For the past seven years, Chris Dunne has owned the tropicanafield.com domain name.
“I’m a huge Rays fan,” he said. “I bought the name because I thought it was cool to be part of a baseball team, you know?”
The website is a business directory for places located close to the stadium.
“So if some one’s coming from anywhere and they’re going to Tropicana Field, they can look up hotels, they can look up transportation, they can look up accommodations,” he explained.
He put a disclaimer on the site explaining that he is not affiliated with the field. He even took down a picture of the field from his site.
PepsiCo owns Tropicana Products Inc. The company contacted Dunne in September to get the name.
“I’m just trying to make some extra money, and then Pepsi contacted me demanding the domain name back,” Dunne said.
Dunne received a letter Sept. 18 from Janet Silverberg, chief trademark counsel for PepsiCo.
In the letter, Silverberg tells Dunne that “unauthorized use of our trademark constitutes trademark infringement and unfair competition as it may mislead consumers into believing that your site is associated with the stadium or our company.”
Dunne, who lives in Dunedin, doesn’t have any affiliation with the Rays. He started using the Web site in April as an advertising site for local businesses.
“I don’t even want to sell it to them. That’s not the point of trying to make a bunch of money. I’m just trying to do a legitimate business and help the people of St. Pete,” Dunne said.
Dunne started his business after a restaurant he opened failed and his young daughter was diagnosed with Crohn’s disease. He said the medical bills now total more than $70,000.
Dunne said he does not have an attorney and is not sure how he will respond.
Dunne said, “They’ve had a couple years prior to when I registered it to register it and didn’t and then they’ve had seven years since to contact me if they’ve wanted it.”
And that’s the rub.
A few days ago Traverse Legal, covered a story of a Federal case in Florida where the court held that trademark holders failure to timely protect its trademark rights can result in a waiver of those rights altogether. This is known in the legal world as the theory of laches.
“The court found that the Plaintiff was barred from pursuing its trademark infringement and cybersquatting claims under the doctrine of laches, which is an equitable defense which penalizes Plaintiffs who fail to assert their rights in a timely fashion”
This case seems ripe for such a ruling.
Here is a company, Pepsi that let this domain sit unregistered for 2 years and let this guy hold it for 7.
Traverse Legal concluded its post with the following:
“””””The lesson to be learned here is one that we have been telling our trademark clients for a long time. You must proactively protect your trademarks in cyberspace.”””
Doesn’t being proactive in protecting your marks include registering when they are available for registration?
A trademark holder that does not register a domain even though it is available for years can come back anytime years later and say “give it to me”?
Now that the Ray’s for the first time in their 11 year history are not only out of last place, but on the verge of an appearance in the world series (at the time the letter was sent on the verge of their first playoff appearance), here comes along Pepsi and says we want the domain back.
Also please note that this domain is not a parked page pulling ads for Tropicana.
Rather, it is fully developed site which is “Your local guide of places to go and things to see while you visit Tropicana Field in St. Petersburg, Florida.”
So for all of you that argue that its not the domain, but the way you use it, which determines if you have violated a trademark, this case flies in the face of your argument.
Unfortunately it appears this guy does not know the first thing about domains or have the funds to mount a defense.
As you know I’m strongly against trademark infringement, but In this case, he is a guy who registered a domain, didn’t offer it for sale and in fact doesn’t want to sell it; build out the site for a logical use and is an informational site for all businesses around the stadium.
Where was Pepsi when the Rays sucked?
Where was Pepsi when no one went to a Ray’s Game to watch a last place team?
Nowhere.
Everyone loves a winner.
But in the trademark world can you really sit around and wait for something to become “valuable” before asserting your rights?
I hope the domain holder can pony up the dollars and fight this one.
Anyone think I’m off base here?
I agree with you all the way! In fact it would be nice is if a domain lawyer or law firm would take this up for him, just to defend and reinforce the previous ruling you note, and to set more precedent against this type of corporate ‘deep pockets’ bullying to steal legitimately acquired and used domains. I could even see these lawyers being paid thru ‘reverse hijacking’ ranifications against these corporations!
Let me be the first to say that I completely sympathize with this gentleman. Because of that I’m also going to be as unbiased as I can.
What should he do? First and foremost, he doesn’t have the funds to fight this. Pepsico obviously does and they will use this advantage through the UDRP and/or Federal court. It’s their choice. Money will be no object for Pepsico in attempting to acquire this domain name. The court system is based on money, rights are secondary, and if one doesn’t have the capital they must do everything they can to avoid a costly legal battle and look for an amicable settlement.
Do laches apply here. Of course it would be up to a judge to decide that. Again I will default to my first point. Pepsico would use their monetary advantage and never let him get the opportunity to get that far.
Still, from what I know of laches this gentleman would need several years, at least, of consistant usage as a full website to even be considered for laches. The fact is tropicanafield.com was a parking page serving ads related to Baseball and Tampa from 2002 until February of 2008. He’s had this website fully functional for less than a year. Pepsico clearly knows this and is attempting to stop his usage before laches would ever apply. There is no statute of limitations when claiming trademark rights, except for the claim of usage and the application of laches which would be time sensative.
I believe laches will not apply here now because Pepsico has stopped that clock now by making their claim. Not only that but we have this which pretty much ends this; per USPTO:
Tropicana Field ®
Registration Number 2283574
Registration Date October 5, 1999
FIRST USE IN COMMERCE: 19980900
TropicanField.com
registered 2001-06-13 (Chris D.)
They already had a standing Federal trademark several years before he ever registered the domain name. It’s in his best interest now to settle.
To be honest I think any intent to capitilize on someone elses trademark is (a) bad faith and (b) bad for the industry. I agree that trademark holders should have some time period to exercise thier rights but at the end of the day this guy is still benefiting from the hard work other people did creating a trademark. If any intent is exercised – no matter at what time – than its bad faith all around.
His quote “I bought the name because I thought it was cool to be part of a baseball team” – he’s not part of the baseball team nor will he ever be. A fan is a fan – not an employee or someone who has rights to use the trademark of others.
