Got an email from Fox

[B40]

they just filed one (application) on 3-18-05 #78590903

How does that affect me since I reg'd the domain name on Dec 30th, 2004, 3.5 months before they filed the application...

 

[Sandwalker]

You think that the FOX network don't have the time or the funds to pursue their trademark?

First off, corporations of that caliber have legal counsels on-staff, which are paid wages to do exactly their job. Second, if they don't pursue it, they will risk losing the rights to the mark as it might become generic. So the rule of thumb is, avoid trademark domains.

Of course they do, but resources are resources. It still takes their time and energy to do so, which they could spend doing things with higher priority. Just because a company has lawyers on the payroll doesn't mean that doesn't cost them any money. All a corp wants is results, if you can offer those results cheaper than them using their resources, they'll usually accept that.

Second, I do agree to avoid trademark domains if it's an obvious one. The ones I had trouble with I had no idea were trademarks. Other domains I have were registered before a trademark of certain corps even existed. It all depends on the situation.

I'm just saying you don't need to immediately bend to the will of a company just because a legal letter shows up. Either fight for your rights (If you believe their TM is wrong), or offer them a solution that benefits both of you.

 

[mark]

How does that affect me since I reg'd the domain name on Dec 30th, 2004, 3.5 months before they filed the application...

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

that question requires a legal opinion to provide you with the best answer. perhaps mr. berryhill will stop by sometime today and respond.

 

[Theo]

The fact is that T-boz and chilli ARE generic names, especially if you have the right lawyer (RIP JC). I have two nieces with the name T-boz and chilli and if I had the website in question I would post pictures of my nieces to prove my point. The fact is that trademark law is so ambiguous that even your so-called generic names are not safe from trademark violation claims. Fox could make a trademark claim on all your so-called generic names because most of them refer to a theatrical release that Fox own the rights to...especially combat.org.
girlwithtbozandchillishowonFOX.com is available for registration but I would not touch that one because it's too HOT!!

Oh please. Coming here to let off some steam?
Combat is indeed generic. It can't get any generic than that. Do I promote that old 60's show on my domain? No. So please, FOCUS. Misinformation is the mother of all evil.

What are you rambling on about T-boz and Chilli, is beyond me.

How does that affect me since I reg'd the domain name on Dec 30th, 2004, 3.5 months before they filed the application...

Is the name generic, or is it like the case with the "Fat actress" show?
One can have advance knowledge of a show and register it in advance; this does not mean the trademark did not exist prior to the application for *registration*

 

[kingeric]

Oh please. Coming here to let off some steam?
Combat is indeed generic. It can't get any generic than that. Do I promote that old 60's show on my domain? No. So please, FOCUS. Misinformation is the mother of all evil.*

I did not say Combat was not a generic name. Read my post again carfully and this time slow down. I said "fox could make a claim that your name violates one of there trademarks" I simply claim would not make them right. But, If you decided to fight them it could possible make owning combat.org very expensive. The lesson of my post was Just because someone makes a trademark claim and they have

legal counsels on-staff

Does not make them right. I'm not an attorney but I have defeated too large corporations over the use of my domain names....and won.

How does that affect me since I reg'd the domain name on Dec 30th, 2004, 3.5 months before they filed the application

It does not matter that you registered the name prior to the show.You can establish rights in a mark based on legitimate use of the mark. The fact that your name is just parked at godaddy is not good. That's why in my previous post I said you should place some pictures in your site of friends or family with the nick names tboz and chilli or a friend name tboz that loves to eat chilli. You know what i mean.
Trademark law forbids certain kinds of "use" of a trademark, but is not unlimited in scope. For example, noncommercial use of the trademark is difficult to stop.

 

[Theo]

Corporations don't waste time establishing cases unless they are 99.9% certain that they will win. This is a case where the domain in question was registered VERBATIM after an upcoming show. The intent is evident. What are you suggesting, that he should play David vs. Goliath to prove a point? What point? The name is not generic, period.

