Need some legal advice...

[Leading Names]

I’ve just received an email (apparently backed up with registered letter, though I have yet to receive this) from an attorney representing the owner of a three-letter trademark ‘SFR’, I own SSFR.com and they want me to either.

- Undertake never to use in the future the mark SFR;

- Transfer amicably the domain name www.SSFR.com

Now this seems odd as in my book SSFR is an acronym with numerous possible uses, SSFR.com is not being used at present, it simply points to a Moniker parking page. The name was registered with good intentions, I have absolutely no intentions of developing a website offering similar products/services to SFR.com.

Could a lawyer please advice what I should do, I would think they haven’t got much of (if any) case but would like to get a second opinion.


Thanks for your help
- Rob

 

[actnow]

Rob, I will leave the legal questions to the "JD's"

But, I wonder if they sent the same letter to
ASFR.com, BSFR.com, CSFR.com, etc. And, also to the .net, .org and info owners.

Or, Is the lawyer just trying to justify his job? Or, are they thinking that you will cave in
and give up rights to avoid a fight.

I notice that 7 OTHER companies have a U.S. trademark on sfr including Uniroyal.

Please keep us posted on how this progresses.

 

[Leading Names]

Thanks Richard,

The funny thing is…

The email was sent from a French firm yet in their email they say.

‘Our client is the owner of many trademarks registrations including the term SFR and especially in the UK. Besides, SFR is protected as a trade name.’

But when I go to SFR.com I get ‘Welcome to France with SFR’ with all text in French not English.

Cheers
Rob

 

[Leading Names]

BTW, this is the company who the attorneys are acting on behalf of

SOCIETE FRANCAISE DE RADIOTELEPHONE SFR, which head office is 1 Place Carpeaux, 92800 PUTEAUX.

- Rob

 

[HOWARD]

I would suggest that you retain an attorney to send them a letter telling them that they are way off base and that you did not register, nor are you using the domain in "bad faith" or to compete against them or to cause confusion,

 

[Leading Names]

Another update… both sfr.co.uk and ssfr.co.uk are developed, the latter by a furniture restoration company.

Any lawyers have an opinion on this? Do they even have a case?

Cheers
Rob

 

[dax]

Let them file UDRP suit, they cannot win.

First,
Domain Name: SSFR.COM
Creation Date: 25-apr-2004
- you did not have time to develop your website in 20 days.
This period is too short for conclusion that you are using this domain in bad faith just because you dont have active website on it. It is parked on the registrar's website, which is completelly legal, since many other registrars do the same (GoDaddy, Register.com...)

Second,
SSFR is an acronym and you can easily dispute TM similarity and registration in bad faith. Also, you can have legitimate interest in it since SSFR can mean basically anything...

So,
they cannot proove neither 1 of 3 (and all 3 is necessary) UDRP facts.

 

[Monte]

Rob - This should help. John Berryhill is one of the best in the industry on this topic and he wrote a feature story on this issue in this month's Moniker.com DomaiNewz - http://www.moniker.com/news.html under "Winning Domain Name Disputes" (Volume #2)

This is a very comprensive and easy read article that can help anyone in defending their right to ownership of domains. If you need help with this, you can always drop me an email at [email protected] or call me at 954-984-8445 and I can go over several examples with you and even refer you to John if you are in need of his services. He is also a forum member and may post a response to your issue directly.

Hope this helps!

Monte

 

[Garry Anderson]

Monte - on this article, whilst he is legal expert, I strongly disagree with John on one crucial point.

He says, "For example if you registered a domain name with the word "shell" in it because you collect seashells, or you are in love with someone named Shelby or Michelle, then by all means include a picture of your shell collection or copies of your love letters in your response. If the only thing the panel has in front of it is one of the largest oil companies on the planet calling you a cybersquatter, and you do not bother to provide them with a simpler reason why you registered the domain name, then you can kiss your lover goodbye. Providing evidence is the difference between arguing a point and proving a point."

We presume person is not using this domain illegally (e.g. trademark infringement) - else the case is open and shut.

Thence, any learned panel member must have a d*ck for a brain - if they believe the word "shell" belongs solely to this one company - that no other person or business can use it.

Ask John if it is lawful for Shell Oil Corporation to prevent others using the word "shell" when it is not used unlawfully.

The panel member will be simply be aiding and abetting the Shell Oil Corporation to overreach their trademark.

Incidentally, Shell has been criticized by environmental and human rights groups for a number of their practices.

 

[jberryhill]

I am hard-pressed to understand with what you disagree. If the domain name is being used lawfully, then one simply need point that out to the panel.