My thoughts – I hope PepsiCo hits a home run on getting this domain.
Alan
I have had people argue to me that trademark infringement is based on use of the domain, not the domain itself.
What I don’t like about this case is the timing.
This mark sat unregistered for 2 years.
I wasn’t important enought to Pepsi to Spend $7 to register it.
Then the domain sat for years owned by this guy and Pepsi did nothing.
Now that the team is winning here they come with a lawsuit in hand ready to roll over this guy.
Not the way you treat a “valuable” asset
I just found it interesting how Pepsico says they want their name “BACK”. As if they lent it to him or something. I’m no lawyer, but I feel like those very words could be used against him. It implies they willingly let him use the name, until now, however without contract or without his knowledge. So they openly admit they knew about it all this time? Why go after it now though? Because now they know the cost of the legal battle will pay for itself in the value of the name since essentially Ray’s stock is up right now. Laches. Move the name off-shore, then cross your fingers on the UDRP. I think the off-shores have to abide by UDRP, but not US court decisions, right?
Sorry, I meant to say: those very words can be used against them, not “him”.
Learning that there was an ‘established’ trademark on the term Tropicana Field, and that it was parked prior, does change things somewhat. However ‘why’ did Pepsico take so long to lay claim to it?
Actually I don’t disagree with you at all. I agree it is based on the use of the name but in the case of tropicanafield.com I believe the owners (a) intent was to capitalize on the tropicana trademark and (b) his use is clearly a use that does conflict with the trademark. He has no rights to Tropicana field, the Rays logo or probably anything baseball related.
If “Tropicana field” was a place he visited during his younger years (say a field where he and friends played) and he started a website about this than I agree. But the Tropicana field he is trying to build a website around is not a childhood place, it’s a building whose owners have rights.
I will go back to what Ken said (and I haven’t double checked this) but if tropicanafield.com was a parking page serving ads related to Baseball and Tampa from 2002 until February of 2008 then Mr. Dunne’s story about medical bills (although I’m sure they are true) is simply a way to gain public support.
You stated “But in the trademark world can you really sit around and wait for something to become “valuable” before asserting your rights”
On the opposite front, isn’t this exactly what Chris did?
When he thought the “trademark” (one he has no rights to) had enough value to it (because of the Ray’s success) he decided to capitalize on it.
I agree use can be the main argument – your example, toyota.me could be owned by anyone as long as it’s not car related, or it was an acronym for something – anything really as long as its not selling cars as to confuse the public and diminish the trademark holders value.
Nissan.com is a perfect example, I think the guy has every right to the name. However, if someone owned Nissan.com and parked it with car ads, or (as similar to the tropicanfield.com site) was showing reviews or links to where to buy a car then no – Nissan Motors should have it.
JP
An offshore registrar would not help with regards to a UDRP since they are ICANN accredited and in their contract with ICANN they agree to abide by such decisions
Alan // Oct 18, 2008 at 10:15 am
You are absolutely right.
Furthermore. what if I as your average Joe had registered the the TM in the contested category for the protection of his small business and Pepsi registered the .me .mobile which side would you take ?
Hi MHB // Oct 18, 2008 at 10:38 am
Would you please tell me what Laches means in the context of
“Why Doesn’t Laches Apply To This One” It is not something I am familiar with
Much appreciated
Alan my comment ” which side would you take ?” was not directed with you in mind
Alan // Oct 18, 2008 at 10:15 am
You are absolutely right.
Furthermore. what if I as your average Joe had registered the the TM in the contested category for the protection of his small business and Pepsi registered the .me .mobile which side would you take ?
Empedocles,
No worries … Mike’s the lawyer not me but I think you are referring to something like this.
Let’s say I registered the domain CrazyMad.com
Then a couple years later Pepsi registered the trademark “CrazyMad” and in turn registered CrazyMad.me.
Pepsi then filed a brief asking the court to give them Crazymad.com
It’s basically reverse hijacking and I would stand by the owner of Crazymad.com (not Pepsi) even if he was just parking the name since at the time of registration no trademark infringement was there.
However, if the guy had the domain parked then all of a sudden (suspiciously coinciding with Pepsi’s trademark application of CrazyMad) decided to build a website around the same content for which the trademark was issued for (whether that’s a soft drink, a challenge game – whatever Pepsi had in mind) than to me this is 100% bad intent to capitalize from the goodwill of someone else’s work.
In summary, name was parked before trademark – original owner should have the right to the domain.
Develop a site based on the new “trademark content” – original owner should be banished from domaining.
In my opinion, there’s a lot of wait and see with domain investing and that’s cool but when somebody draws the line and starts to develop based on the known trademark of others its just criminal.
Great post and response.
PepsiCo is a BIG International Company and they SHOULD offer Chris a nice amount of money to buy the domain from him.
Chris Dunne could use the money for his daughter’s medical expenses.
Both parties should communicate and avoid going to court.
Chris should look at this from another point which is negotiate a deal – sell the domain – pay your daughters medical expenses – register a new domain name and continue your online business venture – if he is smart he would also be able to form a Business Partnership with the PepsiCo.
Empedocles/Alan
You should really read the post I referred to in my original post from Traverse Legal.
This demonstrates the equitable concept of Laches perfectly.
Basically if you have a trademark right you have enforce your rights or you can be stopped from asserting them later.
Please read the post about that case.
Mike,
Thanks – I actually did read it 🙂 but I honestly think there is some flaw in the logic here.
Just because Pepsi did not enforce the trademark when the domain was parked should not allow them to lose thier rights once the domain is developed because the entire landscape has changed.
If the site was developed 5 years ago that’s probably enough time to lapse for the “concept of Laches” to kick in. However, the domain was only developed a few months back so with that in mind can not PepsiCo enter an argument about the content of the site?
Up until this year the site was parked – so even the owner – may have had no idea what content was displayed on the name as all the ads, graphics etc… were served by a third party.