 

[kingeric]

Corporations don't waste time establishing cases unless they are 99.9% certain that they will win. This is a case where the domain in question was registered VERBATIM after an upcoming show. The intent is evident. What are you suggesting, that he should play David vs. Goliath to prove a point? What point? The name is not generic, period.

Fact: NOBODY waste time establishing a case unless they are 99.9 percent certain that they will win.(99.9 percent certain that they THINK they are gonna win) Currently only 45.7 percent of all trademark case that go to court win! This is never gonna go to court...less than 3 percent of all "cease and desist" letters go to court and thats what this is. I'm sugesting that if he really wants to keep the name...HE CAN. I have kept all my domains without spending a dime on attorney fees. David vs Goliath? Well if you think of yourself as David then thats who you are...I choose view myself as Goliath....oh wait a minute David won that battle! let me change that. Anyway there are numerous avenues one could take to keep his domain name...believe me I have used them. I wish I could show you all the cease and disist letters I have received from corporations. Here is an example of Google trying to push around a small company. This company even uses the google logo on there site....Google got NOTHIN! This site used the Parody defense. Google lawyers have sent a cease and desist email to Booble.com. They claim trademark violation and dispute Booble's claims that the site is simply a parody... which under law is protected free speech. I very powerful defense...can we all say Goliath?

Here is a copy of the email sent to Booble:

Via Email to: BOOBLE.COM
RE: Infringement of Google's trademarks and trade dress.
http://www.booble.com (Our ref.: 4.614)

Dear Sir or Madam:

Google is the owner of the well-known trademark and trade name GOOGLE, as well as the domain name GOOGLE.COM. As you are no doubt aware, GOOGLE is the trademark used to identify our award-winning search engine, located at http://www.google.com. Since its inception in 1997, the GOOGLE search engine has become one of the most highly recognized and widely used Internet search engines in the world. Google owns numerous trademark registrations and applications for its GOOGLE mark in countries around the world.

Google has used and actively promoted its GOOGLE mark for a number of years, and has invested considerable time and money establishing exclusive proprietary rights in the GOOGLE mark for online computer services and a wide range of goods. As a result of its efforts, the GOOGLE mark has become a famous mark and a property right of incalculable value.

Google has developed a distinctive layout and design for its Google website. Over the years since its inception, Google has invested considerable time and money establishing exclusive rights in this layout and design. By virtue of these efforts, the layout and design of Google's website are recognized by visitors as originating with Google. Google aggressively protects and polices its intellectual property rights, including the various trademark and service marks used for its search services and related goods and services, the distinctive trade dress used to present its services to Internet users, and the copyrighted material on its website.

We have recently become aware of your website at http://www.booble.com (the Domain Name). This Domain Name is confusingly similar to the famous GOOGLE trademark. Your web site is a pornographic web site. Your web site improperly duplicates the distinctive and proprietary overall look and feel of Google's website, including Google's trade dress and the GOOGLE logo.

Your use of the Domain Name and corresponding web site constitutes trademark infringement and dilution of Google's trademarks and unfair competition under federal and state laws. Further, your improper duplication of Google's trade dress on the web site will mislead consumers into believing that some association exists between Google and you, which tarnishes the goodwill and reputation of Google's services and trademarks. Your registration and use of the Domain Name is in bad faith pursuant to the Uniform Dispute Resolution Policy ("UDRP") and is clearly designed to appropriate the goodwill associated with the famous GOOGLE mark in violation of the Anticybersquatting Consumer Protection Act ("ACPA"). In addition, you would not be able to demonstrate any rights or legitimate interests in the Domain Name because you are using it to tarnish the GOOGLE mark.

We note that you have given interviews to the press in which you state that you intended booble.com to be a parody. We dispute your assertion that your website is a parody. For a work to constitute a parody, it must use some elements of a prior author"s composition to create a new one that, at least in part, comments on the original author"s works. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569. Your website does not comment on the Google website at all; it merely uses the Google look and feel and a similar name for a search engine.

