C&D Letter TRADEMARK BS It Don`t seem right

[AlwaysSomething]

Hi,
I just got a Cease and desist letter regarding a SUPPOSED TM issue. And got to thinking seriously about what a bunch of BS it is. I don`t think the domain name I have is a trademark infringement, but just for the sake of arguement let`s say they are right and it is. (though I don`t agree that it is)

The names in question are .info and .biz ( I also own the .us but they aren`t aware of it or just haven`t notified me of that yet.

Here`s my concern:

They want me to turn the domains over to them within 10 days. I am not really attached to the domains so don`t really care that much if I had to do that. My real concern is the fact that they (or anybody else) can legally do this.

Here`s my point: The same domain in these other ext. are still available:

.WS
.TV .
.CC
.DE
.JP
.BE
.AT
.CO.UK
.ME.UK
.ORG.UK
.CO.NZ
.NET.NZ
.ORG.NZ

(I checked after I got their letter and the .NET was also available and I didn`t dare grab it since I figured they would try to grab that from me anyways, so I passed and it since has been grabbed up)

In essence they are saying NO ONE CAN register these names in any ext. And if they dare to ....they can demand the name for themselves? So all these big companies have to do is wait for someone to register the name and then they can basically steal it from them?????

That to me seems like a bunch of BS ! If this is really the way it works we should protest, Even the name registrars (ie. GoDaddy Etc.)should protest because I am sure there is a lot of names going un registered for fear of losing them to big companys who are basically holding them hostage until someone else registers a name they feel they can legally steal them away from them!!!


anyways, according to the letter written by a business affairs person from the company, not a lawyer (at least not yet anyways) I`ve only got a few days left before they claim that they will persue legal action if I agnore it. What`s the worst they can do If I just don`t respond? PLEASE HELP!

Thanks in advance

 

[Nameable]

Welcome to the forum. Please search around here and you'll find quite a bit of info from people who have been in the same situation. You haven't given a lot of specific info, so I can't really offer specific advice on your situation.

I am not a lawyer, but if you think you have a case, you should consult one.

If you are not that attached to the domains and are willing to let them go, it is common practice to ask that the TM holder reimburse your registration expenses.

 

[Garry Anderson]

Hello AlwaysSomething

Basically - you are correct - it IS a load of BS.

From my http://WIPO.org.uk site:

1 - virtually every word is (or can be) registered as a trademark many times over by different type of business in same or different country...

So whatever domain name you pick will be 'confusingly similar' to a trademark.

If you could legally use the name to open a new shop then there should be nothing stopping you from keeping the domain or selling it on to another.

The people responsible at ICANN and UN WIPO are aiding and abetting big business to overreach trademark - they are corrupt.

 

[AlwaysSomething]

Hello AlwaysSomething

Basically - you are correct - it IS a load of BS.

From my http://WIPO.org.uk site:

1 - virtually every word is (or can be) registered as a trademark many times over by different type of business in same or different country...

So whatever domain name you pick will be 'confusingly similar' to a trademark.

If you could legally use the name to open a new shop then there should be nothing stopping you from keeping the domain or selling it on to another.

The people responsible at ICANN and UN WIPO are aiding and abetting big business to overreach trademark - they are corrupt.

Hi and Thanks,
I checked out your site. So where does all this BS leave us? Up the creek without a paddle?

 

[AlwaysSomething]

I am not a lawyer, but if you think you have a case, you should consult one.

If you are not that attached to the domains and are willing to let them go, it is common practice to ask that the TM holder reimburse your registration expenses.

Thanks for the welcome.
I have considered that, since I have hundreds of names that are not even a concern about TM. But now it seems lika a matter of principal.

This whole thing just p*sses me off.

Here`s another example of the same situation. Lets use an obvious trademarked name. ie. Ford, Toyota, Sony, Harley Davidson or any of a thousand others.

Does Ford, Toyota, Sony, Harley Davidson or any other have exclusive rights to be the only person or company to register ANY of the dozens of TLD extensions there is.

Lets say a new extension is introduced, like .XYZ or .BET or .CAR or .GAMBLING or whatever, I find it real hard to believe that NOBODY but Ford could legally register Ford.CAR or that Nobody but Harley could register Harley.BIKE
Then of course there is the issue of eFord.CAR or Mustang.CAR

If Sony comes out with a new radio called "MyBestRadio" and Trademarks it... does that mean that nobody but sony can ever legally register The domain name "MyBestRadio" MyBestRadio.com or MyBestRadio.XYZ (or MyBestRadio.BS for that matter) without fear of being sued?


