Is a Domain Name an Automatic Trademark? 251
TheWorkingStiff writes "I registered a descriptive domain name (something like "thesimpledog.com") and started a blog on it. About a month later I get a threatening letter from a link farmer who owns "simpledog.com" The owner of simpledog.com is claiming that he owns the trademark to the words simpledog even though he has no real business or rights by that name other than a static page with some text and Adsense slapped on it. There is no product, service or brand whatsoever. Does simply registering a two or three word domain give you instant trademark rights to those words even though you've never done anything with them? Should I give up my domain to a link farmer who is trying to bully me, or does he have a valid right to any phrase he registers that isn't already trademarked?"
Well (Score:5, Insightful)
Answer: Ask a lawyer not Slashdot.
Re:Well (Score:5, Informative)
Looks pretty clear to me.
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A word or an expression must be registered before it becomes a trademark. Such a registration pays for eg the bureaucratic check that nobody else already owns a similar trademark. Only legal entities who have paid for a trademark from the appropriate body have a right and obligation to trademark protection within the jurisdiction of that body.
There are nearly two hundred countries in the world, and each of these countries has a body responsible for trademar
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Registering does have several advantages (again, in the same vein as copyright) over not registering: Nationwide presumption, ability to bring suits in federal courts, etc.
When you register a trademark, it is no longer a simple trademark, but a "registered trademark", denoted by a (r) rather than a (tm).
If I recall, it's also pretty difficult to
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This would be slightly different with copyright. Once a work is published, there's a clear case of plagiarism if someone else decides to duplicate it or independently assert some rights over it.
Wrong (Score:3, Informative)
Wrong! I was some time back the clerk in charge of accepting trademark registrations for one of the many US states which base their trademark law on the Uniform Code. Trademark law in the US recognizes trademark rights as being acquired under Common Law by the use of the mark in association with the sale of goods or services. You cannot file a trademark registration with any of the majority of states using the Uniform Code until you ha
Is the poster or the link farmer American? (Score:3, Informative)
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Why "ask a lawyer" responses aren't too useful (Score:2)
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It will be a different case if they can prove that they held the domai
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Which is exactly what you should do. Just take tour through your local yellow pages and call some sharks. Most of them won't charge you anything to answer a simple question. Some of them will be more than willing to fire off a letter for you for 50 bucks or so. A letter from a lawyer can work wonders. Just tell this fucker to take a hike all nice and legal.
Of course I like the idea of registering yours as trademark and suing the fucker yourself. I hate domain farmers. I registered a domain for my
No, it's not trademarked (Score:5, Informative)
The troll is just being a troll. Don't give in.
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Like "Blue Magic"..
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Whether you like it or not - delivering advertising is a product.
One of the key elements of defending yourself against a charge of
Simply having a trademark is insufficient (Score:4, Informative)
In other words, even if the other site has a trademark on SimpleDog, if you're using it for a legitimate business and your site does not compete with them (does not leech off their fame for commercial gain), you're pretty safe [nissan.com]. In fact, if your thesimpledog.com site became famous and you were able to turn it into a multi-million dollar business venture with widespread name recognition, and simpledog.com was still an advertising site which advertised what your business sold, you'd actually have pretty a good chance to get their domain transferred to you. They would be leeching off your fame for commercial gain, and thus satisfy definition 4b(iv) of using the domain in "bad faith".
(Incidentally, section 4b(i) is why you never, ever put a dollar amount on your domain in these cases. Their lawyers will immediately jump on it as evidence that you're using the domain in bad faith.)
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Cheers...
Sucker (Score:5, Funny)
Evil laughter.
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In a word - no! (Score:2)
So trademark it for real (Score:4, Insightful)
Trademarks (Score:5, Informative)
It would also be interesting to see what catagory he filed under.
You can file a trademark in any one of several categories (about 23). So you too could have a trademark on the same word and it would not conflict (eg. Ford Florists and the Ford Motor Company both have a trademark on Ford, but since the name use would not cause market confusion, they are both ok).
If the category is bogus (some technology one might be ok for him to use) you might be able to get the USPTO to force him to prove the use of his trademark in commerce.
Also if you were using the trademark before he filed, you should be ok by law, but anecdotal evidence shows that you will still lose your domain.
On a related point trademarks can be filed in more than one country, so what country trumps what country if there is a conflict? (I guess since
I have seen no discussion on this.
I am not a lawyer do not take this as legal advice. It's not. It's the ramblings of someone who holds a few trademarks himself.