Once the owner develops the clock should start ticking because the “use” is now in effect and pepsico could argue that due to the limitless variations of possible trademark violations associated with “simple” domain names (no content), its almost impossible to enforce thier trademark for each and every case however once developed content is made they do enforce.
Interesting to see how this one plays out. I still think the car is bottom feeding but hey, that’s my own personal opinion 🙂
I agree with Damir. Seems like the best solution for all. Pepsico should put a price tag on the legal action required to get the domain, then offer Chris Dunne something less than that. How much less, I don’t know.
Mike,
Not to harp on this topic but in the case above with Travese Legal I just checked the history of the domain – diamondbrite.com – which I didn’t do before. It seems like there is no archive information since 2002 and the name is not parked.
The topic of your article was “Why Doesn’t Laches Apply To This One”
Unlike the diamondbrite case the owner here switched from a parking site to a developed website – coincidentally at the same time the Rays started doing well.
You’re the lawyer but wouldn’t this make for a pretty good argument why Laches does not apply here and the two (2) cases should not be comparable.
Just curious – you da man 🙂
Alan
Your making the case for Pepsi.
I’m making the case for the domain owner.
Pepsi didn’t even register the domain for 2 years it was unregistered.
The domain holder had it parked for several years maybe waiting to hear from the trademark holder and heard nothing.
parking I’m sure you agree is a much more objectionable use.
After waiting years and years to hear from the trademark holder and having heard nothing, he developed the site into an information site not about the team or the stadium but really about restaurants, bars, hotels and other businesses that someone visiting the stadium might want to check out.
Now after the guy spends all his time and whatever little money he has to develop the site and to his good fortune the year he developed it out is the year the Rays became contenders.
Now the trademark holder after passing up spending $7 to register the domain, without objecting to years of a parking page, now comes along to enforce its trademark.
Well sorry guys you waited to long, the domain holder took action based on your inaction, you are estopped from claiming trademark infringement.
The two key points (and why Pepsi has the rights to this domain; whether we like it or not) are these:
1. Laches is inapplicable here, because; unlike as in the diamondbrite case; Pepsi did not wait for some number of years to pass from the time they first notified Chris of their claim of his illegal ownership and use; and when they (will) begin enforcement to get it back.
It’s not the passage of time from when Chris first registered; or even when he used it for a “real” site instead of a parking site; to when Pepsi made their claim for it that matters, but the amount of time from Pepsi making their claim to going to court/WIPO for it.
The diamondbrite owner; unlike Chris; did not spend years “under an ownership cloud” caused by another party claiming that they had the rights to the domain, but who for 5+ years didn’t attempt to enforce their claim.
2. Alan is correct. Because Tropicana is a federally registered trademark, they’ve had the right at least since the company Pepsi purchased first filed for it (unless someone was able to get it canceled by the USPTO); back in 1955 (note that a number of other companies own the US rights to “tropicana” in other product categories; any of which could likely lay claim to tropicanafield as well).
Now; had he been using it for “non-profit” purposes, i.e. as an opinion/complaint-type site directed to tropicana and/or tropicana field and/or the Rays themselves; he might have had a chance (were he willing to fight for it).
But it’s way too late for that.
Were it my domain, I would immediately transfer the domain to Pepsi, and just chalk it up as one of life’s lessons; before getting gets hit with any “no win” legal action/s.
While arguably not as good a domain to use, there’s probably even today a number of reasonable .com domains he could use for his purposes which are available to be hand registered.
Not being an attorney, this is of course not legal information or advice for anyone; including Chris.
I’d say it’s a combo of those. Use, though, “can” play a big role for domain names bearing what I call “uniquely famous” marks like Google.
The guy can contact Paul Levy at PublicCitizen.org. He’s the one who helped the Fallwell.com registrant in his dispute with the late Rev. Falwell.
Oh, and I forgot to add InternetJustice.org, the University of San Francisco School of Law’s clinical program. Unfortunately Mr. Dunne will likely have to spend money, but at least there’s some people out there who can help him out.
Mr Dunne,
One other thought…
WE (all domainers) reading THE DOMAINS, are sorry to hear of your daughters disease and medical bills. Might I suggest that you negotiate with the hospital, doctors and other medical recipients for a discounted “settlement in full” amount and present that discounted amount to Pepsi in exchange for your domain name. I assume they can write off the medical, and I assume you don’t incure lots of income, yet take care of the medical bills. (Tax Attorney recommended).
Great PR for them.
They help a child…and your domain name did what it was supposed to do, BE VALUABLE.
WE all hope she improves.
JustMyHumbleSuggestion,
Ed – Michigan
Mike,
Lets agree to disagree.
I vote for Pepsi for this one.
Write another post so we can put this to rest :-))
Alan
“Pepsi didn’t even register the domain for 2 years it was unregistered …The domain holder had it parked for several years maybe waiting to hear from the trademark holder and heard nothing .. After waiting years and years to hear from the trademark holder and having heard nothing, he developed the site into an information site not about the team or the stadium but really about restaurants, bars, hotels and other businesses that someone visiting THE STADIUM might want to check out.”
Sorry MHB, but this is utter nonsense. If you’re this passionately blinded by your support for this gentleman then step up and represent him pro bono against Pepsico.
1. Pepsico didn’t have to register that domain name to have rights to it.
2. The registrant waiting for the trademark owner would show he knew of Pepsico’s rights.
3. The material on the site relates to fans who would visit the stadium and the area around it.
4. Pepsico had a Federally registered TM on the name with usage in commerce well before (years) Chris ever registered the domain name.
5. Chris clearly knew of the stadium and its namesake when he registered the name.
6. Simply parking the name all those years would not qualify for laches.
7. Pepsico can request in Federal court triple damages because he is trading off their TM name for profit.
For the love of all things equitable, he needs to settle before this gets out of reach.
I learnt a lesson the hard way when my registered dormant .com was trademarked in the UK, how was I to know this was happening without checking the UK trademark journal regularly !! After the UK statuary opposition period the Dye was cast.
