Being Bullied Into Giving Up Rights to Domain Name

[Izmosis]

Approx 18 months ago I registered the domain name VanguardWireless.com. As a web developer I often register names prospective clients may be able to use or I develop turn key sites including domain name rights. I picked "Vanguard" because of its definition, NOT because of any established association. Friday I was emailed by a company lawyer for the Vanguard Group Inc. telling me that I was in violation of cybersquatting law, trademark law etc., that I was diluting their trademark and causing damage to their interests. I was instructed to transfer ownership of the name to them within 10 days.
After doing some research I found that;

VanguardWireless.net, .org, .cc and other TLDs are, as we speak available for registration. Also, there are approx 900 domain names with the word "Vanguard" in them. Doing a trademark search on "Vanguard" I get 300+ hits, given that some of these are abandoned and otherwise not valid. But, there is a pending app from the Vanguard Group Inc. under the words "VANGUARD BROKERAGE SERVICES WIRELESS" dated May 23rd of this year, fully 14 months after my domain name registration of VanguardWireless.com.
My contention is that infringement or dilution is the last thing on the Vanguard Group's mind. I think they simply want to own the best domain name for their new "line".

Have I legs to stand on?

What can I do?

Oh, yes, I am located in South Carolina and the Vanguard Group Inc. is in Pennsylvania

See these urls for the actual letter and more indepth info;
http://ablake.net/forum/index.cgi?read=63823
http://ablake.net/forum/index.cgi?read=63939

THANKS!!!

 

[JETX]

Your defense to this claim is in your ability to show that you are not a 'cybersquatter' and that you have a valid reason for registering that name.

How many DNS names do you have?
Would you be able to show that you are NOT a cybersquatter and that your registrations are done for a valid reason and not just to try to prevent their registration?

If they can show that your registrations are excessive or without any valid reason, they might be able support their claim.

 

[Izmosis]

Hi Halket,

Thanks for taking the time to reply.

My understanding of the intent of law prohibiting "cybersquatting" has always been that it is intended to deal with those who register domain names that they have no intention of developing in hopes that those entities who have an existing connection to the name might offer to buy, or be open to an offer to sell the domain name. It is also my impression that the instances that gave rise to the creation of this law were cases where individuals registered names that were distinct and highly recognisable. Such as "Coca-Cola". This name can have but one use. No one could credibly say that this name could be used in other ways such as Coca-Cola computers, or Coca-Cola electronics. These are names that have little or no meaning other than as their recognisable brands.

To answer your question I have the rights to approximately 100 domain names.

And in each and every case I have gone out of my way to avoid any possible conflict with existing trademarks. This would be evident to anyone looking at a list of these names.

As I stated earlier, my intention is to either develop these domains myself and operate them, develop them and sell them or if I have a client who needs a name and they are in a business which is compatible with a name I have, sell the rights to the name along with site development to add value.

These are the questions I have that make me question The Vanguard Group's motives;

If TVG were concerned about dilution and infringement why did it take 18 months for them to contact me about it? (I think the answer to this is that they were not concerned until they decided to go into online wireless brokerage services themselves as evidenced by their pending trademark application dated March 23 of this year)

If they are concerned about dilution and infringement why is it that as we speak VanguardWireless.net, .org and various other TLDs are available for registration? I register names for $9.95 per year, can TVG not afford to protect these names by registering them?

How can TVG claim dilution and infringement in this case where the domain name is not even being used, publicized or advertised and there are approx 900 domain names and between 100 and 200 trademarks that contain the word "vanguard"? Is TVG actively pursuing remedies against all of these cases of infringment?

My interpretation of the "bad faith" part of the cybersquatting law has always been that the person registering the name obviously had intentions of capitalizing on the notariety and recognition value of a name when they registered it. Either for web traffic misdirection or in hopes of selling the name for big money to the "rightful" owners.

This was never my intention in this case. I merely looked for words that have a positive connotation often using a thesaurus and dictionary in the search. I was not aware that dictionaries and theasauri contain that many trademarked words.

Again, I think the evidence points to the fact that TVG isn't the least bit concerned about trademark dilution or infringement.

They are concerned about obtaining the best domain name for their new wireless venture the cheapest way possible, a threatening email to a small business owner.

Ken

 

[JETX]

Good points all. But this now gets me back to my original response.

"Your defense to this claim is in your ability to show that you are not a 'cybersquatter' and that you have a valid reason for registering that name."

So, you now have two choices:
1) Challenge their (weak) CLAIM of rights (and I agree with you that your name doesn't seem to be sufficiently linked to them); or
2) Give up the rights to that name.

And, regretably, you are in the role of David and they are Goliath. Do you have a big enough rock (money) and a steady hand (commmittment) to take them on?

 

[Izmosis]

Thanks again Halket!

My hand is extremely steady, but my rock is but a mere speck of sand.

I honestly believe that I can, to the satisfaction of most resonable people show that my registration was not in "bad faith". And who can say, or prove that once one registers a domain name, what their intentions are? IMO the mere passage of time without action is insufficient to prove a lack of intent to develop.

Any given domain name is a singular, unique thing of value.

Once registered there can be no other exactly like it. So if I believe that there is a possibility in the future I may need a given name for business purposes it would be smart to obtain it when it is available.

On numerous occasions I have offered to give away the rights to domain names when I thought I saw someone with a need for one that I owned the rights to.

I'm not familiar with the exact procedure but I am hoping that if anyone wishes to forcibly take my rights to this name it will be something I can fight or pursue as the case may be, with my own "hand" with little need for a "rock".

The ICANN policy dealing with this is located here;

http://www.icann.org/udrp/udrp-policy-24oct99.htm

I am hoping that what I will need to do once a complaint is registered is to reply as per paragraph #5 of this document.

While I have heard of the outcome of this process, I'm not aware of the details of the process itself. In many of the outcomes I have heard about the person who's ownership was being challenged lost by virtue of the fact they did not even respond to the complaint. They didn't plead their case.

So, I hope that I will be able to make my case as I have here in this forum to the governing body ICANN.

Thanks again Halket, If I may be of service to you in the areas of web development, web graphics (see my homepage) or photograpy, please let me know.

Ken (David)