estta tracking number: 04/11/2011 in the united states
TRANSCRIPT
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA403104Filing date: 04/11/2011
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91193054
Party Defendant101domain, Inc.
CorrespondenceAddress
MARK H TRACHTENBERGWINSTON & STRAWN LLP35 WEST WACKER DRIVECHICAGO, IL 60601UNITED [email protected]
Submission Other Motions/Papers
Filer's Name Marc H. Trachtenberg
Filer's e-mail [email protected]
Signature /Marc Trachtenberg/
Date 04/11/2011
Attachments 20110411170251265_00001438.pdf ( 15 pages )(158520 bytes )Exhibit A.pdf ( 4 pages )(32927 bytes )Exhibit B.pdf ( 4 pages )(914735 bytes )Exhibit C.pdf ( 7 pages )(57890 bytes )Exhibit D.pdf ( 5 pages )(153754 bytes )Exhibit E.pdf ( 2 pages )(56969 bytes )Exhibit F.pdf ( 9 pages )(108734 bytes )
EXHIBIT A
EXHIBIT B
EXHIBIT C
EXHIBIT 4
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101Domains.com - International Domain Name registration.
DNBuy Inc - Offer domain name registration, DNS hosting with web/email forwarding and website hosting services. Also offers SSL certificates. Based inBowmanville, Canada.
Dallas Domains - Domain registration service; Tucows reseller
Delta2 - .it domain name registration and hosting, website design and hosting.
Dew Designs - Registers .com .net .org names, also offers url and email forwarding.
DirectNIC - Offers registration for .com, .net, .org, .info, .biz, .tv, .us, and .name domain names.
Directory One - Provides registration for .com, .net, and .org domain names.
Discount Domain Name Wholesalers - Provides registration for com, net, org and com.au, net.au org.au domains.
DomRegNow.com - Domain name search and registration.
Domain Atlantic - Offers registration for .com, .net, and .org names.
Domain Direct - Register and park your domain name, comes with free domain and e-mail forwarding.
Domain Discover - Domain registration services provided by TierraNet.
Domain In The USA - Offer registration, transfers, whois lookup, client control panel, and 24-hour customer support services.
Domain Name Com - Provides domain registration for .com, .net, .org, .info, and .biz domain names.
Domain Name Registration @ Kid-D.net - offers registration for .com, .net, .org, .info, .biz
Domain Name Registration Center - Offers family friendly domain names, email and URL forwarding. Web hosting is optional.
Domain Name Registry - Offers domain registration. Search, register and park your name.
Domain Registration Services - Fast registration of Australian domains.
Domain Registration Zone - Site offers domain name registration, bulk registrations, and domain name management.
Domain Services Limited - Offers registration service for various country code top level domains.
Domain The Net - Registration service provider offering domain names in a variety of extensions in Hebrew, English, and Spanish.
Domain-It - Lookup and register domain names. Information on 150 country domains.
Domain.com - domain name registration, web hosting, web site design, and search engine positioning
DomainInvestigator.com - Domain name registration services.
DomainMonger.com - Offers complete name registration service.
DomainNameRegistration.Com - Provides domain name registration, page-forwarding and live support for .com, .net, .org, .ca, co.uk, .info, and .biz domainnames.
DomainPro - Company caters to high volume customers. Newsletters for industry news and a list of domain auction sites.
DomainRegister.Com - Offers domain name registration.
DomainRegistry.com - Provides registration for .com, .net, and .org domain names.
DomainTotal - Official domain name registration service provider, for .com .net and .org.
DomainZoo.com - Domain registration for .com, .net, .org, .cc, .nu, .bz, .info, and .biz domain names.
Domaininfo.com - Search for domain and register top-level domain names in many countries.
Domainlot - Provides registration for .com, .net, .org, .cc, .tv, .info, .biz, .ca, .co.uk, and .org.uk domain names.
Domains Done Right - Domain name registration, domain parking, web hosting, and email services.
Domains Matter - Registrar.
Domains True - Offers domain registration services.
DomainsNow4U.com - provides domain name registrations including transfers, URL redirection, email forwarding, and hosting services.
Domainscape - Domain name registration and web site hosting.
Domainsrush - Provides registration for .com, .org, .net, co.uk, and .org.uk domain names.
Domainz - The New Zealand [.nz] and Australian domain registry.
Dot Solutions - Provides registration services for .com, .net, .org, .ca, and .us domain names.
DoubleDomains.com - Site offers domain name registration for .com, .net., org and .uk names, free parking and email/domain forwarding.
devNIC - Domain name registration for .com, .net, .org, .co.uk, .org.uk, and .ca domain names.
domainX.net - Full Service, low cost domain name registration. Multilingual, bulk registration, control panel, expired domains for just $15 per month.Professional services, affordable prices.