In view of your infringement of Google's rights, we must demand that you provide written assurances within 7 days that you will immediately:

1. Disable the http://www.booble.com website and discontinue any and all use of the Domain Name;

2. Take steps to transfer the Domain Name to Google;

3. Identify and agree to transfer to Google any other domain names registered by you that contain the GOOGLE or are confusingly similar to the GOOGLE marks;4. Permanently refrain from any use of the term GOOGLE or any variation thereof that is likely to cause confusion or dilution;

5. Immediately and permanently cease and desist from using the Google trade dress.

Sincerely,
The Google Trademark Enforcement Team

Outcome Google 0 Booble 1

 

[NavySeals91]

You may have a chance, but I suggest you tranfer the domains to them for some money, mabe $20 or more. If they won't pay then tranfer it to them. If you are a daring type, you can go to court.

 

[Salient]

I would be weary about throwing stats around. Radistar is correct when he claims 99.9%, which I will use the word "most", of cases will not be persued unless the corporation knows it can win. When KingEric says only 45.7% of trademark cases are actually won, the stats are watered down through a number of factors: 1) that 45.7% represents all cases, not just one corporation, and 2) Not all lawsuits are about chasing trademarks.

That said, and regardless of what the actual stats are, if a company actively goes after you for a domain name, they believe they can win and likely will unless thier case is extremely weak or you have tons of dough.

I should also mention my day job is for a large consumer products company that employs a substantial legal team. They live and breath the corporation and chase down all the rabbits. Be careful with the big boys, they bite. They $hit in the sandbox too, and fling it at you.

 

[Dave Zan]

How does that affect me since I reg'd the domain name on Dec 30th, 2004, 3.5 months before they filed the application...

If I recall correctly (and feel free to correct me if I'm wrong), the timeline -
existence test doesn't apply unless you demonstrated active commercial use
for the domain name.

 

[Sarcle]

First off I have recieved a few of those threats also, they are scare tactics. I remember hearing of a woman named Veronica, that was sent a letter from the Archie Comics creator and she gave up the name without a fight. This just proves that corps can push the little guy around without a fight only with scare tactics and it isn't right. If I were her, and I am not, I would have told them to shove it up their ass. It was her name and is her right to make a website. As long as you have a disclaimer that you have nothing to do with said infractions then you have nothing to worry about.

 

[Dave Zan]

First off I have recieved a few of those threats also, they are scare tactics. I remember hearing of a woman named Veronica, that was sent a letter from the Archie Comics creator and she gave up the name without a fight. This just proves that corps can push the little guy around without a fight only with scare tactics and it isn't right. If I were her, and I am not, I would have told them to shove it up their ass. It was her name and is her right to make a website.

If you're referring to veronica.org, you might want to read jberryhill's post on
the subject:

http://dnforum.com/showthread.php?t=73491&page=2&highlight=veronica

It was never transferred to Archie Comics.

As long as you have a disclaimer that you have nothing to do with said infractions then you have nothing to worry about.

I once thought that way until I finally got this:

http://arbiter.wipo.int/domains/search/overview/index.html

3.5 What is the role of a disclaimer on the web page of a disputed domain name?

Consensus view: The existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors. A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark. However a disclaimer is sometimes found to support other factors indicating good faith or legitimate interest.

Relevant decisions:
Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna D2000-0869 <estelauder.com>, <estelauder.net>, Transfer
Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic D2000-1698 <guiness.com>, Transfer
Besiktas Jimnastik Kulubu Dernegi v. Mehmet Tolga Avcioglu D2003-0035 <besiktas.com>, Denied
Pliva, Inc. v. Eric Kaiser D2003-0316 <antabuse.net>, Transfer

 

[jberryhill]

I remember hearing of a woman named Veronica, that was sent a letter from the Archie Comics creator and she gave up the name without a fight.

Well, then, you heard wrong:

http://news.com.com/2100-1023-220373.html?legacy=cnet

But after being assured by Sams that "Veronica.org" was for his daughter and the most explicit thing shown would be the bathtub snapshot, the company, based in Mamaroneck, New York, has dropped its threat to take Veronica to court.

Of course, that was all BS, since Dad decided to use the domain name for something else, as you can see at the content and whois of veronica.org.