Re:Trademarks (Score:5, Informative)
Re:Trademarks (Score:4, Informative)
I happen to know all of this because I went thru the legwork of registering my band name "Highland Sun" with the USPTO. A horse ranch somewhere in Kentucky (IIRC) wrote me a letter claiming I was infringing on their name "Highland Sun Farms", registered in their state and I wrote back essentially (1) we're not in similar businesses, no one will ever get us confused and (2) mine is Federal, yours is state; if you want to push this, you'll lose. They went away.
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You don't need to register to get trademark protection. You get protection by simply using the name in commerce. That's the TM mark. You may register with either the state or with the USPTO once you register you fet the circle R mark. Simpledog.com is probably not using the name in commerce. Also the OP probably cannot register because he currently does not have a product. You must use the product first and then register. insert standard this is not legal advice here.
I'll insert my knowledge from when I claimed "FreeDOS" as a trademark [freedos.org] in 2001. (Although I now believe there is no difference between "typed drawing" of "FreeDOS" and "FREEDOS" in this context.)
I had once considered applying for a registered trademark, which is ® not TM, but the issue is tricky. I think I have come to a reasonable understanding of trademarks in the US. First of all, to apply for a registered trademark (®) in the US, you need to pay a fee to the US Patent and Trademark Office (US
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I'm sure the phrase http://www.ihateyouall.com/ [ihateyouall.com] isn't trademarked yet, but the site has been there for almost four years now, if I remember correctly. That won't stop me from saying I Hate You All for the stupid things people do.
Slashdot: Still not a lawyer, no matter how many times
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Don't feed the spamming scum (Score:5, Informative)
Easy Tricks To Teach Your Simple Dog
Free Doghouse Plans Online for Simpletons
The page simpledog.com is one of those totally automated junk advertising pages, obviously with a picture of a dog.
Now you know this, you won't be at all curious about going there.
A shitty database-made spammy advert webpage won't give you any weight in a trademark dispute.
ridiculous. (Score:4, Informative)
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Re:ridiculous. (Score:5, Informative)
No, really, they have.
They're even running political polls. Granted the last one, from the 8th of October, was "Should George W. Bush be impeached?" and the current one is "Does The Media Favor One Party Over Another In It's Reporting?", but the days of being NSFW seem to be over.
At least until cadidates have been picked. : )
Re:ridiculous. (Score:5, Funny)
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Ergo, I didn't check.
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It is, but you might aswell just watch the news or read a news paper to find out the official WH word since "journalists" these days just really regurgitate white house press releases, leaks. Sometimes they get Cheney or Rice in to repeat what they leaked to the NYT the night before.
Watch the PBS documentary "Buying the war" - you can download it on bittorrent.
I wouldn't even answer (Score:2)
No, but... (Score:5, Insightful)
But of course he doesn't have one, so just asking will show him you're not just going to hand over a domain because you got a nasty email, which is what he's expecting. If he tries to quickly file the papers, he'll discover that just owning a domain name is not enough to even file for a trademark, much less get one. He'll have to find other uses of it (prior to yours) to complete the paperwork, and if his site is just a link farm it's questionable whether even his web site would qualify.
Not even a real business or site (Score:5, Funny)
If I were you, I would just ignore them or send them a "get lost" type letter. Or better yet, send them a letter that LOOKS like a real response, but is titled "legal response to your letter (legalresponses.com)" and then lists:
Click here for legal aid
Click here for legal forms
Click here for responses
Click here for more info about letters
Click here for improve your writing skills
Click here for related searches about legalresponses
(c) 2007 legalresponses.com . . . about us
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Did you guys miss the part in the summary where he says "something like thesimpledog.com"? The use of the word like in there indicates that this isn't the actual thing, but something similar to it. There are quite a few responses here basing your answers on the appearance of the example website which isn't the site he's actually talking about.
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Here's are similar cases with federal court ruling (Score:4, Interesting)
There was also a man named McDonald who was also a software developer. You guessed it. He registered McDonalds.com and
Here's an article: http://msl1.mit.edu/furdlog/?m=20040306 [mit.edu]
The U.S. 6th Circuit Court of Appeals in Cincinnati ruled that Michelle Grosse did not violate the law when she used the *name of Lucas Nursery and Landscaping Inc* in her domain name for a Web site she created to complain about the Canton, MI nursery.
Re:Here's are similar cases with federal court rul (Score:2)
Re:Here's are similar cases with federal court rul (Score:5, Informative)
That was a reporter for Wired magazine Joshua Quittner, who, back in the early days of the net (1994), noticed that McDonalds had not registered McDonalds.com. So he himself registered it, contacted the company, and documented the whole thing, prior to giving the domain to McDonalds.
http://www.wired.com/wired/archive/2.10/mcdonalds.html [wired.com]
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It's rumored that a few months later McDonalds offered him a serving of large french fries.
