In the barrage of questions that you answered for me with a "no, I don't
think so" you neatly ducked the question I had asked first, which is to
identify cases brought under Section 32 against domain name owners where
plaintiff had no colorable claim.
I asked because there is this assumption spread on this list that there is
a roving pack of trademark owners who bring meritless claims against DN
owners, and that there are no legal remedies left to these DN owners, all
of whom are too poor to defend themselves.
I think the truth is perhaps a little bit different. I think that these TM
owners usually do have colorable claims and then the DN owners settle out,
neatly turning a profit. Cause if they didn't, it would make economic
sense for them to defend their property.
And the law favors the DN owner against the meritless claim. While the DJ
action doesn't necessarily award the DN owner all of its costs (assuming it
wins), the mere action of filing the DJ suspends the NSI proceeding, and
gives the DN leverage.
Now I'm not defending NSI's policy (you know my position on that).
My point is that if the facts were as some would portray them, we would be
seeing a lot more declaratory judgment actions out there (and tort claims
against the "covetous" TM owner). If there were that many active web sites
being attacked by "Meritless" claims, some of them would have gotten
together enough cash to file a DJ action (if for no other reason than to
nullify the TM registrant's leverage in bringing the NSI proceeding).
You point out that where the DN owner brings a DJ action, the case settles
out. So? In these settlements do DN owners sell for 90 cents what is
worth a dollar to them, or could it be the other way around?
Maybe the reason everybody knows about the juno.com and epix.com cases is
because they are unusual.
Now, there are a couple of misstatements in your post. Isn't just
overblowm rhetoric to state that petitioner risks 66 cents to bring a NSI
proceeding? They have to send a demand letter to the DN owner. The letter
must state how the DN violates the TM owner's rights. The TM owner is now
vulnerable to a DJ action. If an action is brought someone is going to
have to sign papers for declaratory defendant (yes, I've read Rule 11).
Now some Judges have never awarded Rule 11 sanctions. Which proves what?
All judges hate meritless claims clogging up their dockets so lawyers try
not to bring meritless actions.
And as for the NSI "court awarding the DN" - in what situations is the
remedy suspension, and in what situations is the remedy de-registration?
Now you say that you have seen "many, many dozens of cases in which
covetous parties>brought meritless claims in NSI's "court" and in which NSI
ruled in their>favor, announcing that it had determined to take the domain
name away from>its owner. "
Many many dozens - that has to be at least 36 I would say. You are
familiar with enough of the facts of 36 cases to conclude that in each of
those cases:
(1) a TM owner had no colorable cause of action; and
(2) NSI awarded the TM owner the domain name
(3) without compensation to the DN owner?
Who the heck was the DN owners' lawyer?
At 10:12 AM 2/17/99 -0700, you wrote:
>At 09:32 AM 2/17/99 , Martin B. Schwimmer wrote:
>
>>At 10:19 AM 2/17/99 -0500, you wrote:
>
>>>Carl Oppedahl wrote:
>>>
>>>>>What is the domain name holders burden in a filing like that?
>>>>
>>>>Typically a few tens of thousands of dollars.
>>>
>>>Which is exactly why pseudo.org may lose their domain name. The
>>>non-infringing non-commercial domain name holder can't afford tens of
>>>thousands of dollars. The reverse domain name hijackers have very little
>>>downside. All they need do is claim infringement (even though there is NO
>>>analysis in the US that supports the claim, and they know it) and he domain
>>>name holder's only recourse is to spend tens of thousands in legal fees
>>>that generally aren't shifted back to the reverse hijacker in court.
>>
>>As has been stated several times on this list, this analysis is simply
>>inaccurate. It ignores the Declaratory Judgment Act, Rule 11 sanctions,
>>the existence of legal aid, and the ability to represent onself (pro se).
>
>Sorry, but from what you wrote it seems that you might not be speaking from
>actual experience in this area. If you had been consulted (as I have, and
>as others have) by many dozens of innocent domain name owners who have
>received NSI 30-day letters, you would know the situation.
>
>First, initiating an NSI challenge, even if one has no colorable claim, is
>easy to do (it takes 66 cents postage and little else). Can you point to
>even a single instance in which a domain name owner who is the victim of a
>bogus NSI claim has recovered his or her costs through the filing of a DJ
>action? No, I didn't think so.
>
>Second, if the innocent domain name owner brings a DJ action to kill the
>NSI cutoff plans, the usual next event is that the covetous party who
>brought the NSI challenge settles the matter without ever signing any court
>papers. If you reread Rule 11 carefully, you will find that if one never
>signs a court paper, one faces no risk of Rule 11 sanctions.
>
>Can you point to even a single instance of a domain name owner having been
>defended in court *or* in an NSI challenge by means of legal aid? No, I
>didn't think so.
>
>Can you point to even a single instance of a domain name owner successfully
>countering an NSI challenge by filing a DJ action pro se? No, I didn't
>think so.
>
>>As long as we are minimizing legitimate beefs by measuring them against the
>>entire population, will Ms. Barry and Mr. Oppedahl please identify the
>>number of cases which fit the following:
>>
>>An infringement claim brought under Section 32 of the Lanham Act against
>>the owner of a domain name where plaintiff had no colorable claim.
>
>You seem to have missed something. In cases where the covetous party has
>no colorable claim, they generally don't present it the claim in regular
>court, for the simple reason that they know they would lose there. (Maybe
>also the decision is influenced by the risk of Rule 11 sanctions that you
>mentioned, but as you may or may not know, Rule 11 sanctions are almost
>never granted. There are judges who have gone their entire careers without
>imposing Rule 11 sanctions, and in fact I suspect most judges are in this
>category.) Instead, they present it in NSI's self-appointed court, where
>NSI will rule in their favor regardless of the claim lacking any legal merit.
>
>I have personally seen many, many dozens of cases in which covetous parties
>brought meritless claims in NSI's "court" and in which NSI ruled in their
>favor, announcing that it had determined to take the domain name away from
>its owner.
>
>
>