Alan my comment was not about domain registrations, I wanted to show that the comments seem to be emotionally bias against the corporate (Pepsi)
My generic domains are parked, I chose to park them, my agent then advertises his clients goods on my lot, IMO that is development.
I now have a number of TM registrations that after a grace & favour period I must show are trading, Why on earth should I play an ICANN game and register dot this & dot that, pay attorneys fees to stop unscrupulous individual domain registrants who claim online traffic rights to my business !! I am not required to register any domain once I have registered my TM in the appropriate category, I am not aware of any legal retrospective enforcement that informs me I must register dot me dot mobile dot ??? or I will lose my online business to an ambulance chaser or an individual who was sold a pup by an unscrupulous company.
Alan,
I think the flaw in your line of thought is in your argument about when the clock should start the latches concept.
“Up until this year the site was parked – so even the owner – may have had no idea what content was displayed on the name as all the ads, graphics etc… were served by a third party.”
PepsiCo had 5yrs to object when it was parked. Parking is a form of use. At least three entities made money off the traffic to this domain: 1)Google or Yahoo 2)Parking Co. 3)Chris Dunne
Not to mention that the traffic probably went to MLB and who knows if they made any money.
Mr. Dunne was in control of the domain for 7yrs. 5+ yrs it’s been designed to draw income whether it’s been developed or parked.
It doesn’t matter if the revenue to Mr. Dunne was $1/yr or $1,000,000/yr.
What’s important is that PepsiCo didn’t think it had enough traffic or monetary value to go after it until the Rays became a playoff team.
Mike, I think that you’ve got a valid argument with latches as I understand it. I think one of the higher profile domain attorney right here in Florida ought to take this case on pro bono. Maybe, you could call this to their attention.
If the Rays go on to the World Series and win this could become a real high profile case.
If Mr. Dunne can successfully be defended this could really be a huge break for all domainers and possibly get the whole issue of “what is cybersquatting” into the mainstream press with a positive light on our industry.
The more wins domainers have defending the more case law that others have to help in the future.
The money spent defending by a law firm would be “payed back in spades” with future paying clients that would have more confidence in standing up against corporate America.
They just need to win with the latches concept.
Koz
“PepsiCo had 5yrs to object when it was parked.” KOZ
– There is no statute of limitations on claiming TM rights. How many times do I need to state this.
“Parking is a form of use.” KOZ
– Use, but not “not use in commerce”. There is a clear distinction and it is paramount here.
“you’ve got a valid argument with latches as I understand it.” KOZ
“They just need to win with the latches concept.” KOZ
– Laches will not be an equitable defense here. The mere mention of it is a complete diversion as it realtes to this matter.
“The more wins domainers have defending the more case law that others have to help in the future. ” KOZ
Trust that you will not want this as a case reference in any future matters.
KeyArena.com
KeyCorp and City of Seattle v. i-designsolutions.com, Inc.
Link:
http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0104.html
“Complainant has a United States federal trademark registration for the mark KEYARENA which was registered prior to Respondent’s registration of the disputed Domain Names.”
This is a good reference case for all of you to read.
Ken
Nice working digging this up.
Reading through, although the cases have a lot of similarities, some of the important facts are different.
Note some of the language in the opinion:
“”””Respondent has never used the Domain Names in connection with providing any goods or services legitimately associated with those names.””””
This is not the case here, the guy is in fact using the domain exactly to provide legitimate services associated with the domain
“””Respondent indicated that “No website has ever been uploaded to the Internet addresses http://www.keyarena.com“””
Of course in this case there is an actual site up, nt a parked page.
“””The Policy paragraph 4(b) allows three nonexclusive methods for the Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Names:
(i) before any notice to Respondent of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue””””
personally I think the domain holder in this case meets (i) for sure and maybe (ii).
Finally the panel found:
“””Respondent’s constructive knowledge of KeyCorp’s trademark rights at the time of registering the Domain Names, his actual knowledge of KeyCorp’s rights at the time of renewing the Domain Names, his knowledge that Complainants had refused a trademark license at the time he renewed the Domain Name registrations, his failure since 1999, to use the Domain Names in connection with lawful business activities and his repeated refusals to transfer the Domain Names to Complainants after his request for a license had been denied are all evidence of Respondent’s bad faith “””
In this case this guy never attempted to license the trademark and never had contact with the trademark holder, so he had no actual notice; he did use the domain and build out a website, although I will agree his case would have been helped immeasurable if he had done so shortly after acquiring the domain, not years later.
Having said all that i do believe that this panel under the current facts would have given the domain to the trademark holder.
But I think the domain holder in the current situation has a much better case and might fare better with a different panel.
Good job Ken.
– Thanks MHB, I appreciate that. Thank you as well for sporting a valid debate. I did notice the differences that you mention but I also felt it was still a very relative case.
“so he had NO actual NOTICE.” MHB
– Not true. From Case No. D2005-0104 (KeyArena.com):
“The … trademark was registered with the United States Patent and Trademark Office (“USPTO”) … prior to Respondent’s registration of the Domain Names … . Registration of a trademark with the USPTO provides CONSTRUCTIVE NOTICE of the registrant’s claim of ownership thereof. 15 U.S.C. § 1072. Where a Respondent has constructive notice of a trademark, and yet registers a confusingly similar domain name thereto, the Respondent cannot be said to have a legitimate interest in the domain name.”
– A lot can be pulled from this decision, but overall it validates Pepsico’s rights here.
– A trademark owner is not obligated at all to tell every person or entity about its TM rights. The registered TM gives them a constructive means by which to lay claim within the courts. This gentleman lives in Tampa, knew of the stadium, registered its namesake as a domain thereafter (Pepsico’s Federal TM), parked it until 2008, and then developed a site trading off that name to sell advertising.
– Pepsico may or may not use UDRP. My bet is they will skip that process and go straight to Federal court over the TM issue. Most do not understand this.
Ken
He definitely had constructive notice, but since he never contacted the trademark holder and the trademark holder never contacted him he had no actual notice.
I think Pepsi will go right to Federal Court as well.
