Rick Schwartz’s company Virtual Dates, Inc has filed a second UDRP based on his “Domain King” federally registered trademark, this time on the domain name DomainKing.biz.
About a month ago Rick Schwartz filed a UDRP on the domain name DomainKing.ng.
.Ng is the country code (ccTLD) for Nigeria.
At that time Rick told TheDomains.com that the UDRP on the domain DomainKing.ng was “the first of several actions that will be coming against those who are profiting from the goodwill off the trademark of “Domain King” which Rick’s is widely known by in the domain name industry.”
Rick said at the time “I will be going after any site which is profiting off my good name and my protected trademark.”
Rick not only is commonly known as the Domain King inside the domain community, but his company has a federally registered trademark on the term “Domain King” in the United States since 2003 (which was renewed in 2012) as well as a European trademark.
Like DomainKing.ng which is a domain name registrar, DomainKing.biz is basically the same site and is owned by the same company “Hannu Internet Corp.” which according to the site is “A Global Web Services Company founded in 2008.”
Also according to DomainKing.biz, Hannu Internet manages over 10,000 domains for clients around the world”.
The company is located in Jalandhar India.
With all due respect, there’s no guarantee Rick will win the UDRPs. Has he ever won any UDRP for the term “Domain King” in any extension?
Moreover, his “domain king” issued trademark is not only generic, but is also limited to licensing of domains and website development.
That does not necessarily give him the right to monopolize the term across all industry, not possible for a generic.
That said, anyone can use and/or trademark same term under a different class of Goods & Services. Unless of course Rick applies for the mark in all the class/codes USPTO and international trademark offices has to offer.
Lastly, the generic word “Domain” has multiple dictionary meanings:
• An area of territory.
• In mathematics, a set of possible values of the independent variable or variables of a function.
• In physics, a discrete region of magnetism in ferromagnetic material.
• A specified sphere of activity or knowledge.
• A distinct subset of the Internet with addresses sharing a common suffix.
There’s also “domain” in biology, real estate, etc.
A trademark does not guarantee any wins, especially where Respondent has a bona fide use of their domain, with over 10K domains in management as claimed. Many trademark holders have lost in the same fashion.
Anyway, good luck to Rick on the UDRPs; he has the money to throw away at any number of proceedings he so wish.
Does anyone think otherwise?
Do you have some beef with Rick Schwartz or are you simply demonstrating your ignorance about trademarks?
In 2009, the mark was given incontestability status, after Section 15 was filed and granted.
In 2012 it was the mark’s 10th year renewal as well.
This is NOT a weak mark, and there are no “generic trademarks.”
The respondent better prepare a good lawyer.
nobody has the right to be a King
nobody
This is not about any royalty dude. It’s about a registered trademark. Don’t mix facts with kooky statements.
the TM department doesn’t check the TM
they just want to get your money
this TM never should be be registered
this TM should be cancelled
don,t call me Dude
@ Acro : are you listen to your own words ?
The USPTO made a thorough job and allowed the mark 13 years ago. Cry all you want.
It’s incontestable, can’t be challenged or cancelled.
Sorry dude. Or whatever your name is.
this is typic for domainers
you don,t pay any attention
first : my name is clear ( michael ehrhardt )
second : every TM can be cancelled
do your homework
Maybe in Germany you do things differently. In the US, an incontestable trademark can’t be canceled.
It seems you enjoy spreading misinformation fueled by your own agenda about Rick Schwartz.
Maybe a better example of incontestable?
I believe Ferrari had their well known trademark “Prancing Horse” cancelled in the USA?
Groovy – Section 8 declaration is mandatory between the 5th and 6th year since the mark’s registration. Ferrari did not do that for “Prancing Horse” and thus the mark was canceled.
Rick’s not only done that, he has also filed section 15 (incontestability) and subsequent section 9 (10 year anniversary renewal.)
you proof that you are superficial
if this TM can,t be cancelled in the US than TM this has no meaning in INDIA
you driving on the wrong side
I thought you said the trademark could be cancelled? Now you’re agreeing it cannot?
Typical beer talk.
It doesn’t matter if the domain is in India, if the UDRP establishes the 3 required elements, the domain will be transferred. The dot .Biz registry is in the US.
Gute Nacht.
You really don’t pay attention
If this is an international TM it can be cancelled
If this is a national TM it can be cancelled
( und hat keine Bedeutung in andere Länder )
You are still driving on the wrong side
Don’t think in english
English is a west germanic language
Learn your history
Guten morgen
@Acro
There’s nothing in my comment that should give anyone the impression I have issues with Rick; he is a veteran in the “domaining world” and I respect many of his stance and contributions to the industry.
But this is a trademark issue and I have no association with any or all of the parties involved. Heck, I could care less if any of the parties involved; win or lose. I just enjoy sharing my views on UDRP proceedings.
If you think no other entity can trademark “Domain King” under a different class of Goods & Services with the USPTO, and that an issued trademark gives the holder the right to monopolize the term across all industry, including a guaranteed win of UDRP proceedings—irrespective of Complainants who have lost in the same fashion; then you have the right to think otherwise.
I will revisit this post and follow-up with opposing comments after the outcome of the said UDRPs. I’m sure TheDomains will keep us updated on the outcome.
PN – My reply was directly below a comment left by this “Michael Eh” guy – Mike Berkens deleted his comment, as he should with comments reeking of kooky content. Unfortunately, now that the comment was deleted, it appears as if I’m responding to you; I wasn’t.
