PocketBook sues for PocketBook.com domain name

[Uncle Robin]

Originally Posted by fjtorres

Think of it as a reminder that site squatting is very real and very profitable.

This I know well already, but if anyone took my comment seriously, it's time for me to buy a cat and let it loose on my old laptop's keyboard.

[DNSB]

Originally Posted by Hitch

I asked him, "how many men makes THAT sort of woman? 2? 5? 7? Is seven the magic slut number?"

Hmmm... at what point does the woman consider herself as having exceeded the magic slut number?

Originally Posted by Hitch

So...how many domains, exactly, makes a person or business or entity a troll?

If Fred buys older cars, stacks them in his garage, and waits for them to become collectibles, is he a used-car troll?

Why is the buying and selling of domains any different from doing so with any other commodity?

Hitch

For me, the difference is a person who has a domain name and is using it versus someone who is not making use of the domain name but has registered it in the hopes of showing a future profit by selling it, preferably at an inflated price.

One example here in Canada was a gentleman who decided to get into the marijuana related domain name business prior to the legalization of marijuana. Since he made no use of the domain names and used trademarks and variants of them that had been registered by multiple companies planning on getting into the business if it proved to be profitable, his domain names were tossed out. Admittedly, it seems a bit funny to be worrying about a recreational drug related business being profitable but what can you expect when the government gets involved.

For Americans, the Anticybersquatting Consumer Protection Act comes into play. It has also been applied to non-Americans when the domain name was registered with an American registrar given a domain name squatter is going to want to pay as little as possible.

[rcentros]

Originally Posted by fjtorres

I wouldn't dismiss this suit out of hand just yet.
Let them fight it out.
Courts exist for a reason.

You could be right. PocketBook registered their trademark in 2008. The pocketbook.com trademark was registered in 2012. The Panel made the point that they weren't authorized to decide trademark cases, but hinted that that was the direction PocketBook should have gone.

[Gardenman]

Originally Posted by Hitch

Who decides that? Who decides who is a troll and who isn't? If someone buys 10 domain names, are they a "domain name troll"? I have several, for websites, businesses, etc., that I considered, here or there. One of them, for whatever reason, is now worth a LOT more than it was when I bought it. Does that make me a "domain name troll"? I'm the one that spent the money, created the name at the time, paid for it all these years. If I resell it now, am I under some moral social obligation to donate the "profit" to charity? So that, god forbid, I'm not considered a TROLL?

Does "only" 10 mean that I'm not a domain name troll? What about 100? What about 1,000?

This reminds me of a discussion I had with a male business colleague, in the mid-80's--at the time, an older (to me) gentleman, in his mid-50's, who was talking about some woman he was dating and he referred to her as "that sort of woman." (He was talking about sexual activity.)

I asked him, "how many men makes THAT sort of woman? 2? 5? 7? Is seven the magic slut number?"

So...how many domains, exactly, makes a person or business or entity a troll?

If Fred buys older cars, stacks them in his garage, and waits for them to become collectibles, is he a used-car troll?

Why is the buying and selling of domains any different from doing so with any other commodity?

Hitch

As far as I can see it is not.

[fjtorres]

Originally Posted by Hitch

Who decides that? Who decides who is a troll and who isn't?
Hitch

Who decides?
The courts, most often.
It comes down to intent as most civil cases do.
You thought to build a business with the website? Fine and dandy.

You heard Nintendo's next toy is going to be called Dooderoo57 and decided to grab the domain *solely* to squeeze them for a profit? The judge might not like that.

Who decides? Sometimes ICAHN, sometimes a court.
The "court of public opinion" might say otherwise but that really has little power.

Pocketbook is asking the court to decide.
It might be a negotiating tactic, it might not.
The court might side with them, they might not.
One way or another, the legal system will have its say.

[fjtorres]

Originally Posted by rcentros

You could be right. PocketBook registered their trademark in 2008. The pocketbook.com trademark was registered in 2012. The Panel made the point that they weren't authorized to decide trademark cases, but hinted that that was the direction PocketBook should have gone.

Trademarks are tricky.

The first question in trademark conflicts is usually about due diligence.
The same brand is allowable for products in vastly different different businesses where consumer confusion is unlikely. How close is close is subjectivee as Microsoft discovered with SKYDRIVE.

The second question is timeliness. Trademarks, unlike patents and copyrights, must be actively defended as well as exercised.

Pocketbook is going to have to explain how they've been doing business online since 2009 but only tried to claim the domain much later.

The answer might be good (Trademarks can be regional, as with Busch's beer) or it might not. They might lose on trademark but win on cybersquatting or vice-versa.

