Legal Question in Intellectual Property in Oklahoma

Re: extortion

A TTAB proceeding (an administrative proceeding not a lawsuit) is not extortion. A consent is not uncontrolled licensing.

It is not up to NSI to get your permission before NSI registers your trademark as someone else's domain name. It is up to you to show NSI it is your registered trademark and request them to put the conflicting domain name on hold.

You are quite confused about trademark law and internet law, it appears. You should consult a competent trademark lawyer versed in internet law. It sounds like you are about to lose your trademark, so I cannot stress too strongly to you to get professional help. Call me or someone like me ASAP.

Bruce Burdick

[email protected]

[email protected]

www.armstrongteasdale.com

www.burdlaw.com

314-621-5070

FAX 314-621-5065

St. Louis, MO

Re: extortion

Question #1: No, that's not a "civil rights" violation at all, but your terminology is confusing. I assume you have a trademark and they want it, so they're calling for a hearing to see whose rights are greater. Maybe it's one that you should in theory win, but in practice bigger guns often prevail. (You should call Thomas Workman at (508)822-7777 if you want a good-sized weapon of your own in such a battle.)

If their claim is truly groundless, they could end up paying for their attempt to bully you. If there's something of substance in their claim to the mark, then they won't have to pay your legal costs.

You could license the mark to them without losing your rights in it (and you would probably have them acknowledge your superior rights in such an agreement, thus reinforcing your rights). If you need to use it yourself and there could be some confusion between the two marks, that's probably not a viable option.

Network Solutions is not directly in the business of making such determinations and probably will not be held directly accountable for what they've done. But your lawyer (perhaps Attorney Workman, or perhaps me!) should put them on notice for now. But you really have to work the issue with the infringer directly. Licensing the domain name for now isn't really the issue; have they set up websites using those domain names? Are they trading on the goodwill you've built up in the mark or are they watering down the value of your mark? Are they causing consumer confusion and getting some customers that are really looking for you and your product? That'd be the party who is "ripping you off", not Network Solutions.

Please send me the name of the mark privately. I'm at [email protected] and you can use PGP (pretty good protection) encryption if you want to be more certain of privacy, though I don't believe anyone is monitoring my e-mail.

Let me know if I can help you further or if I can help you to get Attorney Workman to consider taking your case.