That is what you do when you have a defendant with limited funds, overwhelm them with costs.
I’m not a lawyer and don’t know much about the legal wranglings. I do know a little about marketing, if PepsiCo missed the boat in doing their job then they gave up that right. So to say that PepsiCo did all the work is nonsense. I totally agree with Mike on this one.
As far as PespiCo is concerned, this would be a bad public relations case for them. It would be in their best interest to settle out of court and help the man out.
I simply see this site as a fan based site and hey, if the gentleman is able to capitalize on it – then he should. That’s what this country is was built on. The more restrictions are placed, whether it’s this case or the Kentucky case, the more liberties we lose.
“I simply see this site as a fan based site and hey, if the gentleman is able to capitalize on it.” db
1. It’s not a fan based site. It is an information site that is selling advertising and capitalizing on someone else’s prior Federal trademark. It goes against established trademark law.
“PepsiCo missed the boat in doing their job then they gave up that right.” db
2. Pepsico marketed, used in commerce, acquired a Federal trademark, and served notice (TM) to everyone, including this gentleman about their exclusive rights to “Tropicana Field” before he ever registered the domain name.
3. I foretell Pepsico will do nothing for this gentleman’s infringement; whether that’s pay his understandable medical bills, give him 70K, partner with him, or anything beyond paying his “reasonable expenses” to transfer the name. That’s if they settle out of court, which is the likely outcome. If they don’t, he’s looking at triple damages. The only bad PR for Pepsico would be if they try and make some sort of an example out of this gentleman which they know is not in their best interest. All they want is the name.
– The domain industry is in big trouble because its base doesn’t even have a basic understanding about laws. Personal opinions will mean nothing in court.
Ken, if they had done proper marketing then they should have registered the name years ago. PespiCo should go hire a new marketing department.
I’m not a Ray’s fan, but I’m a sports fan. It looks like he’s endorsing the team to me.
Opinions is a liberty.
Here’s something the ICA can do to drive new membership. Offer their community courses on the basics of trademark law. Know what the other side already does and you’ll be more empowered in maintaining your rights.
On the other side of the coin, if ICA wants to increase membership, then they should hire more lawyers.
DB
The ICA doesn’t have the money to hire more lawyers, but many serve on the advisory board for free
MHB, nice blog. thanks for writing it…I am a reader from inception. lets take u back to law school, counselor 😉
Consider a different case. Mr. Citizen registers the name ‘wilsonfield.com’. Add the following facts:
1) a certain area, before a sports stadium was built in the vicinity, was known in the local vernacular as the ‘wilson field’ because it was the back yard of a rich and famous town resident, Mr. Wilson.
2) the sports stadium was originally named Adidas Field, but recently Wilson (the sporting goods company) acquired 10 year sponsorship rights and the field is now named ‘Wilson Field’
3) Mr. Citizen puts up a website detailing things to do around ‘Wilson Field’. Eventually the site expands to include links to things related to the sports team playing at the field (standings, tickets, etc.).
4) Wilson, in year 5 of the 10 year sponsorship agreement, goes after Mr. Citizen for the name.
What does the above scenario say about tropicanafield.com vs. wilsonfield.com ?
Mike, it’s good to know that there are counselors out there who give their time for the good of peoples rights and I’m very thankful for them. Their service is an honorable one. I’m glad there is someone looking out for me or Mr Dunne interests.
The point I was trying to make is that it’s a vicious cycle. It’s not about an individual’s rights, it’s about how many lawyers each side can muster up and much money is spent.
I’ve seen this too many times. We should all, in this industry, stick together and let the industry weed out the bad apples. If there’s no cohesion then we allow external forces such as big business, states and individuals to encroach on the freedoms of internet commerce.
Again, I’m just a layman. Someone from the outside looking in. I like the freedoms and opportunities this industry has to offer. The day it stops is the day you will see a decline in its’ growth. This ideology has been around since the conception of the internet and we should never forget it.
DCH
I think that Mr. Citizen would have a very good claim to keep the domain under the facts you describe, but let me add this variable:
What if after Wilson acquired the naming rights to the field, the domain wilsonfield.com was unregistered and Wilson after spending $30 Million++ for the naming rights did not bother to spend $7 more to register the domain??
I think the domain owner has every right to argue his case and use this “laches” defense but also Pepsi has every right to sue him for trademark infringement and damages.
Pepsi doesn’t have to prove that the domain is a valuable asset and it will be interesting to see if they have to come up with a reason why they took so long to go after the guy.
I’m sure this guy new he was swimming in a dirty pool when he bought the domain. He may have a case but he is the one who will have to prove it, not Pepsi.
Rob
Well said.
Unfortunately to play that game, we all know you need a lot of money. Pepsi’s got it, and the guy with the sick baby doesn’t.
MHB-
I would say that in the wilsonfield case, it doesn’t matter if the name was registered after Wilson acquired the rights, because there exists a use of the word ‘wilson’ that is generic.
However, there is no generic use of the word ‘tropicana’ ….it is a derived term that does not exist in the dictionary.
This is what the case turns on in the tropicanafield scenario…’tropicana’ is not a generic term, it is a contrived term.
Dunne is riding on the goodwill of the ‘tropicana’ name (the visitors come to his site because of the name ‘tropicana’).
Citizen is also riding on the goodwill of the ‘wilson’ name, however, he has a defensible position because ‘wilson’ can be something besides a trademark.
MHB-
Reading the post again I remembered your laches question
laches is a form of estoppel, if I remember correctly..
Estoppel usually requires deterimental reliance, and I don’t see it anywhere in the tropicanafield facts..
A paragraph with no authority, but it sums up my point:
“A defendant seeking the protection of laches must demonstrate that the plaintiff’s inaction, misrepresentation, or silence prejudiced the defendant or induced the defendant to change positions for the worse.”
Dch
I agree with you.
“A defendant seeking the protection of laches must demonstrate that the plaintiff’s inaction, misrepresentation, or silence prejudiced the defendant or induced the defendant to change positions for the worse.