PS I heard that Volkswagon basically stole VW.com away from its rightful owner. I would imagine if they did that they could steal VW.anyextension from anybody who owns it.

This is pretty much what the company that is strong arming me is doing, and the name i have is nowhere near as blantently trademarked as the ones mentioned here.

Like I said I am not that fond of the name ( I have hundreds of names) but now it`s a matter of principal. But I am not really sure it`s worth the effort and aggravation to fight them.

I was planning on just ignoring the certified letter and leaving the ball in thier court and seeing where it goes. Suggestions? any one?

Thanks

 

[Nameable]

Like I said I am not that fond of the name ( I have hundreds of names) but now it`s a matter of principal. But I am not really sure it`s worth the effort and aggravation to fight them.

I was planning on just ignoring the certified letter and leaving the ball in thier court and seeing where it goes. Suggestions? any one?

I'd say you've hit the nail on the head. If you don't care about the domain, decide whether it's really worth fighting for. Do you have better things to do with your time? Usually my answer is yes. I haven't fought any recent c+d's too hard b/c I either recognized the mark, or didn't care about the domain.

Even just a few rounds of back-and-forth with their attorneys can easily eat up 8-10 hours of your time. I do have domains that I'd defend, but fortunately haven't had any comlaints on them yet.

Fighting it on principle is only really worthwhile in my book if it's a very broad mark, abbreviation, or free speech issue.

If they made the effort to send you a certified letter, they're not going to just go away. They'll probably try to reach you again, and when they don't hear from you they'll file a UDRP action. Then they may also go after you in court for trademark infringement (or at least threaten to do so).

IANAL, but It's been my experience that U.S. trademark holders need to make a lot of noise and do a lot of posturing to defend their marks or face the prospect of losing the exclusive rights to the marks. What appears to you as bullying may be seen by them as "doing the right thing" to protect their business.

Theory and principle won't get you very far in this land; the reality is that the law says what the law says, and you accepted an agreement to be bound by the UDRP when you registered the domain. Just like in the offline world, the big guy with the deep pockets wins more often than not. On top of that, it's the big guy who pays the lobbyists that write the laws for the government.


Bottom line: Sometimes breaking even and cutting your losses is winning.

Best of luck!

 

[Garry Anderson]

Hi and Thanks,
I checked out your site. So where does all this BS leave us? Up the creek without a paddle?

Unfortunately, those in authority (the perverters of law) are not put to task because everybody else is too cowardly or corrupt to challenge them - or too stupid to understand of course.

In my experience in this field, some put up a real good act of being vacuous of intelligence.

You should never be ashamed of being ignorant of facts - everybody is - but some of these people actually hide from facts like it was the pox.

For example, people here in the UK Patent Office (responsible for registered trademarks) are afraid to answer very simple questions from me about a fact - I had to make official complaint to force them to answer.

Months later - still waiting.

Whilst we have people like this in charge - without honour - we will be up the creek without paddle.

 

[AlwaysSomething]

Bottom line: Sometimes breaking even and cutting your losses is winning.

Best of luck!

got it, and Thanks for the advise. Just one other thing:... what is the best way to cut loose if that is what I decide?

They are expecting me to sign a paper that I won`t do this and I won`t do that etc. (I`m sure you know the score)

Think I should:

a.) ask them at least for fair compensation for the name?
b.) Ask the registrar to just cancel the reg? and see if they are smart enough to pick it up again on their own

c.) Ask the registrar to just cancel the reg AND send them a letter telling them that if they want to avoid having to send any further threatening certified letters out maybe they should register the same name in ALL the ext. that are still available..... in instead of waiting for someone else to do it.... then stealing it from them.
d.) send them a letter telling them to kiss me arse (bah) LOL

It`s a toss up between c and d Maybe a mix of both would be best answer. you think?


dThere should be some sort of time frame that a trademark holder has to register a domain name before it then becomes open to the public to register. Otherwise domain names could go unregistered for yrs. while the trademark holder basically holds them hostage. Or does that make too much sense?

 

[Nameable]

I'd do option "a" and ask for a letter disclaiming the alleged infringement (so they won't come after you in court). I wouldn't sign anything but a registrant name change form.

Never do d.

If they want, they can do b or c once they own the name.