DescriptionTop: Computers: Internet: Domain Names: Registrars: D (44)
"D" search on: AltaVista - A9 - AOL - Ask - Clusty - Gigablast - Google - Lycos - MSN - Yahoo
Copyright © 1998-2010 Netscape Terms of Use
Visit our sister sites mozilla.org | ChefMoz | MusicMoz | Open-Site | Wikipedia
Last update: Tuesday, January 2, 2007 7:58:51 PM EST - edit
Volunteer to edit this category.
EXHIBIT 5
about dmoz | dmoz blog | suggest URL | update listing | become an editor | report abuse/spam | help
Search the ent ire directory
[ 0 | 1 | 2 | 3 | 4 | 5 | 6 | 7 | 8 | 9 | A | B | C | D E | F | G | H | I | J | K | L | M | N | O | P | Q | R | S | T | U | V | W | X | Y | Z]
101Domains.com - International Domain Name registration.
DNBuy Inc - Offer domain name registration, DNS hosting with web/email forwarding and website hosting services. Also offers SSL certificates. Based inBowmanville, Canada.
Dallas Domains - Domain registration service; Tucows reseller
Delta2 - .it domain name registration and hosting, website design and hosting.
Dew Designs - Registers .com .net .org names, also offers url and email forwarding.
DirectNIC - Offers registration for .com, .net, .org, .info, .biz, .tv, .us, and .name domain names.
Directory One - Provides registration for .com, .net, and .org domain names.
Discount Domain Name Wholesalers - Provides registration for com, net, org and com.au, net.au org.au domains.
DomRegNow.com - Domain name search and registration.
Domain Atlantic - Offers registration for .com, .net, and .org names.
Domain Direct - Register and park your domain name, comes with free domain and e-mail forwarding.
Domain Discover - Domain registration services provided by TierraNet.
Domain In The USA - Offer registration, transfers, whois lookup, client control panel, and 24-hour customer support services.
Domain Name Com - Provides domain registration for .com, .net, .org, .info, and .biz domain names.
Domain Name Registration @ Kid-D.net - offers registration for .com, .net, .org, .info, .biz
Domain Name Registration Center - Offers family friendly domain names, email and URL forwarding. Web hosting is optional.
Domain Name Registry - Offers domain registration. Search, register and park your name.
Domain Registration Services - Fast registration of Australian domains.
Domain Registration Zone - Site offers domain name registration, bulk registrations, and domain name management.
Domain Services Limited - Offers registration service for various country code top level domains.
Domain The Net - Registration service provider offering domain names in a variety of extensions in Hebrew, English, and Spanish.
Domain-It - Lookup and register domain names. Information on 150 country domains.
Domain.com - domain name registration, web hosting, web site design, and search engine positioning
DomainInvestigator.com - Domain name registration services.
DomainMonger.com - Offers complete name registration service.
DomainNameRegistration.Com - Provides domain name registration, page-forwarding and live support for .com, .net, .org, .ca, co.uk, .info, and .biz domainnames.
DomainPro - Company caters to high volume customers. Newsletters for industry news and a list of domain auction sites.
DomainRegister.Com - Offers domain name registration.
DomainRegistry.com - Provides registration for .com, .net, and .org domain names.
DomainTotal - Official domain name registration service provider, for .com .net and .org.
DomainZoo.com - Domain registration for .com, .net, .org, .cc, .nu, .bz, .info, and .biz domain names.
Domaininfo.com - Search for domain and register top-level domain names in many countries.
Domainlot - Provides registration for .com, .net, .org, .cc, .tv, .info, .biz, .ca, .co.uk, and .org.uk domain names.
Domains Done Right - Domain name registration, domain parking, web hosting, and email services.
Domains Matter - Registrar.
Domains True - Offers domain registration services.
DomainsNow4U.com - provides domain name registrations including transfers, URL redirection, email forwarding, and hosting services.
Domainscape - Domain name registration and web site hosting.
Domainsrush - Provides registration for .com, .org, .net, co.uk, and .org.uk domain names.
Domainz - The New Zealand [.nz] and Australian domain registry.
Dot Solutions - Provides registration services for .com, .net, .org, .ca, and .us domain names.
DoubleDomains.com - Site offers domain name registration for .com, .net., org and .uk names, free parking and email/domain forwarding.
devNIC - Domain name registration for .com, .net, .org, .co.uk, .org.uk, and .ca domain names.
domainX.net - Full Service, low cost domain name registration. Multilingual, bulk registration, control panel, expired domains for just $15 per month.Professional services, affordable prices.
DescriptionTop: Computers: Internet: Domain Names: Registrars: D (44)
"D" search on: AltaVista - A9 - AOL - Ask - Clusty - Gigablast - Google - Lycos - MSN - Yahoo
Copyright © 1998-2010 Netscape Terms of Use
Visit our sister sites mozilla.org | ChefMoz | MusicMoz | Open-Site | Wikipedia
Last update: Tuesday, January 2, 2007 7:58:51 PM EST - edit
Volunteer to edit this category.
