A hyphenated .net Infringement?

[yesonline]

I registered buy-it-now.net at July 2002, and today I received a Infringement letter from buyitnow.com as below.
I do not use this domain for a living web but only use it for some of my email such as abc@buy-it-now.net, should I give it away to buyitnow.com? Do they have all the rights over anything contains buyitnow whatever?

Thanks

----------------------------------------------------------------------
Hello

We notice that you have this domain registered and are hosting it with two banners.



BidChat Partners, L.L.C. ("BidChat") has recently acquired all ownership and
goodwill rights associated with the federally registered trademark BUYITNOW®
(Registration No. 2,281,435). The BUYITNOW® trademark has been commercially used
since November 1997 in connection with on-line retail services in international class 35.
The BUYITNOW® trademark, as you must appreciate, is of great value and importance to
BidChat.



The services offered at your web site make use of our BUYITNOW® trademark in
connection with on-line retail services that are confusingly similar to the services offered
at our web site (namely, www.buyitnow.com) relating to that for which the BUYITNOW®
trademark has been commercially used since November 1997. Hence, the public is likely
to be confused into believing that your company is affiliated with BidChat or that your
services emanate from or are sponsored by BidChat. Furthermore, your unauthorized use of
our BUYITNOW® trademark jeopardizes our ability to distinguish our services from the
services of others.



We are contacting you because BidChat prefers to resolve this matter without taking
legal action and in a manner that does not interfere with the normal commerce of your
business. Please be advised that while BidChat prefers to amicably resolve this matter, we
will pursue any and all legal remedies available to us in view of your infringing activities
regarding our BUYITNOW® trademark.



We could take this matter before the courts and have the domain name transferred to us because it
infringes our trademark.


HOWEVER – We WISH TO RESOLVE THIS MATTER DIRECTLY and are therefore willing to make a
small token payment to you in exchange for transferring the domain to us.

Please let us know what you would be willing to accept so that we can avoid having to take legal action.


Yours truly,

------------------------------------------------------------------------------

 

[mohno]

I don't think that you should give it away.
That is, I don't think that they can show your "bad faith" conduct.
It might be better to remove banners on the site though.

Good Luck!

 

[yesonline]

Originally posted by mohno
I don't think that you should give it away.
That is, I don't think that they can show your "bad faith" conduct.
It might be better to remove banners on the site though.

Good Luck!

Thank you for your input, yes, I wrote to him and state that I didn't infringe their trademark, and I only use it for my email so far. I don't think people will be mislead only because these 2 domains, buyitnow.com and buy-it-now.net.
As the banners, I think most of the websites have banners, and the main page is "under construction" , I think I show nothing bad faith to their trademark nor business.

And I want to see how buy-it-now.com going for this situation, I think buyitnow.com should take the same action on buy-it-now.com?

 

[mohno]

Originally posted by yesonline

...

And I want to see how buy-it-now.com going for this situation, I think buyitnow.com should take the same action on buy-it-now.com?

I found the owner of buyitnow.com registered the trademark "BuyItNow" in Nov 29, 2002. ( http://tess.uspto.gov/ )

So, you and the owner of "buy-it-now.com" couldn't register these domains in bad faith because the registration dates of buy-it-now.* are earlier than this date.

 

[yesonline]

Originally posted by mohno


I found the owner of buyitnow.com registered the trademark "BuyItNow" in Nov 29, 2002. ( http://tess.uspto.gov/ )

So, you and the owner of "buy-it-now.com" couldn't register these domains in bad faith because the registration dates of buy-it-now.* are earlier than this date.

Thank you for this info, I found that buyitnow.com, .net, .org, .biz, .info and even .cc are all theirs now. I think they try to acquire all similar domains under their service.

 

[HOWARD]

Why would you use buy-it-now.net solely for your email? Do you have any development plans? If you have a legitimate business purpose for the domain, go forward with those plans and don't let them bully you into giving up the domain. On the other hand, if you have no real business plans, why even bother with this domain?

 

[Drewbert]

BuyItNow is a dotComBomb (check out FC).

