HELP: "Rolex" trademark

[anonzymuz]

Hey, I just got a letter from attorneys representing the ROLEX Watch Company.

The story is a domain I own has the word "Rolex" in it. The site does involve rolex watches.

I've agreed to change my domain, except they want me to hand over the domain. I don't want to give up the domain, as I have already established my website and I get hits every day.

My question is... Is there anyway I can keep the domain, and when people visit my site, can I post something saying that I've moved domain names. Then say something like "THIS SITE HAS NO AFFILIATION WITH ROLEX Watch Company or ROLEX.com"

Thanks ahead..

 

[Theo]

Rolex = famous mark. What are you using it for?

 

[anonzymuz]

I am an unauthorized rolex dealer (which I specifically stated on my site) from atlantic city, so I post all my watches for sale on a blog. We own jewelry stores in AC and this is where we do our internet sales.

 

[domain newbie]

"unauthorised rolex dealer"- doesn't sound too good

switch the name, win some time for people to get used to new name, tell them(rolex) you will transfer it when back from holidays

 

[Theo]

Solid advice.

 

[anonzymuz]

There's nothing wrong with being an unauthorized rolex dealer. There are plenty, and in the watch business this is normal, except it's the domain thing that's affecting me. They want me to hand over the domain... Do I have to?

Thanks!!

 

[south]

There's nothing wrong with being an unauthorized rolex dealer. There are plenty, and in the watch business this is normal, except it's the domain thing that's affecting me. They want me to hand over the domain... Do I have to?

Thanks!!

Would they let you use it if you were to become an authorized dealer? If so, would it be cost effective?

 

[domain newbie]

Solid advice.

yea, i got the feeling "freebies" will be over soon... :-/

 

[anonzymuz]

Would they let you use it if you were to become an authorized dealer? If so, would it be cost effective?

Im not sure if they would allow me to use it if I were to become AD, except that's almost impossible to become an authorized dealer. Rolex is very very very very selective when it comes to being AD

 

[Theo]

The problem is not whether you are an authorized dealer or not, it's that you're using their famous mark to engage in business related to their product.

 

[anonzymuz]

The problem is not whether you are an authorized dealer or not, it's that you're using their famous mark to engage in business related to their product.

Right, I agree, can I at least keep the domain name to inform everyone that I've moved?

 

[Theo]

I am almost certain that you'd have to seek an alternative solution, in order to avoid further problems from Rolex. Additionally, ensure the agreement documents clear you from any future litigation. In return, you'll most likely have to agree not to register a domain that contains their mark(s) in the future. You might have to see an attorney to tweak the terms of the agreement in order to protect yourself, while handing over the domain.

 

[domain newbie]

anonzymuz, you have No chance, dunno even try or can possibly end up with the bill from your sales and whatever taxes you never paid, just do the best what you can to save collected visitors and move into hiding

 

[DNQuest.com]

Ok, you have options here:

1a- Do as they ask, hand over the domain and apologize. They are happy and matter over
2a- Fight them and cry even though you blatantly used their TM without permission. They file a UDRP, you lose.
2b- Fight them and cry even though you blatantly used their TM without permission. They file ACPA, you lose. You are fined up to $100,000.00 , they get damages of all revenue (not profit, but all of it) from the site, you pay attorney fees (theirs and yours) plus any additional damage they may feel appropriate.

To be frank, you are using the TM in a commercial manner without consent, so you can have all the "unauthorized" all you want, that only works for fan/suck sites used in a noncommercial manner. They are in a very strong position and they can have their way with you depending on the lawyer you are dealing with. I suggest being as nice as possible and hope all they want is the domain. I would strongly suggest you don't put a link redirecting traffic elsewhere. The last thing you want to do is create more problems for yourself.

 

[anonzymuz]

Thanks for the advice you guys. I'm gonna go ahead and launch my new domain and see what they say. I've made it very clear that I am not affilated with rolex watches etc etc..

newbie, all my sales are on paper, and I have receipts as proof.

Thanks again for the help!

 

[Dale Hubbard]

Doesn't matter whether you're a dealer, an unauthorised dealer, or
whatever. Hand it back immediately for no charge and don't register any domains with the word 'Rolex' in them. There is absolutely no way you can use it. Period. I used to own rolexes .com but was glad to get rid of it. It's now back in the hands of Rolex. They have lots of dollars to spend on defending their mark and they do it VERY rigorously.

Just my 2c.

 

[anonzymuz]

Doesn't matter whether you're a dealer, an unauthorised dealer, or
whatever. Hand it back immediately for no charge and don't register any domains with the word 'Rolex' in them. There is absolutely no way you can use it. Period. I used to own rolexes .com but was glad to get rid of it. It's now back in the hands of Rolex. They have lots of dollars to spend on defending their mark and they do it VERY rigorously.

Just my 2c.

hey thanks a lot for the advice you guys. I'm not even going to bother redirecting the site or any of that matter. I'm gonna give it up and launch a different name. It would be much more of a headache trying to keep the damn domain. I really appreciate the help. Thanks again.

 

[TheLegendaryJP]

You are using their tm and add to it you are an unauthorized sdealer ( something that dislike ) and you want to know if you could keep it ? lol Maybe become an authorized dealer, buy from them and then ask.

Why should they allow you to you their tm to offer their watches when you are not paying the piper ?

Hand over the name and hope it ends at that.

 

[anonzymuz]

It's done and over with, I've unlocked the domain and emailed them the auth code. A job well done. Thanks for advice!

 

[Dave Zan]

hey thanks a lot for the advice you guys. I'm not even going to bother redirecting the site or any of that matter. I'm gonna give it up and launch a different name. It would be much more of a headache trying to keep the damn domain. I really appreciate the help. Thanks again.

Considering your circumstances, that's a wise decision.