I would argue that the defendant did rely on Pepsi inaction when he held the domain for years as a parked page and spent time and money to develop the domain into a site only to then have Pepsi complain
MHB,
Where did you find this story about TropicanaField.com? In a newspaper, TV, or did this gentleman contact you directly?
Are you considering representing this case? If so, are you licensed to practice in Florida and in particular the Federal district court’s jurisdiction this case would fall under?
If you do have contact with the owner of tropicana field.com I hope you do the right thing by him and recommend that he settle; not only because of the cost issue but because the argument for his defense is completely flawed and it will lose in Federal court as well as with the UDRP.
Where did you find this story about TropicanaField.com? In a newspaper, TV, or did this gentleman contact you directly?
The story was reported online by several media outlets in the Tampa area.
Are you considering representing this case? If so, are you licensed to practice in Florida and in particular the Federal district court’s jurisdiction this case would fall under?
Although I’m a member of the Florida Bar, I went into inactive status years ago, so I didn’t have to keep doing CLE and taking Pro bono cases, as required to keep active status, so I cannot represent anyone else in any court, other than myself.
If you do have contact with the owner of tropicana field.com I hope you do the right thing by him and recommend that he settle; not only because of the cost issue but because the argument for his defense is completely flawed and it will lose in Federal court as well as with the UDRP.
I did write to him.
MHB-
“…the defendant did rely on Pepsi inaction when he held the domain for years as a parked page and spent time and money to develop the domain into a site only to then have Pepsi complain.”
how did he rely on Pepsi’s inaction if Pepsi did not have anything to act on until April 2008? (the date the site came up, according to your post). Before then the name was parked and Pepsi would have had to show that his use violated the trademark…
the primary inquiry (before the use inquiry) is ‘does Dunne have any rights in the string of words ‘tropicanafield’ outside of the realm of ‘Tropicana Field’ the ballpark?
In Citizen’s case above, he would have rights, as the name wilsonfield existed in the world before ‘Wilson Field’ the ballpark.
Ken,
I think I need to make my position very clear here.
I’m most definitely against TM infringment. Nor do I think cybersquatting as it’s truly defined has a place in our industry. It’s very detrimental as a whole.
If there is a legitimate claim by a TM holder and it specifically applies to a domain in question and the TM holder asserts their rights in a timely fashion. Then they deserve to have the domain.
Mr. Dunne surely has a name that 7 yrs ago, when he registered the domain had the potential to infringe on a TM Tropicana (PepsiCo) held a TM for.
My problem is sometimes Mike really gets you to think. (Damn lawyers…….LOL)
In this case, I happen to agree with Mike, that you have an issue with time.
Why didn’t they want this name for 7+ years?
Obviously, it wasn’t an oversight. Maybe, they didn’t feel there was any value in the name or maybe the costs associated with TM enforcment wasn’t rewarding enough, in the past, to offset those costs. Who knows the real reasons.
What ever the reasons….times have changed, the Rays are going to The World Series and guess what?
Now, the name has more value to them!
C’mon, Ken, do you really think that the chief trademark counsel for PepsiCo didn’t think about going after that name until recently. (They have a chief TM counsel!!)
Ken, are you an attorney?
Regardless, you act like this is a forgone conclusion, yet in your own words:
“Do laches apply here. Of course it would be up to a judge to decide that.”
I agree with you that a judge should decide this issue.
Ken you also said:
“There is no statute of limitations on claiming TM rights. How many times do I need to state this.”
Maybe, there isn’t a statute specifically limiting time. But, under the doctrine of latches “which is an equitable defense which penalizes Plaintiffs who fail to assert their trademark rights in a timely fashion”. This is a time sensitive legal defense concept.
Again, I’ll repeat it for you Ken, the whole basis of the latches defense hinges on time. So, in essence there are time constraints on Federal Trademark holders.
Latches may apply in this particular situation. It’s not for you or I to decide, but a judge.
Koz
Scott, please, it’s spelled LACHES.
Merriam-Webster’s Dictionary of Law:
Main Entry: la·ches
2 a : a doctrine permitting dismissal of a suit because a plaintiff’s unreasonable delay in asserting a right or privilege has been detrimental to the defendant’s ability to MAKE A DEFENSE (as by resulting in the unavailability of witnesses or evidence)
/ “Why didn’t they want this name for 7+ years?” KOZ /
That’s an inaccurate assumption.
I’m telling you and everyone AGAIN, that laches will have no valid application here. Why? The owner of the domain name never made an effort, on his own, to “make a defense” until almost the middle of 2008. In this case that would have constituted him actually using the domain name for a website back when he first registered the domain. Conversely, Pepsico would have filed back then as well. Parking will not count at all towards laches.
There are time constraints on trademark holders only as it relates to their own usage and trademark renewal and the usage by others of the same mark that may infringe on the rights of the trademark’s owner. This gentleman only started USING the domain this year and Pepsico is asserting their rights in a timely fashion.
He registered the domain in 2001, almost three years after Pepsico had registered a Federal trademark on their usage of “Tropicana Field” dating back to 1998. Not only that, but the word “Tropicana” itself is a trademark of theirs dating back to the 1940s which by 2001 would easy have a broad scope to reach into other trademark categories.
Chris D. never had a right to register any domain name that contained the word “Tropicana”.
/ ” Mr. Dunne surely has a name that 7 yrs ago, when he registered the domain had the POTENTIAL to infringe on a TM Tropicana (PepsiCo) held a TM for.” KOZ /
Not “potential” Scott, it DID infringe on Pepsico’s prior established trademark. The argument that Pepsico was somehow obligated all those years to inform Chris D. of their rights is incorrect. It’s the obligation of every domain registrant to check for trademark issues before registering a domain name. Check any registrars T&C.
I’m certain that Chris D. or someone he’s had contact with over the years has seen or purchased a container or Tropicana ® juice or saw Tropicana Field ® before he registered tropicanafield.com. Chris D. had “constructive” and “actual” notice of Pepsico’s trademarks.