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Re:Here's are similar cases with federal court rul (Score:2)
Not completely true - they reached an out of court of settlement which involved Microsoft (who wished to avoid bad press) purchasing the domain for a pittance. Every lawyer I spoke to seemed to be of the opinion that, had it gone to court,
Re:Here's are similar cases with federal court rul (Score:2)
"The URL "www.frys.com" was owned in 1997 by David Peter, who manufactured and sold french-fry vending machines under the business name Frenchy Frys. Fry's Electronics brought suit against him that year, alleging trademark infringement, and ultimately prevailed in a default judgement."
he registered it first. it was a generic term. he was actively using it, not cybersquatting. there was no chance of confusion with the ele
Your answer is here in the yellow pages. (Score:2)
vs. http://www.yellow.com/ [yellow.com] vs. http://www.yp.com/ [yp.com] vs. http://www.authoryellowpages.com/ [authoryellowpages.com] vs. http://yellowpages.washingtonpost.com/ [washingtonpost.com]
vs. http://www.yellowpages.ca/ [yellowpages.ca] vs. http://www.musicyellowpages.com/ [musicyellowpages.com] vs......
Oh hell do a google and check it out for your self.
Oh, I hope CNet isn't watching this... (Score:2)
Groklaw: Info on Trademarks (Score:5, Informative)
As others have said, you have to use the name in a trade or business in order to claim it as a trademark, although you do not have to register it with the USPTO; registering the trademark does provide you with some additional legal advantages.
The Groklaw page has a number of useful links that provide more in-depth information.
Trademarks have capital letters? (Score:2)
Of course domains don't use uppercase, so this is where the ambiguity is.
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Capital letters are usually required for any proper noun, and trademarks are proper nouns. But that's a grammatical rule of English, not a legal rule concerning trademarks.
Of course domains don't use uppercase, so this is where the ambiguity is.
Domain names are case insensitive. You're free to write your domain name with a capital if you wish.
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qz
somewhat similar experience (Score:5, Interesting)
I had a somewhat similar experience a few years ago. A domain that I registered and was using for personal projects attracted the attention of lawyers from Shieldmark [shieldmark.nl], who asserted that I'd registered it in bad faith, and demanded that I turn over ownership of my domain to their client or face an arbitration proceeding according to the rules of ICANN's UDRP [icann.org] process. In Belgium.
In the interest of fairness, I should say that their client did have registered trademarks on the phrase that made up my domain name. On the other hand, their trademark specifically addressed the realm of agricultural products, and... well, let's just say I'm not in the agriculture business.
I sent them a polite letter back saying that while their client had my sympathies, I had registered the domain in good faith, was actively using it, and that if they initialed a UDRP against me, they'd lose. And that was the last I heard of it.
The situation here is different: this guy apparently has no claim on this domain other than the fact that your domain sounds kinda like one of the many he owns. Given that, I'd first talk to a lawyer, then do what I did: write a polite letter suggesting he pound sand.
This story.. (Score:5, Funny)
Use of a trademark is the key factor (Score:3, Interesting)
So, if he is using the trademark, I'd love to know on what? Registering a domain name and tossing up a pre-made "click through" ad page, in my mind, would not count. (He could argue that he is providing some type of advertising service, but there is a lot of room to argue on that one). Even then, if you are using the mark on " a blog providing news and information in the field of open source software", those two services are not really related. It would be the same as saying Delta Airlines and Delta Faucets (essentially identical marks) cannot co-exists. Obviously, they do and have for years.
Go see a trademark lawyer... that is obviously the smartest thing to do. Most will at least meet with you for a half-hour or an hour at no charge.
I am not a lawyer, but clearly the answer is ... (Score:2, Redundant)
Go see a lawyer. You can get a free initial consultation from many of them.
Here is some more free advice : Don't trust the free legal advice you get on slash dot. At
lease half of the posters have no clue, and you have no idea which half.
Answer is: maybe (Score:2)
For fun, check out http://www.uspto.gov/main/trademarks.htm [uspto.gov] and click "search" over in the right-hand box.
Step 2: How strong is the trademark? A mark like Exxon is extremely stro
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Step 2: How strong is the trademark? A mark like Exxon is extremely strong. It has no existance except for the oil company. If you use "exxon" in any context you're probably violating the mark.
Not really, no. You're free to use "exxon" in any way you like as long as it does not cause confusion between you or a business you are promoting and Exxon. A trademark is only enforceable in respect of this.