[fjtorres]

Speaking of tbe Cybersquatting Act:

https://en.m.wikipedia.org/wiki/Anti...Protection_Act

The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d),(passed as part of Pub.L. 106–113) is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name.[1][2] The law was designed to thwart "cybersquatters" who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party.[3] Critics of the ACPA complain about the non-global scope of the Act and its potential to restrict free speech,[4] while others dispute these complaints. Before the ACPA was enacted, trademark owners relied heavily on the Federal Trademark Dilution Act (FTDA) to sue domain name registrants.[5] The FTDA was enacted in 1995 in part with the intent to curb domain name abuses.[6] The legislative history of the FTDA specifically mentions that trademark dilution in domain names was a matter of Congressional concern motivating the Act.[7] Senator Leahy stated that "it is my hope that this anti-dilution statute can help stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others".[7]

For example, in Panavision Int’l L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998), Dennis Toeppen registered the domain name Panavision.com. Panavision, the trademark owner, learned that Toeppen had registered its trademark when it attempted to register the trademark "Panavision" as a domain name.[8] Toeppen was using the domain panavision.com to display photographs of Pana, Illinois, and, when asked to cease, he offered to sell the domain name to Panavision for $13,000.[7] After Panavision refused to buy the domain name from Toeppen, he registered its other trademark, Panaflex, as a domain name.[7] The Court held that the FTDA could be violated without the traditional tarnishing or blurring the courts had required.[3] Rulings like this extended the FTDA substantially.

Under the ACPA, a trademark owner may bring a cause of action against a domain name registrant who:

1. Has a bad faith intent to profit from the mark
2. Registers, traffics in, or uses a domain name that is
3. Identical or confusingly similar to a distinctive mark
4. Identical or confusingly similar to or dilutive of a famous mark
5. Is a trademark protected by 18 U.S.C. § 706 (marks involving the Red Cross) or 36 U.S.C. § 220506 (marks related to the "Olympics")[9]
6. A trademark is famous if the owner can prove that the mark "is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner".[10]

"Trafficking" in the context of domain names includes, but is not limited to "sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration".[11] The ACPA also requires that the mark be distinctive or famous at the time of registration.[12]

In determining whether the domain name registrant has a bad faith intent to profit, a court may consider many factors, including nine that are outlined in the statute:

Registrant's trademark or other intellectual property rights in the domain name;
Whether the domain name contains the registrant's legal or common name;
Registrant's prior use of the domain name in connection with the bona fide offering of goods or services;
Registrant's bona fide noncommercial or fair use of the mark in a site accessible by the domain name;
Registrant's intent to divert customers from the mark owner's online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;
Registrant's offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;
Registrant's providing misleading false contact information when applying for registration of the domain name;
Registrant's registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others; and
Extent to which the mark in the domain is distinctive or famous.[13]
The ACPA does not prevent the fair use of trademarks or any use protected by the First Amendment, which includes gripe sites.[14] In Mayflower Transit, L.L.C. v. Prince, 314 F. Supp. 2d 362 (D.N.J 2004), the court found that the first two prongs of Mayflower's ACPA claim were easily met because (1) their registered trademark was distinctive and (2) Defendant's "mayflowervanline.com" was confusingly similar to Plaintiff's Mayflower trademark.[15] However, when the court was examining the third prong of Plaintiff's ACPA claim, whether Defendant registered its domain name with the bad faith intent to profit from Plaintiff, the court found Defendant had a bona fide noncommercial use of the mark, therefore, the ACPA claim failed.[16] "Defendant's motive for registering the disputed domain names was to express his customer dissatisfaction through the medium of the Internet."[17]

The domain name registrar or registry or other domain name authority is not liable for injunctive or monetary relief except in the case of bad faith or reckless disregard.[18]

While § 1125 protects trademark owners, 15 U.S.C. § 1129 protects any living person from having their personal name included in a domain name, but only when the domain name is registered for profitable resale.[19]

More at the source.

[rcentros]

Originally Posted by fjtorres

The answer might be good (Trademarks can be regional, as with Busch's beer) or it might not. They might lose on trademark but win on cybersquatting or vice-versa.

I still think PocketBook would be better off to buy the domain and be done with it.

[Hitch]

Originally Posted by fjtorres

Who decides?
The courts, most often.

No...the argument here is that the creating and buying and "parking" or holding of domain names, as a business, is somehow evil or bad or unworthy of any consideration. That the people who do this are trolls, not simply regular businesspeople.

Why? Why is it "bad"? People buy and wait on myriad things. People buy and hold gold. People buy and hold precious stones (not really the smartest thing in the world, in terms of value, but, hey.) People buy cars and park them, long-term. An entire industry has been built around that--car collecting.

What about "collectibles"? Any of you have action figures? Batman, Boba Fett? Anything like that? Are you bad or evil, because you prevented some child from having that toy? OMG, you MONSTERS!!!

It comes down to intent as most civil cases do.
You thought to build a business with the website? Fine and dandy.

No, but YOU are adjudicating someone's intent. I have probably 2 dozen domain names. Yes, most of them were biz ideas I played with; some are simply terms or ideas or names that amused me. Who are you to judge my intent as being worthy or not?

You heard Nintendo's next toy is going to be called Dooderoo57 and decided to grab the domain *solely* to squeeze them for a profit? The judge might not like that.