Someone should should buy
tropicanadomainbattle.com
and get a pool going on this case 🙂
Ken,
My apologies on the spelling….LOL
I’ve been involved in the fencing industry for years and I kept seeing latches not Laches.
At any rate. Your point is not lost on me.
Neither is Mike’s assessment.
Ken your last point “Chris D. never had a right to register any domain name that contained the word “Tropicana”.”
You strongly make this statement as factual when you must know there have been UDRP decisions that have denied complainants with a US trademark the respondents domain containing a TM name in it.
Exact TM and confusingly similar!
Here’s Is a decision that went against the famous TM Velcro as an example:
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0864.html
So, Chris Dunne, or anyone else, did have a possible right to register a domain containing the word “Tropicana” or “TropicanaField”
Koz
Scott,
You are correct in that certain famous trademarks over the years have become generic (diluted) as they relate to the category they represent. Velcro is a great example of this. But, Tropicana ® has NOT become a generic word which can be used to represent orange juice. It’s not used in that way here in Florida or anywhere else. That is factual. If it were then you would have a valid argument.
/ “UDRP decisions that have denied complainants with a US trademark the respondents domain containing a TM name in it.” Koz /
Show me a “TM” symbol anywhere on tropicanafield.com; I’ve already looked. There is none. Yet, even if Chris D. had claimed a “TM” it would be invalid. Why? He’s using the domain name as it relates to Pepsico’s registered trademark for the stadium. From tropicanafield.com:
/ “Your local guide of places to go and things to see while you visit TROPICANA FIELD in St. Petersburg, Florida.” Chris D. /
He’s not using it as a fan site. Chris is trying to run a business from it selling advertising.
/ “So, Chris Dunne, or anyone else, did have a POSSIBLE right to register a domain containing the word “Tropicana” or “TropicanaField”” Koz /
It’s only possible if Tropicana were a generic way to refer to orange juice. Which it is not.
Now, on the flip side. Check out the real Tropicana Field’s homepage:
http://mlb.mlb.com/tb/ballpark/index.jsp
Notice anything missing? There is no “®” symbol anywhere next to the multiple references to “Tropicana Field”. This is the time to take your certified timestamped screenshots. That is a huge mistake. It doesn’t negate Pepsico’s registered trademark rights BUT it does go against there ENFORCEMENT of those rights. When you receive you “®” status you are supposed to attach that anywhere the word is used. When you don’t, you weaken your own rights to protect its usage by others. Not completely, but it is weakened. That is the only opening this gentleman has.
This was just an example and it not enough, on its own, to go against the mountain of evidence against Chris D.; he should still settle this out of court.
As a side note, I have now found images of print materials and signage at the stadium where “Tropicana Field ®” with the registered symbol is used. That in itself is enough balance out their none usage of the “®” on their website. It’s just a crack now instead of a gaping hole, but a mistake none the less.
I am the site-designer of tropicanafield.com and have known Chris Dunne for about 2 years. I had done a previous website for him for free and charged very little to do this one.
I am not a lawyer but I have been glued to my monitor reading your reactions. I can say positively that Chris did not have any knowledge of trademarks or how to check them before he asked me to design the site.
I asked him, since he has owned the name for 7 years if he had had been contacted by anyone and he told me he has not.
It is not a big money maker, it is more about principle. He is a huge Rays fan and Pepsico had no interest and Chris had no knowledge that he was doing anything that could be a problem. He is not generating much income from the site although he has generated a ton of interest.
Here is my question, why isn’t there a clearing house that would stop trademark names from being available for sale? This domain and site-hosting is through GoDaddy and they wanted nothing to do with helping Chris with the tropicanafield.com controversy. Since anyone can buy any available name shouldn’t there be a way to prevent this problem at the registrar level?
Also, the letters from the Pepsico attorneys do not state anything about domain names and “field” is not included in the trademark. The cyber-squatting argument does not wash because he has not tried to force Pepsico into buying the domain for an extreme amount of money and we added in large print “This website is not affiliated with Pepsico any any of it’s subsidiaries” which to me would take away the argument that he is trying to make people believe he is part of the company.
Chris is still looking for a lawyer to take it on pro-bono or to be part of a settlement should it come to that. One atty I talked to said he should photo copy his middle finger and fax it to them writing on it “Make me an offer” I think he hopes for a more civilized way to handle this. He has tried talking to their attorneys but they will not budge. I advised him (again, not a lawyer) that he should not commmunicate with them at all until he has a legal document from a judge to do so or a court date.
Donna
Thanks for commenting.
Here are some thoughts to address some of your questions.
You cannot use “i didn’t know about the trademark” defense because like the old saying “ignorance of the law is no excuse.”
There is of course a public record of all US federally registered trademark and whether you look or not your are imputed with the knowledge.
Also courts generally will impute knoweldge to you when you deal with “famous” trademarks. That is trademarks that are so famous everyone has or will be thought to have heard of them. Such trademarks like Coke, McDonalds, Verizon, Tropicana.
Your comments regarding the registrars is a valid one.
If you read back through this blog you will see many posts where I call out registrars for letting obvious trademark domains to be sold and auctioned off though their systems, including Godaddy.com.
I don’t think registrars should allow the sale obvious trademark infringing domains on their site or advertised on their site, however, I understand that Chris registered this domain rather than buying it and for that there is no filter or way of stopping the registration of a domain.
There is no central agency which controls what domains are allowed to be registered.
There are millions of trademarks and servicemarks in the US alone. No system, could attempt to block all of these including variations and typo’s.
Now to the practical matters.
Trademark litigation is expensive.
Very expensive.
Especially when your fighting a plaintiff like Pepsi.
If Pepsi files a complaint in federal court your looking at tens of thousands of dollars in fees at minimum and could possibly reach into the six figures.
The Latham Act provides trademark holders with all sorts of goodies including penalties of up to $100K and having to pay for the trademark holders attorney fees which will also be very expensive.
If Chris doesn’t have the means to attempt to defend the action, then he really has no choice other than to give the domain up.