There are two ways to point that out to the panel. One way is to behave like a contemptuous jerk. Another way is to present evidence supporting your argument.

I have defended numerous domain names in UDRP proceedings. You have defended none. If your strategic preference is to behave like a contemptuous jerk toward the panel, then you are certainly entitled to your opinion.

There are panelists who take the position that they are not to conduct their own investigations of the facts, but, like any other judge, are to render opinions based on the facts presented to them. So, if the domain name is being used for lawful purposes, only an idiot would disagree with the suggestion that one provide evidence to prove that fact. If you don't *show* the panel what is going on, then they won't know what is going on.

If one has been the subject of a frivolous legal prosecution, then one has remedies available to address that. Malicious prosecution is actionable, and in the US the Lanham Act provides for recovery of costs and fees resulting from a frivolous UDRP filing.

So, yes, by all means one can choose to go into a UDRP dispute by pre-emptively informing the panelist that he or she has an unusual cranial anatomy, or one can present a competent defense. I suppose it is just a fair choice of strategies.

 

[actnow]

Rob is extremely sharp individual. And, I am sure he will not let it get
to a URDP position.

It is important to try to stop this frivolous action before it becomes a case.

 

[Garry Anderson]

"I have defended numerous domain names in UDRP proceedings. You have defended none."

You know that I have great respect for your work and legal knowledge.

"I am hard-pressed to understand with what you disagree."

You are very intelligent - and I am certain you know with what I disagree.

"One way is to behave like a contemptuous jerk."

My disdain is for a process that has contempt for the people.

"If the domain name is being used lawfully, then one simply need point that out to the panel."

Err - you have that the wrong way around - it is for the Complainant to PROVE this guilt.

That it is not being used illegally (and it could be used by other businesses) should be obvious to these monkeys.

e.g. Like JT.com - domains are being stolen by OVERREACHING businesses - aided and abetted by corrupt authorities.

 

[Mr Webname]

[MODERATOR'S NOTE]

Fascinating though it is to watch another legal/para-legal debate get under way, I suspect that Rob's comment:-

Could a lawyer please advice what I should do

indicates that he requires some informed professional guidance to specifically assist with the position he finds himself in and not a re-hash of a continuing debate over the perceived failings/rights and wrongs of the legal establishment. :-#

 

[Garry Anderson]

Whilst I cannot legitimately reply to "Could a lawyer please advice what I should do" - I and others have indicated that we believe he has a very good case.

I believe if Rob is not using SSFR for illegal use - then SFR are overreaching trademark by preventing him from using this different initialism for purposes not associated with their business.

 

[Mr Webname]

Whilst I cannot legitimately reply to "Could a lawyer please advice what I should do" - I and others have indicated that we believe he has a very good case.

I believe if Rob is not using SSFR for illegal use - then SFR are overreaching trademark by preventing him from using this different initialism for purposes not associated with their business.

I agree, I just don't want Rob's thread to get hijacked, even from good intentions

 

[jberryhill]

"indicates that he requires some informed professional guidance to specifically assist with the position he finds himself in"

It virtually goes without saying that he should seek such guidance, and I gather I should answer the question:

"Could a lawyer please advice what I should do?"

Yes, a lawyer could advise you on what you should do. What a lawyer *cannot* do is to provide you with competent and specific legal advice on a public discussion board. To attempt to do so would do you more harm than good.

It is also not necessary to re-hash all of the reasons why posting the specific facts of one's legal predicament in public is more often a tremendously bad idea than a good one, which is why I do my best to ignore threads where individuals have already begun to do the first thing I would advise against doing.

Discussing "legal issues" as per the name of this forum can be informative and, I hope, often entertaining. It is trivially true that one cannot conduct confidential and privileged discussions in a public forum, as one would be entitled to do with one's attorney. Why not invite the trademark claimant to come here, so that they can be provided with advance notice of any strategy or argument that may be made? Of course, they may already be reading the thread, so there is no need to invite them.

Have you ever noticed that the attorneys here tend to avoid threads where people do this kind of thing or, as Howard noted above, don't say much beyond, "I would suggest that you retain an attorney"?

There's a reason for that.

 

[Leading Names]

Thanks Richard, John, Monte and anyone else who kindly contributed to this thread.

I appreciate that certain things cannot be openly discussed on a forum such as DNF, I mealy wanted to hear other peoples opinions on this, while most members comments backed up my own feelings it’s always nice to get a second opinion.

Thanks again to all who contributed. No further advice is required.

- Rob