Agreement, or engage in cybersquatting just because you registered the name first. Furthermore, in the newer domains such as .biz and .name, there are additional registration requirements that must be met because some of these domains are restricted. Trademark owners may also have advance registration rights. Check individual registry requirements. See list of generic top-level domain registries at http://www.internic.net/faqs/new-tlds.html. Question: How can I show that Complainant's trademark rights in a mark do not extend to my use of the mark in my domain name?
Answer: One way is by showing the mark is a common name or common word. Using "Basset" as an example: Of course that will only help you if you are using the term in a way that does not make people believe your site is run by the Complainant trademark holder, and outside the class of goods or services for which the trademark applies. Question: What exactly are the rights a trademark owner has? Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in future commerce. In most foreign countries, trademarks are valid only upon registration. There are two trademark rights: the right to use (or authorize use) and the right to register. The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark involves establishing who was the first to use it to identify his/her goods. The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark. However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that requires other people to stop using the mark) or award damages if people other than the owner use the trademark (infringement). Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets. Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can prevent uses of their marks by others on goods that do not even compete with the famous product. Question: What can be protected as a trademark? Answer: You can protect
Question: What is trademark infringement? Answer: Although different courts have different tests, the central concept is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, "in connection with the sale, offering for sale, distribution or advertising "of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers. Question: What are the UDRP and ACPA? Answer: Follow these links for Frequently Asked Questions on the UDRP (Uniform Domain Name Dispute Resolution Policy) or ACPA (Anti-cybersquatting Consumer Protection Act). Question: I have an unsettling feeling in the pit of my stomach about the tone of the C&D I received. Does the tone of the c & d mean I am going to lose this dispute? Answer: "Gorilla Chest Thumping" refers to the tone of most C&Ds: it?s nasty. The first thing to do is take a deep breath. The second thing to do is to acknowledge that the tone of the letter is a function of the letter writer?s perception that aggression is the best defense: do not take it personally. The third thing to do is ignore the tone and focus on the facts. You may eventually choose to respond aggressively yourself, but do not do so because your opponent has egged you into a useless game of whose gorilla is bigger. Take a tip from Ani Di Franco: "If you play their game, girl, you?re never gonna win." Face Up and Sing, Out of Range, Righteous Babe Records (1994). Question: How can I show that Complainant's trademark rights in a mark do not extend to my use of the mark in my domain name?
Answer: One way is by showing the mark is a common name or common word. Using "Basset" as an example: Of course that will only help you if you are using the term in a way that does not make people believe your site is run by the Complainant trademark holder, and outside the class of goods or services for which the trademark applies. Question: What is the most common mistake a Respondent makes in answering a Complaint in a UDRP proceeding? Answer: A naked denial, without providing any facts or evidence to support the denial. For example, "I am not cybersquatting", or "I havenot acted in bad faith." Question: What is this laundry list of things the C&D says will happen if I don't obey?
Answer: Your opponent may describe a parade of horribles to demonstrate with exquisite detail what it will do to you unless you capitulate. This list generally includes, but is not limited to: Though these things sound awful, they are not medieval tortures (although that may be a function of the fact that Torquemada never thought of them). Ceasing use of the mark is self-explanatory: your opponent wants you to stop using the mark. Your opponent might also ask you to surrender your domain name if they believe the domain name causes (or is likely to cause) confusion with their trademark. For example, under ICANN rules (the UDRP), you may have to surrender your domain name if the following three conditions are satisfied: An accounting basically means that you disclose the following information to your opponent: Corrective advertising means you give notice to the public that you were using a mark confusingly similar to your opponent?s, and that you are not affiliated with your opponent. An injunction is a judicial order to do something. An injunction can prevent you from using the allegedly infringing trademark. Some provisions of the Lanham Act permit a trademark holder to recover attorney?s fees and court costs from an infringer. That your opponent has listed these various remedies does not mean that it is entitled to them; do not confuse the smorgasbord of legal options with your opponent?s right to inflict any of them on you. |
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