I got a nice one from Cooley Godward LLP

[Talkhost]

They sent me an email today...

Re. Unauthorized registration and use of migranol.com

They are telling me that their client owns the tradmark of migranal

The only difference being is the a and o in the penultimate letter...

The thing is with this one, they own the trademark apparantly for migranal but someone else owns the trademark for migranol (yes the ol is a seperate product, but appears to no longer be trading, hence I have their domain name)

I own the domain for migranol but not the trademark..... both products are in an identical market...

They gave me the usual "we are willing to resolve this amicably etc bullshit"
but I have told them where to go, as they are chasing a domain that I own which already has a trademark, (but not their trademark)... only difference is the a or o

Normally If I am in blatant breach, I would hand over the domain with no questions asked, but in this case I was not even aware of the company who claim the migranal trademark, and their lawyers have accused me of and I quote "your registration and use of the domain name migranol.com (an obvious misspelling of our clients migranal.com web site) blah blah infringes this and that blah blah blah....

I had never heard of their clients web site so I am really pissed off that they can even consider accusing me of obviously ripping them off....

In fact I'm so incensed that I will not even hide the domain names.... The domain I own is www.migranol.com
Search google and you can see a product was sold/manufactured or marketed under that name for many years... I caught it in a drop...

The lawyers pointed out that the pic on my site looked very like the one on migranal.com , their clients site... I do agree with that but it is purely coincidental... I tried looking at the wayback machine to see how long that pic had been there, but it was offline at time of typing....

I have gone against my own advice and replied to their email.... (I know I shouldn't have but I could not resist it)

I simply said "If you done your research you would have seen that migranol is a different trademark than migranal... I was not even aware of the existence of migranal..."

I know who the law experts are so please don't post "contact *****" regarding this.... most likely it will be read and if they / he (jberryhill) LOL wants to assist he will contact me.....

I don't care if they want to sue me cos I am in the UK and have no significant assets anyway (in my name :-D ) so I'm really prepared to go all the way with this one.... I don't like the bully boy tactics of the corps thinking that a C&D will get them the domains they want... If they want this one it will cost them money and effort :tea:

 

[nts]

Well, that picture on your site looks a lot like the one on their site. If I was looking at your site through the eyes of the Migranal lawyers I would without a doubt think that you are copying the migranal site.

I think that explains why they'd go after a domain they don't own the trademark to. It looks like you are using it to get typo traffic from their domain.

My advice is to get rid of that picture, but I'm not a lawyer, so you'll probably want to wait for advice from someone more knowledgable in this feild then I am.

 

[Domagon]

Umm, seems like a silly battle to fight, since both brand names appear to be associated with the same company Novartis...

If correct, perhaps the attorney didn't realize that when sending that C&D - another possibility is that it was sent by an automated program that scans similar looking domains to various TMs in their IP portfolio.

Ron

 

[Talkhost]

Dunno where you are getting "novartis" from regarding migranal????

That is not the company the attorney claims to represent... but it does appear that novartis was involved with migranOl at some point...

 

[nafti]

I am ovbiously no lawyer but fight it out like you are doing. If you have nothing to lose, what can you lose??? Nothing. I would do the same.

GL to you on it.

 

[Domagon]

I guess what's confusing me is that Sandoz, which merged into Novartis, is associated with the Migranal TM filing at the USPTO.

With that said it appears you are correct that there are two separate companies (Novartis and Valeant) not one as I first believed ...

However, it appears they are somehow connected in regards to Migranal.

I'm not an attorney and don't understand exactly how - perhaps the drug is licensed in some way...?

http://assignments.uspto.gov/assignments/q?db=tm&sno=74403322

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=74403322

While I don't understand the specifics, my gut says this is one not even worth the postage fighting.

Ron

 

[Dave Zan]

both products are in an identical market

Coupled with the similar spelling and what's currently displaying, they're good
enough reasons for the other party to be pissed.

Your call, really. But I'm not optimistic.

 

[DNQuest.com]

The key here is "similar or confusingly similar". Is the name confusingly similar? yes it is... Is the home page similar... yes, it is.... at least that is my thinking.

 

[Talkhost]

I guess what's confusing me is that Sandoz, which merged into Novartis, is associated with the Migranal TM filing at the USPTO.

With that said it appears you are correct that there are two separate companies (Novartis and Valeant) not one as I first believed ...

However, it appears they are somehow connected in regards to Migranal.

It's the second company the attorneys represent :becky:

They also said in their letter to me that they have informed google.. Looks like google have acted swiftly and already pulled the ads from my site... looks like I will need to park this domain somewhere until this is resolved..

As I said I have nowt to lose so I am not giving them the domain. If they want to pursue it, it will cost them :becky:

 

[jdk]

Then tell them to make a quick transition to avoid legal fees you are willing to hand it over for $1k. Although this is not any kind of legal advice and should be taken with a grain of salt.