Regarding your argument about trademark classes and the UDRP process, all that matters is a valid mark. The use of the DK brand by the Respondent can create confusion, and it has done so. It’s as if I open up a cow burger joint in India and call it ‘Cow Burger King’.
@Acro — no issues 🙂
Just to add, in my opinion one of the issues with Rick’s UDRP (and trademark) is that, there’s really no bona fide offering in connected with the mark so to speak, except that it’s a self-proclaimed nickname.
Complainant — Rick’s DomainKing.com redirects to RicksBlog.com, a blog that has been abandoned(?) since December of last year.
Respondent on the other hand, is using their DomainKing.biz/.ng domains with a bona fide offering, which is domain name registration and claims to have more than 10K domains in management.
This is a service Rick does not provide with his issued mark. So yes, his mark is valid and has been for several years. But are there any (real) bona fide offerings associated with his mark? No. Rather, his company name filing the UDRP is “Virtual Dates”, and the mark for that has been dead since 2006 according to USPTO database.
That said, the argument of brand confusion is weak and I don’t see that swaying the panelist(s) to decide in Rick’s favor.
PN – I’m all for a meaningful discussion. 🙂
Rick’s trademark is not at issue here, it’s the infringing domain that is. Whether they offer “bona fide” services or not, that particular mark is not owned by them, but it’s being infringed upon. They aren’t offering a perfume called Domain King, they are selling domain registrations in an industry where the Domain King mark is famous. They cannot claim being unaware of the mark’s “notoriety,” in other words.
Regarding Virtual Dates, it’s Rick’s the company holding the mark:
(REGISTRANT) Virtual Dates, Inc. CORPORATION FLORIDA P.O. Box 810276 Boca Raton FLORIDA 334810276
That company is very much alive. So where is the issue?
I tend to agree, what’s the old saying ” only the lawyers get rich “. Not saying he has no right to try but winning and value behind the action is questionable.
btw DomainKing.org is at BuyDomains with a $4k BIN, if he truly wants to protect the term in the domain space why not buy the third or possibly second best extension for a measly $4k? DomainKing.net even cheaper at $1,250!
Not my names by the way just noticed this, curious how serious he was about protecting a brand.
Good point jp he should buy them.
he is going after all those active websites only….he ain’t no king….only self proclaimed…duh!!
This should be a slam dunk for the “Domain King” (aka, Mr. Rick Schwartz)
The site domainking.biz is all about “domains”, which in my non-expert opinion, infringes upon the Domain King’s registered trademark. Not only should Rick receive the domain; he should be entitled to treble the damages (i.e, revenues, etc) if the party knowingly infringed upon Rick’s trademark “Domain King”.
I actually thought the site was owned by Rick.
If you don’t have a High Profile, Memorable, Easy to Spell and Communicate Web Address . . .
you will find it more and more difficult to compete and make money on and off the Internet as this century progresses.
~ Rick Schwartz
so i got
HighProfileWebAddress.com
You should have registered HighProfileMemorableEasytoSpellandCommunicateWebAddress.com instead.
Hurry — get it now, while it’s still available!!
Danny hast du heute schon geschnattert ?
ich ja …
Does Rick use this TM in trade? Much money put behind it (goodwill)? Would that reach overseas? The Panelists will be asking themselves that. Would like to see Rick back doing a Sherpa show. He was my favorite, lots of energy. 🙂
He was bored on the Sherpa show guy has tens of millions he doesn’t wanna stand around Talking domains all day.
EFF off already Schwartz. Go hibernate ya old bear. If you do win any of these cases it’s only because the TM system is broken and the UDRP system is corrupt. DomainKing.com forwards to an outdated looking blog. Not to a domain registrar.
I’m on the fence with this one. Ideally a TM holder shouldn’t be able to defend a trademark in any region where it’s not registered or has common law standing with respect to historical usage in that state. At best the Nigerian domain should be blocked from reaching areas where the trademark exists. As the Nigerian gang may not be focused within their region, and their intent to fuck with the TM holder, it may be worthwhile to take advantage of the current domain rules, because when you start a war sometime anything goes.
Who even cares about a .BIZ? Rick is the .COM owner so he should be happy that some idiot took a worthless gtld and will help promote it, blessing him with extra traffic. Same with the new gtld crap. All they do is benefit the .com.
#1: — Rick Schwartz — is Clearly & Legally and the — One and Only — UN-Disputed — Domain King — in the World !!!
#2: — Rick Schwartz filed for his “Domain King” Trademark in 2003 !!!
#3: — Did Anybody — in the USA and / or — World-Wide Business World — Contest his Status as being — The UN-Disputed — Domain King — when he Filed at the USA Federal Trademark Office for — His Trademark — “Domain King” — ? ? ?
#4: — Rick Schwartz was in on the — Ground Floor level — High Risk Status — of a New Business — the beginning of the Domain Name & Dot Com Boom…
#5: — RS was largely responsible making sure the Domain World — Domain industry — and fellow Domain People knew exactly what was really going on — and that this New Domain Thing was — The Real Deal…
#6: — Rick Schwartz will go down in History as the “DOMAIN KING” and a great Major Business Pioneer !!!
#7: — Rick Schwartz is a Major Business Pioneer — and Major Player — in the Domain Name Business World !!!
#8: — Rick Schwartz is in the same category as many other Past Top Business Pioneer’s like — Steve Jobs — Bill Gates — Henry Ford — Howard Hughes — Jeff Bezos — Sam Walton !!!
Hey Rick, you should put yourself in the hall of shame, you diverse the “king” spot there now.