EXHIBIT D
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
BB-Online UK Ltd . Opposition No. 9l I 93054and 91193815
Application Serial No. 77684786and77684789
Mark:
Opposer,
Applicant.
DECLARATION OF ROBERT FOX
My name is Robert Fox, I am a resident of The United Kingdom. I am over the age of eighteen,
and have actual personal knowledge of the facts stated herein. The following statements are frue and
correct to the best of my knowledge:
l. I am currently the Managing Director of BB-Online UK Ltd., ("BBO") a limited liability
company incorporated under the laws of England and Wales.
I have held this position since 30th October 1997.
BBO trades as BB Online and 101 Domains. as well as other trade names.
BBO provides domain name registration services and email and web hosting services. The
company does this through websites located at www.bb-online.com, and
www.l0ldomains.com, among others. BBO registers, among other top level domains, the U.S.
based domains ".com," ".org," and ".net," and has done so since its inception.
On December 22,1997, BBO registered the domain lOldomains.com and began offering the
l0lDomains registration service through that website.
Immediately thereafter, BBO placed a website on the domain, and began advertising with U.S.
based search engine submi.ssion companies.
BBO does not have records showing what the original website looked like, however, within six
2.
a
4.
5 .
6.
months of the domains registration, a website existed at l0ldomains.com.
8. As part of BBO's advertising strategy, we submitted the l0lDomains.com url to Yahoo!, the
web portal, for inclusion in its directory pages, and to www.dmoz.org, the Open Directory
Project.
9. Dmoz.org was a very high profile project in the late 1990's for creating a directory of web sites,
and was considered an authoritative resource for customers seeking web site services such as
domain name registration and web hosting. I have attached as EXHIBIT 2 a printout of a
current Wikipedia article about the history of Dmoz.org and the Open Directory hoject. This
printout is a true and correct copy of the Wikipedia entry on Dmoz.org as it appeared November
30 ,20 r0 .
10. I have attached as EXHIBIT 3 a printout from the Internet Archive Wayback Machine
(www.archive.org) entry for dmoz.org, showing that an archive for the site exists for the dates
Jart 25 , I 999, and Apil 29, I 999, among other dates. This printout is a true and correct copy of
the Wayback Machine website entry for dmoz.org as that entry exists November 30, 2010.
I l. I have attached as EXHIBIT 4 and EXHIBIT 5 printouts of portions of the Wayback Machine
archive for the website dmoz.org dated, respectively , Jan 25, 1999 and April 29, I 999. The
portions I have printed out are the web pages showing the category
"Computers:Internet:Domain Names:Registrars:D" In both the Jan25,1999 archive record
which is exhibit 4, and the April 29, 1999 archive record, which is exhibit 5, l0lDomains.com
is the first entry. The printouts in EXHIBIT 4 and EXHIBIT 5 are true and correct copies of the
Wayback Machine website entry for dmoz.org as that entry exists November 30, 2010.
12. As part of BBO's advertising strategy, we also submitted the url and a description of the
website, including the brand name I0IDOMAINS to a series of websites known as "link
farms." These websites served the function of online directories where proSpective purchasers
of a particular service could find a listing of providers of that service gathered on a single web
page. Some of the link farms with which BB Online advertised the IOIDOMAINS domain
included free99.com, mail-list.com, websitegarage.com, linkplace.com, and
hotyellowlinks.com, among others. Included as EXHIBIT 6 are ffue and correct copies of a set
of emails received at the [email protected] email account confirming registration of the
1O1DOMAINS web site with various link farms" or describinq communication and solicitation
among members of the link farms.
13. In addition to link farm advertising through the farm web site, members of these link farms
were required to accept solicitation emails from other members of the link farms, both auto'
generated and written, advertising services. BBO solicited business for the I0IDOMAINS
website in this manner.
14. Link farms fell out of favor with the arrival on the online advertising scene of online search
based advertising, as demonstrated by Google and its competitors. Many if not most of the link
farms described above are defunct.
15. BBO made at least six sales under the I01DOMAINS brand to U.S. based customers prior to
May l, 1999.I have included a spreadsheet detailing those sales, which is a true and correct
copy of a BBO business record, and is attached as EXHIBIT l.
16. Each of the sales listed in Exhibit 1 were made possible by the advertising of the url described
above, either through link farms, placement on the Yahoo! Directory or placement on the
dmoz.org directory. Each of the sales originated atthe l0ldomains.com website.
17. BBO initially priced all orders in Great Britain Pounds ("GBP"). Because all orders were placed
by credit card, U.S. customers could place orders for .com, .net, and .org websites with U.S.
credit cards. BBO's merchant processing vendor allowed us to accept U.S. credit cards from
U.S. persons fbr payment otloes in GBP.
I declare under penalty of perjury under the laws of the United States of America that ttre forgoing is
Signature