 

[Talkhost]

I have been looking in to this more, and it seems they are trying to pull a fast one by making a page on their site that is similiar to mine.... My site has been up for a long time.. I've owned migranol.com since Aug 2005..

Searching for migranal.com on archive.org wayback machine the latest entry is march 2005, and the site is nothing like mine...

Can't find any google cache for the site but I'll bet I had that image on my site before they put up a similiar one

If anyone is better than me at finding previous site content I'd be glad of the help..

 

[Talkhost]

Then tell them to make a quick transition to avoid legal fees you are willing to hand it over for $1k. Although this is not any kind of legal advice and should be taken with a grain of salt.

That wouldn't be a very wise move...

I'm not going to play into their hands by inviting them to make me an offer..

I'd would refuse 1K anyway... Would cost them a lot more than that to go the legal route, plus, I want to keep the domain, I don't want to be handing it over for any amount...

It's a principal thing, I won't allow anyone to bully me by using lawyers...

 

[Talkhost]

Here is the migranol product, and it clearly shows the TM mark on the packaging.. The distributer of this product has nothing to do with migranal as far as I am aware.
http://catalog.designsforhealth.com/s.nl/it.A/id.954/.f?sc=2&category=3

If they ask me for the name then I'd hand it over as it is obvious they have a right to it... But valeant and their attorneys can go take a running jump
The migranal product is not even similiar, it's a nasal spray...
http://prescriptionmigrainerelief.com/HTML-INF/3_0_About_Migranal/3_2_Why_Nasal_Spray.shtml

 

[Theo]

Sounds like them being "anal" has caused you a "migraine" :-D

 

[Talkhost]

LOL... The name suits them true enough Perhaps that's why they want my domain, cos it does not have an ass on the end

They also say that my domain is "obviously" a typo of theirs. Just checked my awstats going back to early June and almost all traffic comes from search engines, mainly google... The only 2 search terms in the entire period are "migranol" and "www.migranol.com"

Since google have pulled the ads on my site for now I have decided to place free links to the overture top bidders for migraine I'm sure they will not complain LOL the top bid is 5 bucks and I'm giving it free

 

[izoot]

With your post here they are likely to know your feelings exactly. All the threads here are indexed. A google search of the name gives these results:

http://www.google.com/search?hl=en&q=migranol.com&btnG=Google+Search

The links don't seem to open the thread here directly but a search of the site would bring it soon enough. IMHO ... I don't see much of an ability to fight it ... if they want the name.

 

[Talkhost]

With your post here they are likely to know your feelings exactly. All the threads here are indexed. A google search of the name gives these results:

http://www.google.com/search?hl=en&q=migranol.com&btnG=Google+Search

The links don't seem to open the thread here directly but a search of the site would bring it soon enough. IMHO ... I don't see much of an ability to fight it ... if they want the name.

I know this will be indexed and I don't really care... I've already made my feelings plain to them directly..... If they want the name then all I can say is "come ahead ya bass" (fighting talk in Scottish language)

On what grounds don't you see the ability to fight it?? They DO NOT own the TM for migranol... they simply have no case.........
Did you read the entire thread? Migranol is a completely different product and owned by a different company...

 

[Domagon]

They don't need to own those other marks to challenge it...

The key points for them are:

* Is it confusingly similar to their TM? ... YES.

* Did you register / use it in good faith? NOPE (in their view)

* Do you have a trademark for it? NOPE

Umm, where does that leave you ... all they need to do is file a UDRP and it's done.

Sure you may get lucky and win the UDRP ... if that happens, then you could have enough leverage to keep it; get a nice settlement...

But more likely, they'll spend ~1K or so (their attorneys are likely on retainer and thus minimal cost for that part) and you'll be losing the domain unless you choose to challenge them in court.

I'm just not seeing the logic of fighting this one, since they have a bonafide claim to the domain - it's confusingly similar to their TM.

Perhaps you'll prove us all wrong ... keep us updated - signing off this thread until then. Good luck.

Ron

 

[Talkhost]

That's the whole point. It IS NOT confusingly similiar... it is completely different... read the whole thread.... already a product with the migranol TM so they cannot claim it for themselves... Sure, the TM does not belong to me for migranol, but the point is, it DOES NOT belong to them either..... They have no more right to the domain than I do..

Let them spend money to pursue it, it's no big deal to me... it only cost me 30 bucks in an Enom drop... But I am not handing it over to them. Simple as that.

 

[jberryhill]

I love those old movies of steam trains crashing head-on into each other.

The "MIGRANOL" application never registered, because...

Mark (words only): MIGRANOL

Current Status: Abandoned after an inter partes decision by the Trademark Trial and Appeal Board.

Ummm... what this means is that there was a decision by the TTAB that the applicant for MIGRANOL was not entitled to register the mark because someone else had superior rights. Not only that, but it was someone else who showed up, fought Sandoz, and beat them.

That just might tell you something... but I hate to ruin a surprise.

(on edit: Yup, sure enough... there were opposition proceedings in both application histories.)