IANAL; this is not legal advice.
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My experience (Score:2)
It is better to get a trademark - in my case I payed the fee, but got tired of jumping through the hoops
The real domain names are... (Score:5, Informative)
I did speak to a lawyer initially who specialized in this sort of thing and he said, "Sure, you'd win in a UDRP case..." Then I thought about it some more and I realized that most lawyers only take cases they *think* they would win. It wouldn't be a guarantee... and I'd hate to have a 6 month old blog with traffic and readers suddenly get ripped awy from me. Unfortunately there doesn't seem to be any way for people who are being bullied to file any sort of counter complaint in matters like these.
The real domains in question are my site (which is down for the moment) http://www.thesimplemillionaire.com/ [thesimplemillionaire.com] and his site which is the same, but without the word "the." He couldn't furnish anything saying he had used the site for any more than a link farm, though he did say that he had some magazines sent to the name "simplemillionaire." Nice. I've had magazines sent to my cat, but that doesn't make them taxpayers (hmm...)
The threats from the owner of simplemillionaire.com also detailed how he was going to sue me to pay for HIS legal expenses. Again, I don't know how kosher that sort of threat is. This guy owns a company called SimpleVentures or something which seems to specialize in buying domains and selling them... apparently in a greasy way. His original email to me immediately suggested that I pay him a "licensing fee" for my domain name because it was similar to his. He boasted of selling the domain CapitalManager.com to the Hartford Insurance Group.
All this for a stupid personal blog that was only about three weeks old.
Bottom line: I didn't want to risk spending my next three months fighting with the jerk and dropping a couple grand in legal fees. But I'm keeping the domain name for the moment... You know, just in case...
Yes, I was using GoDaddy... Sue me. Wait, don't.
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As far as I understand it, and assuming you're in the US, not at all. See here [blogspot.com] for a blog entry written by C. E. Petit, a successful IP lawyer. I quote:
For one thing, it's a lot harder to get an award of attorney's fees in trademark actions (requires an "exceptional case") than in copyright actions.
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Based on searching the USPTO, it looks to me like you're the only one with a registered trademark.
GoDaddy is your slimeball's registrar as well, by the way.
I would do a whois search and have a lawyer send a "nasty lawyer letter" as I call them to the snail-mail address, with a PDF CC to the email address you've been dealing with. In my experience, people take "F.U." letters from lawyers more seriously than
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The question wouldn't be about the UDRP, I'd start with the trademark itself. If he doesn't have a registered trademark, register the mark yourself. In both the courts and the UDRP, if one party has a valid registration for the mark and the other doesn't the party with the registration has an overwhelming advantage (we can thank our corporate overlords for this, but occasionally it can be used to advantage). In fact, once you've got the registration in your name, you can probably force him to give up his do
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I realized that most lawyers only take cases they *think* they would win.
I don't think that statement is necessarily true. If they're on contingency, then that would probably be true. However, I don't think lawyers in (relatively) small trademark case would be on contingency. Lawyers would want to be billed by the hour.
I remember a study [nytimes.com] that found that court-appointed, private attorneys cost the government millions more than public defenders would. Additionally, the average sentence received by the private attorneys was significantly longer. The reasoning by
Put a Link on your Page (Score:2)
Trademark The Simple Dog if you'd like. Blogging is enough of a product that you should be able to get one in the same way newspaper names are trademarked.
I'd look to see how many other instances of Simple Dog or The Simple Dog are currently in use. He may have tried this trick many times and never had any success.
I don't believe he can e
Depends on what you mean (Score:2)
It's a web spammer (Score:2)
OK, let's do some lookups.
First, the USPTO trademark database. [uspto.gov] "Simpledog" - no hits. "Simple AND dog" - three dead applications for long phrases containing those two words. Definitely not a registered trademark. File your own trademark application if you like. It's easy, the entire process is online, and the fee is a few hundred dollars.
Next, let's try DomainTools. [domaintools.com]. "GNO, Inc. owns about 22,379 other domains." "1,219,449 other sites hosted on this server." That's a web spammer.
Now let's check
No. (Score:2)
IANAL, but I play one on Slashdot. A trademark registered with the USPTO is a trademark in the US. For outside the US, I haven't the foggiest. Do a search on USPTO. It's real easy to see what's available, and even the status of dead marks that are no longer being maintained. If your mark is free, it might not be too hard to DIY with the USPTO's forms; but I'd just chuck it over the fence to a lawyer if I was really serious about the business.