If you haven't profitted from or diluted their mark, you shouldn't be expected to sustain a loss or penalty beyond the opportunity cost of not holding the name.

 

[namedropper]

Since you haven't told us what names you have that are under dispute, there's no good way to tell you if you have a chance in hell of keeping them or not. If you can afford a good intelectual property lawyer, tell him the names and get him to tell you if you have a chance. If you can't or don't want to pay a lawyer and want intelligent answers on whether you are right or wrong (instead of the uninformed and clueless rants of people who don't even bother to find out what domains you are talking about), you'd need to specify the names.

But let's go from your example here:

Here`s another example of the same situation. Lets use an obvious trademarked name. ie. Ford, Toyota, Sony, Harley Davidson or any of a thousand others.

Does Ford, Toyota, Sony, Harley Davidson or any other have exclusive rights to be the only person or company to register ANY of the dozens of TLD extensions there is.

Lets say a new extension is introduced, like .XYZ or .BET or .CAR or .GAMBLING or whatever, I find it real hard to believe that NOBODY but Ford could legally register Ford.CAR or that Nobody but Harley could register Harley.BIKE
Then of course there is the issue of eFord.CAR or Mustang.CAR

You may find it hard to believe (but then I'd have to wonder if you even ever look at the world around you), but YES, Ford owns the trademark for "Ford" when it's used for cars. eFord.com would be obviously trying to trade off of the Ford name. Ditto for Mustang and Harley. So if your situation is at all similar to these names, then you have no rights to those domains, and you should hand them over to the rightful owners.

The VW.com case isn't the same because there's nothing inherent about the domain that implies cars, so the owner could have used it for some other purpose completely. Of course, if I remember correctly, he made some boneheaded moves in trying to negotiate with VW which hurt his case. He still should have won, but it's not as big a shock that he lost.

 

[Garry Anderson]

Dan is mostly right - of course it would be advisable to get your domain name.

The intelligent amongst us knew that you did not want to give the name.

Therefore, I gave informed response to your base accusation in post - that it is fundamentally TRADEMARK BS.

It is an absolute fact that the authorities aid and abet trademark overreach.

Sunrise period, the 'time frame' you describe and seemingly support, is a good example of using trademark to violate competition law - to give unfair advantage.

My conviction still stands, "If you could legally use the name to open a new shop then there should be nothing stopping you from keeping the domain or selling it on to another".

I believe Dan is wrong about Ford and few others - providing they are not used for trademark infringement or any such purpose - of course.

He is perfectly right that you should get good intelectual property lawyer - of course.

Ford is the name used by many people, a city, an acronym for group etc. and not forgetting a shallow place in a body of water.

 

[TheDomainMan]

Ok guys look!!!!!

If you make a business called "Coke" and you made a www.COKE.biz ....... Well you would beinfrindging on the existing COKE.

The rule is

IF YOU DO NOT DEVELOP THE DOMAIN NAME NO LEGAL ACTION WILL TAKE PLACE

So my thought is if you want to make money....Just re-sell it to some goons

 

[AlwaysSomething]

Ok guys look!!!!!

If you make a business called "Coke" and you made a www.COKE.biz ....... Well you would beinfrindging on the existing COKE.

The rule is

IF YOU DO NOT DEVELOP THE DOMAIN NAME NO LEGAL ACTION WILL TAKE PLACE

So my thought is if you want to make money....Just re-sell it to some goons

Ok another example: what If someone had Sony.info and wanted to develope a sight (or forum) dedicated to giving INFOrmation on Sony radios? That could include
What complaints they have had?
Best place to buy them?
Which model is best?

or whatever?

 

[DaddyHalbucks]

They want me to turn the domains over to them within 10 days. I am not really attached to the domains so don`t really care that much if I had to do that. My real concern is the fact that they (or anybody else) can legally do this.

Here`s my point: The same domain in these other ext. are still available:

.WS
.TV .
.CC
.DE
.JP
.BE
.AT
.CO.UK
.ME.UK
.ORG.UK
.CO.NZ
.NET.NZ
.ORG.NZ

(I checked after I got their letter and the .NET was also available and I didn`t dare grab it since I figured they would try to grab that from me anyways, so I passed and it since has been grabbed up)

In essence they are saying NO ONE CAN register these names in any ext. And if they dare to ....they can demand the name for themselves? So all these big companies have to do is wait for someone to register the name and then they can basically steal it from them?????
++++++++++++

Just because you (domainer) could register a domain, does not mean doing so is necessarily lawful.