This is the practical answer.
/ “The cyber-squatting argument does not wash because he has not tried to force Pepsico into buying the domain for an extreme amount of money and we added in large print “This website is not affiliated with Pepsico any any of it’s subsidiaries”” Donna /
The mere registration of a known trademark qualifies as cybersquatting. So it does wash Donna. Registrars are not responsible for domain registrations. It’s the responsibility of the registrant to check for any trademark issues before acquiring a domain name. It states this in almost every registrars Terms and Conditions.
/ “Pepsico had no interest …” Donna /
This is entirely inaccurate and a complete assumption. Pepsico has registered trademarks on “Tropicana ®” (longstanding) and “Tropicana Field ®” (use and registration before Chris’ domain registration). There are plenty of tools out there to find this information, uspto.gov for example, or you can just look in your average fridge for a carton of Tropicana ® Juice or visit St Pete and see the sign out in front of the stadium that reads “Tropicana Field ®”.
/ 1.”Chris had no knowledge that he was doing anything that could be a problem” Donna /
And ….
/ 2. ““This website is not affiliated with Pepsico any any of it’s subsidiaries” Donna /
This two contradictory statements show that you and Chris have little knowledge of trademark law. By placing that disclaimer on his site it demonstrates that he DID have knowledge of Pepsico’s trademarks.
/ “Chris is still looking for a lawyer to take it on pro-bono.” Donna /
Lawyers don’t normally take on business versus business cases pro bono. Also, this case is pretty clear cut with no distinct advantage for a lawyer to take the case pro bono with any hopes of recouping his fees through the courts. They rarely award fees in this sort of case. It’s the cost of doing business.
/ “One atty I talked to said he should photo copy his middle finger and fax it to them writing on it “Make me an offer” Donna /
Lawyers …. this is not surprising at all. They want to keep the pot stirred. It creates more billing hours and fees for them. This is one reason why they always recommend that you don’t talk with the other party. Why? Because it could lead to an early resolution. Let me give you a recommendation (non-legal), seek out a meeting with the other party, with legal counsel present, and work out an amicable settlement.
And heed MHB’s most recent advice. It’s 100% accurate.
So, bottom line, should we contact Pepsi’s Lawyer and ask for a meeting. I don’t want to get a lawyer yet, I just want to see what they want to do first. Is this the smart thing to do??? If we don’t contact them What would there next step be? Pepsi
If you don’t contact them they will wind up filing suit.
What do you hope to get from this?
You are not going to talk them into letting you use the domain. The only chance your going to have to keep the domain is though a legal determination which is going to cost.
First, anything posted here is non-legal advice. It’s always best to seek the advice of a lawyer. Even then, don’t be manipulated; use common sense and humility. Lawyers always want you to fight.
The domain is registered under Chris’ individual name. Are you claiming ownership as an individual or a business?
You can represent yourself pro se with the UDRP and Federal court as an individual. If you are operating as a business, Federal court requires that you have legal counsel; unless you were a lawyer yourself at which point you could represent yourself in Federal court.
/ “So, bottom line, should we contact Pepsi’s Lawyer and ask for a meeting.” Tammy /
Absolutely …. BUT, I would NOT speak with any companies lawyers without having your own representation. That’s a big no no. They would take advantage of your position. Seek representation to at least negotiate a settlement. But don’t allow your counsel to start battles with the other side; which they’re always inclined to do. Realize what your position is; its weaknesses and strengths. In this case Pepsico has the upper hand and they can beat you with trademark rights and monetarily.
/ “I just want to see what they want to do first.” Tammy /
You already know what they want to do. It’s not smart to play games here or “point fingers”. Pepsico wants the domain name. That’s it. Anything else is just a side show. What you want is to avoid a UDRP decision and/or Federal court.
/ “If we don’t contact them What would there next step be? Pepsi” Tammy /
Pepsico will either file with the UDRP or Federal court. Either way you are looking at expenses here. The only way to avoid substantial costs (hopefully) would be to simply comply with their demand and hand over the domain name per their instructions.
I know it sounds crass to just give in to an entity with more power and money. I know. But, you fight the good fights and end those that aren’t worth the heartache, headache, or the money.
Hopefully, as amicably and equitably as possible for both sides.
Basicially I would like to call Janet and ask her if we can sell the domain name to Pepsi come to an agreement and be done with it. I don’t want Chris hiring a lawyer for such a simple question for them. If they were to say no then OK I will find a lawyer who wants to take the case and get paid if the lawyer ends up getting them to buy it. So with such a simple question for them why does it have to be so dam complicated and expensive. By the way my daughter is sick I have not worked for weeks She has Chrones Disease and has been in the hospital for weeks. I have not gone to work because I work 10 to 12 hour shifts and I cant not see her while sick and in the hospital. Before we did not have insurance that is why he started using to site because without my income things are very tough. So he knows how I feel about leaving her home or in the hospital without me, so he was supportive about me not working, thats why he started building this site. For the money from the advertising Plain and simple. Bills still have to get paid. Would it be great if Pepsi would buy it Of Coarse, So again should I put a call into Janet and stick to the basic question and leave it there? If we have to give it up then so be it. But what makes me so mad is that we have contacted them a couple of times asking if they wanted this site and they said no.
Tammy
Your way out of your league here.
No attorney is going to take this case and be paid on the basis of you selling the domain.
If you call Pepsi and tell them you want them to buy it your going to get sued for sure and your offer to sell will be used against you.
It’s so damn complicated and expensive because it’s the US legal system and that’s the way it is.
I would take Ken’s advice and consult with a good trademark attorney before taking any action with Pepsi or their counsel
The first deadline is today to turn over the domain. We were told that this letter that we got from them doesnt mean very much. Lawyers have been giving so much different advice as far a this letter. I don’t want to be in hot water and the deadline is today.
That’s why this phone call is important.
OK your right. Thank You for the help.
MHB and Ken
Sigh:
http://domains.adrforum.com/domains/decisions/1235498.htm