IIRC they have no assets left, apart from the TM, and I think what you're getting is a precursor of them attempting to sell the name to eBay (who have a TM on "buy it now"??

There was a similar thread to this one on ABestWeb recently. Was that you, or another buyitnow.* owner?

Whoops...

http://abw.infopop.cc/6/ubb.x?a=tpc&s=548608979&f=106607689&m=6066078812

I tell a lie. It was someone who received a letter demanding they remove the eBay "butitnow" logos from their website. Chortle.

 

[yesonline]

Originally posted by HOWARD
Why would you use buy-it-now.net solely for your email? Do you have any development plans? If you have a legitimate business purpose for the domain, go forward with those plans and don't let them bully you into giving up the domain. On the other hand, if you have no real business plans, why even bother with this domain?

Thank you, I don't have a current plan on buy-it-now.net, only use it for my email, it is not valuable to me, but I don't want to just give it away because only somebody jumps out and points a gun to me

 

[jberryhill]

Originally posted by mohno


I found the owner of buyitnow.com registered the trademark "BuyItNow" in Nov 29, 2002. ( http://tess.uspto.gov/ )

So, you and the owner of "buy-it-now.com" couldn't register these domains in bad faith because the registration dates of buy-it-now.* are earlier than this date.

I don't even know where to begin when you see misinformation stacked upon misinformation like this.

But this might be instructive in the continuing crusade to convince people that they might need to do some more homework before attempting to interpret things they find in the uspto.gov database.

First of all, nobody registered "BuyItNow" on November 29, 2002. What you are seeing in *that*record is the *filing date* of an application for a stylized mark which is nowhere near being a registered trademark.

The amazing thing is that you managed to entirely miss their earlier registered trademark for the words alone from September 1999, which recites use in commerce as early as 1997.

 

[mohno]

Originally posted by jberryhill

...
First of all, nobody registered "BuyItNow" on November 29, 2002. What you are seeing in *that*record is the *filing date* of an application for a stylized mark which is nowhere near being a registered trademark.

The amazing thing is that you managed to entirely miss their earlier registered trademark for the words alone from September 1999, which recites use in commerce as early as 1997.

Oh... sorry for misreading.
Anyway, it looks that the owner of the domain "buyitnow.com" is different from the owner of the registered trademark "BUYITNOW".

 

[jberryhill]

Changes in ownership data of registered trademarks is not updated on a continuous basis, and usually only enters the database at renewal time. I guess my question here is what makes you think you know the owner of the registered trademark? It may, or may not, be the party identified in the database at the time the mark was registered.

The USPTO posts some very good information on what goes into the database, and what does not go into the database. That would be a good starting point for learning what conclusions may or may not be made on the basis of things that are found there.

But getting back to the "how do you know the owner" question, you might chew on that a bit more.

It is even easier to write completely bogus c&d letters than it is to file a bogus UDRP complaint, pretending to be the owner of some actual registered mark.

 

[mohno]

Originally posted by jberryhill
Changes in ownership data of registered trademarks is not updated on a continuous basis, and usually only enters the database at renewal time.
...

Oh, oh ... I misunderstood completely :sad:
Thank you for the correction.
Is there any better resource of searching trademarks ?

Finally, I found the owner of "BuyItNow.com" was having the domain "CitySurf.com", CitySurf is stated as the registrant of "BuyItNow".

Anyway, I believe that yesonline still can use "buy-it-now.net" unless violating their legal rights.

 

[jberryhill]

"Is there any better resource of searching trademarks ?"

That depends on what you mean by "better". I mean, I can dig a hole in the ground, look at a bunch of rocks and bones, and say, "There's a bunch of rocks and bones in that hole."

But if a paleontologist or a geologist were looking in the same hole, I bet their interpretation of what is there would be more than "a bunch of rocks and bones".

It's not as if the hole is any different, but geologists and paleontologists are used to looking at rocks and bones, and have learned a whole lot more about rocks and bones that I know, or care to know. But when faced with a situation in which I want to know something about a bunch of rocks and bones in a hole, then I would probably consult someone who knows something about it, rather than go looking for a more informative hole.

In all probability, any other hole is still going to look like "a bunch of rocks and bones" to me.