Yes, what the trademark owner is saying is proper, that no one can register domains containing their trademark. I assume the mark is famous, registered, and distinctive.

They aren't stealing from you, YOU are stealing from them.

A registered trademark confers property rights.

 

[AlwaysSomething]

Just because you (domainer) could register a domain, does not mean doing so is necessarily lawful.

Yes, what the trademark owner is saying is proper, that no one can register domains containing their trademark. I assume the mark is famous, registered, and distinctive.

They aren't stealing from you, YOU are stealing from them.

A registered trademark confers property rights.

ok if what you're saying is true them if someone registers ILoveMy1965Ford.com or 1936Ford.com or RedFord.com or FastFord.com or like was already mentioned here eFord.com...Ford would have a beef with them since they all "contain their trademark? This may be an extreme example but if what you're saying is correct it`s not that extreme.

How about 1936Ford.jp/.org.uk/.bz/.ca ford has rights to all those
also???

In other words where do they draw the line? Which was my whole concern and reason for writting this to begin with.

 

[TheDomainMan]

They don''t draw the line....They already earased it!

 

[DaddyHalbucks]

ok if what you're saying is true them if someone registers ILoveMy1965Ford.com or 1936Ford.com or RedFord.com or FastFord.com or like was already mentioned here eFord.com...Ford would have a beef with them since they all "contain their trademark? This may be an extreme example but if what you're saying is correct it`s not that extreme.

How about 1936Ford.jp/.org.uk/.bz/.ca ford has rights to all those
also???

In other words where do they draw the line? Which was my whole concern and reason for writting this to begin with.
+++++++++++++


The UDRP and TM laws deal with use. If your real name is Ford, and you are not in the automobile manufacturing business, you may a legitimate use.

If you manage a Ford owners club, or are an authorized Ford distributor, you may have a legitimate use.

If your name is Smith and you register the domain FORD.COM, and you sell advertising banners to GM which are displayed on your webpage thereon, and you offer the domain for sale to Ford Motor Company, you can expect to be sued.

I am not an attorney and this is not legal advice.

 

[namedropper]

Ok another example: what If someone had Sony.info and wanted to develope a sight (or forum) dedicated to giving INFOrmation on Sony radios? That could include
What complaints they have had?
Best place to buy them?
Which model is best?

or whatever?

It's pretty simple, really.

If you want to use a company's trademark in a domain name in a way that refers to that trademark directly (either by web content or associated words in the domain name specifying that it could only be that company) then you need the permission of the company that owns that trademark. If you don't get the permission then you are playing a game of hoping they don't object.

Or if you used the name in some reasonable way other than the Sony trademark -- for example, if your last name were Sony and you put up info about your family -- you'd be fine.

If you aren't the company, don't use the name of the company (or product of the company) as part of a domain on a site talking about items in that market. You can still have a website discussing the company or product as long as you don't use the trademark improperly. You could put up info about Sony radios at rateradios.info or whatever. Yes, Sony.info would be a better name for getting traffic, but the reason it's a better name is the effort Sony put into marketing it, which means Sony owns the term when used in its field. If you want traffic on a name that doesn't infringe upon a trademark, you spend your time marketing it, you can't just decide to steal someone else's trademark.

 

[HOWARD]

You are under no obligation to sign any document that they may "require" as they have no legal authority for such "requirement". As was suggested earlier, your best course of action is to contact one or more of us attorneys who contribute to this board and let us know what the URL that they are claiming as a Trademark infringement may be. We will all provide you with an honest opinion as to your chance of keeping the domain or losing it in a UDRP or ACPA action. At that point, you can either give up the domain, deregister it so that it becomes someone else's problem, negotiate a sale of the domain or defend it if a claim is filed.

 

[AlwaysSomething]

You are under no obligation to sign any document that they may "require" as they have no legal authority for such "requirement". As was suggested earlier, your best course of action is to contact one or more of us attorneys who contribute to this board and let us know what the URL that they are claiming as a Trademark infringement may be. We will all provide you with an honest opinion as to your chance of keeping the domain or losing it in a UDRP or ACPA action. At that point, you can either give up the domain, deregister it so that it becomes someone else's problem, negotiate a sale of the domain or defend it if a claim is filed.

THANKS Howard i`ll send you a PM either that or post your email here if you can