I'm not talking about court cases, where someone (finally) decides to put their money where their mouth is. I'm talking about the sentiment I see in this thread, that someone exercising their right to conduct a perfectly legitimate business is excoriated as being a troll.

Who decides? Sometimes ICAHN, sometimes a court.
The "court of public opinion" might say otherwise but that really has little power.

The court of thread opinion is my current topic. Why do any of you feel entitled to judge someone else, for spending their own money to buy domain names and wait for them to appreciate? You all behave as if every domain that someone buys is a gold mine. They're not. Of all the domain names I own, one, other than my own direct biz, has ANY value at all. The others are simply expenses. Black holes into which I've poured money, over the years.

The same is, I'm sure, true for all domain buyers and sellers. It's a commodity. That's what it is. Period. if anyone on this thread has ever--ever--bought anything at all, whether collectibles, coins, stamps, antiques, etc., with an eye toward appreciation, it's precisely the same thing. Does that make all of you Collectible Trolls? Stamp Trolls! Did you prevent some small child from getting that yadda-yadda stamp that he wanted, for his precious collection?

It's no different, for that matter, than buying and selling stocks and options. Do you have friends that bought Google or Tesla, early on? Do you think that they're geniuses because they did, or do you think that they are--gasp!--STOCK TROLLS! OMG, call the Stock Troll police!

Pocketbook is asking the court to decide.
It might be a negotiating tactic, it might not.
The court might side with them, they might not.
One way or another, the legal system will have its say.

Yes and that's Pocketbook's lookout.

Unless or until the buying and selling of domains is somehow rendered illegal, I fail to see why anyone doing that, in whatever quantity, should have any reason at all to feel ashamed of themselves for doing it. Or, for that matter, why they should be called Trolls.

Like pretty much any other businessperson, they've bet on their own judgment with their own money--and if some of the names that they buy later have an increased value, they've likely earned that increase. It's not like they get to magically make all the expenses on the no-value domains disappear. Not one of you knows whether most domain-name buyers and sellers make a big profit or a small one, or if they even make a profit.

It's no different than anything else, any other hobby around collection or any other commodity.

Hitch

[fjtorres]

Originally Posted by Hitch

I'm not talking about court cases, where someone (finally) decides to put their money where their mouth is. I'm talking about the sentiment I see in this thread, that someone exercising their right to conduct a perfectly legitimate business is excoriated as being a troll.

The court of thread opinion is my current topic.
Hitch

You're giving too much value to the internet.
Out in the real world it is the opinion of the courts that matters not random folk online.
That way lies cancel culture.

If that is where you're going, I'm not.
Later!
Good luck.

[shalym]

Originally Posted by rcentros

You could be right. PocketBook registered their trademark in 2008. The pocketbook.com trademark was registered in 2012. The Panel made the point that they weren't authorized to decide trademark cases, but hinted that that was the direction PocketBook should have gone.

I don't see how it could be a trademark issue. The word "pocketbook" has been around for a lot longer than 12 years, and has historically been used to describe a place to store money.

Also, I'm pretty sure that trademark infringement is only enforceable if the products are similar. In this case, an e-reader called PocketBook is not at all similar to software designed to "manage and share financial goals", so there would be no infringement.

The USPTO determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source. Similar marks or related goods/services by themselves are not enough to support a finding of a likelihood of confusion, unless a court has held that the mark is actually a famous mark. That is, generally two identical marks can coexist, so long as the goods and services are not related.

Shari

[binaryhermit]

Especially when it's a vaguely generic term like pocketbook, or, say, Apple.

[j.p.s]

Originally Posted by rcentros

You could be right. PocketBook registered their trademark in 2008. The pocketbook.com trademark was registered in 2012. The Panel made the point that they weren't authorized to decide trademark cases, but hinted that that was the direction PocketBook should have gone.

The pocketbook.com trademark may date from 2012, but archive.org has snapshots of pocketbook.com going back to 2000.

https://web.archive.org/web/20001110...ery_soon.lasso

[ezdiy]

Originally Posted by rcentros

The current owners obtained the domain name in 2010, however.

That's the moneyquote right there - speculator bought it from the original owner the moment pocketbook became a brand (2007, and by 2010 they were noticeable enough). If it were in hands of the original owner then ok, but here UDRP case is legit.

A lot of brands go through UDRP against large speculators, we're talking $50-100k price tag and if lawyer says UDRP can stand, it's a worthy gamble for mid-size companies.

[shalym]

Originally Posted by ezdiy

That's the moneyquote right there - speculator bought it from the original owner the moment pocketbook became a brand (2007, and by 2010 they were noticeable enough). If it were in hands of the original owner then ok, but here UDRP case is legit.

A lot of brands go through UDRP against large speculators, we're talking $50-100k price tag and if lawyer says UDRP can stand, it's a worthy gamble for mid-size companies.

Except again, the company that owns the domain is not a "speculator". They sell software called Pocketbook that is used to "manage and share financial goals"

Shari