Copyrights ARE automatic by merely publishing, which might
You might try JustAnswer.com (Score:2)
That site is what it is, and you must judge it for what it is. You choose how much you want to pay for an answer... the suggested amounts be either $9, $15, and $30 or $15, $30, and $45, depending on some variable I don't understand...
Re:Automatic Trademark? (Score:5, Funny)
P.S. Please don't post further misleading advice under the esteemed Anonymous Coward label. You'll bring it into disrepute.
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The other domain is being stupid (deliberately so I think). If it's just a
Re:Automatic Trademark? (Score:5, Insightful)
Likewise a business name is just a bit of marketing that happens to be helpful to humans for branding puroses, conceptually not different to a person name for identification.
Also technically correct, but cannot stand on its own in the real world.
Atually ... (Score:5, Informative)
While a person CAN be held to have a valid trademark just by usage, if you're not in the same jurisdiction, or not offering the same product or service, you can ignore him.
The "not offering same product or service" is easy to understand - if there is little likelihood that a consumer would be confused between your "product" and his non-existent "product", then you also have a valid right to the same trademark. Lexus Peas was sued for infringing ont he Lexus brand, and the judge held that there was no chance of confusion in consumers minds between a can of peas and a car.
The "same jurisdiction" is also easy to understand - if he wants to "do something about it", he'll have to sue you in your jurisdiction, and that costs $$$, and a link pharmer simply won't spend the money.
Also, you can put a disclaimer at the bottom (without a link back) saying your blog has no relationship to the link pharmer, explaining the pharming business, etc. This way, you might become the cononical reference on the net for that particular url.
Obviously, your blog is taking traffic away. Why not point us to the landing page so everyone else can choose one link to "reverse-pharm" with a blog with some content using the same name.
Re:Automatic Trademark? (Score:4, Funny)
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Still, if he is using the name as his business name when selling those ads, he may have a point. But only if the original poster also puts ads on his site.
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Um... no.
A trademark is protection under the law to prvent consumer fraud. It's so consumers can identify the source of the goods or service.
"a website with a bunch of ads, only" is not goods or service. And given there's 16 jillion of the on the web the consumer of same is already confused. Saying "my dogbreath.com uniquly identifies me as the source
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Re:Automatic Trademark? (Score:4, Informative)
Re:Automatic Trademark? (Score:5, Insightful)
It would cover his area of business, not an unrelated blog. There is no way that somebody would find the sites "confusingly similar."
The guy's just trying to introduce a second revenue stream from his link farm. If anything, I think your site would increase traffic to his site, when people type it wrong.
Re:Automatic Trademark? (Score:5, Interesting)
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"It would cover his area of business, not an unrelated blog. There is no way that somebody would find the sites "confusingly similar."
Nissan Computer sales and Nissan Autos are in totally unrelated businesses. Nissan just had the money to make it irrelevant.
Re:Automatic Trademark? (Score:4, Informative)
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Quite a story. That guy needs a sharper, tougher lawyer.
Question: id his case is so solid, why hasn't he sued Nissan?
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It would be like throwing a bucket of water at the ocean. Uzi Nissan is putting up an amazing fight, but eventually the guy with the most money usually wins.
Re:Automatic Trademark? (Score:5, Informative)
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1. It had to be used in interstate commerce - in other words I had to do business in more than one state.
2. I had to do business.
I don't know if link farming is a trade or business but lets assume that it is. If you are not in the link farming business then your trademark is likely not infringing on his trademark. Moreover, even if you are in the link farming business if you don't have overlapping market areas then you don't have a problem.
Ask him how he is using the mark (Score:2, Informative)
Unless it's a made-up word he can't prevent the same word from being used in other areas of trade.
If his use doesn't conflict with the way you intend to use it, you both can use it and both trademark the term.
If your uses conflict, whoever took steps to establish the trademark for that particular usage first wins.
Un
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First, learn what the law says. A trademark gives you an exclusive right to use a mark in a defined geopgraphical area in a specific class of goods or service. You don't turn on your delta faucet and expect to hear airline shcedules.
If he/she is doing business under that name and you are too in the same class or service then he/she may have a point and you should wait till he files a $1500 UDRP against you (which you can simply say "ok, it's yours, here"). Otherwise, ignore it.
If you two aren't doing bus
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Can you afford a polite conversation with a laywer, and a bit of work tracking what this clown's real business is? His "whois" information for his domains should provide some contact details, and if those are invalid, you can get *his* domain cancelled for providing false contact information.
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whois is unlikely to go away in the foreseeable. It may change (perhaps to a system like the UK one, where a domain that is registered for personal use only can have the contact details hidden), but it isn't going away.