Received the infamous letter today... Please help

[jackj]

Fellow board members, I received the infamous letter today. Just to run down a few facts, I purchased the domain in an auction by a leading web site early this year for a few thousand dollars. Few months later out of no where I get served with this letter. Apparently a decade ago there was a company named XXXXXXX which several years ago changed its name to YYYYYYY and for what ever reason still uses XXXXXXX for some business operations. As pointed in the letter they have registered mark for XXXXXXX. We are in the process of starting up a company which in no way infringes or capitalizes on that mark other than having the same name, our business and customer base is a world apart from that of the company XXXXXXX, and I am also in the process of filing US trademark. This is where things get interesting, the lawyer in his letter alleges that the registrar "accidentally" let me become the owner and that It’s illegal for me to own the domain. Honestly does any of that make sense, the letter goes on with the usual legal gibberish about punitive damages etc etc.

The way it seems is that some one in company XXXXXXX forgot to renew the domain name and 6 months after that (the domain was put on hold and subsequently deleted and auctioned off) they wake up and realize that. Now why should I be the victim here.

People, please advice me, should I just let go off this name and search for something else or do I have any rights in this free nation. Is it even worth to indulge in a legal battle with these guys because apparently its a big company with deep pockets and me on the other end am a small timer. The lawyer in his letter paints the picture that owning the TM automatically means they have rights over the domain name which I am not sure because there are 10 TM's with the same name from different entities and I would possibly be the 11th one. Out of professional courtesy I was planning to allow them to use their name servers to get stuff like email, web sites etc running and with in a time frame of a few months they could advice all their clients and get all stuff moved to their current company name, the reason I plan to make this concession is because I will not be promoting my firm until after our TM application is approved which could take several months anyway, only after that would I be using the domain name actively to promote our company and until that time the domain name is sitting idle anyway. Your advice and tips is truly appreciated.
Thanks
Jack

 

[jdk]

Sure, freedom of speech, etc. Not freedom to break a law without consequence. Did you do a TM search to see if the XXXXXXX TM is still valid?

It all depends on what XXXXXX is. If it is a vague word (i.e. dictionary word or animal name), and your business was not infringing on theirs, you would likely have a case. Otherwise, they hold the TM and such no one can infringe on it by purchasing domains using their TM.

I am no legal expert here, but I see if you have a couple of options. The likely, hand over the domain and take your loss.

I am sure if you read in the websites TOS, it may say something regarding them auctioning off TM names and it is the buyers responsibility to do their research. Still, if Walmart sells marijuana and someone purchases it, Walmart can't claim the buyer needed to do his research to see if it was illegal to purchase. Walmart would be liable.

A second option would ask the company YYYYY to buy the domain from you for what you purchased it for.

A third option would be go to go to the website you purchased the name from and find out what kind, if any, compensation they will provide. It is likely they won't do a thing (although they should).

IMHO and only an opinion it is, would be to consult a lawyer. Most will give you free legal advice on how you should proceed. There are a few right here on the board you can email for such. Just remember if you paid only a few thousand for the name, and decide to challenge, your legal costs will likely outweigh your domain's purchase price. You need to decide if you go this route if it will outweigh your domains value to you.

Best of luck as these are only my opinions and not legal advice. I can hardly tie my shoes, let alone practice the law.

 

[Finexe]

read the judgments on other tm cases, and see what you can find out. there are many of them on the net. yes, they can apply to the registry, the registry will take $1000 from them, and hand over the domain. Some morally questionable companies register forfeited domains (the second they become available), see if they get a claim, then offer an amount close to $1000, or if noone wants it, they just cancel the domain using the registry refund.

however, if your case goes to domain court, having tried to sell the domain to the other party will strengthen their case tremendously. they may even claim extort.

what you should do is keep cool, and call a lawyer.

 

[Foodie]

For a person who professes not to be able to tie his shoes, I find jdk's advice to be extremely thorough and very interesting. While I have not personally been in legal disputes, I have witnessed that one of the issues is to weigh what one stands to gain or lose from engaging in such a dispute with a powerful entity. My inexpert thoughts: pay for a consultation with a lawyer to arm yourself with knowledge, and then proceed from there.

 

[jackj]

Jdk and others, thanks for your feedback. I sincerely appreciate the time you took to help out a fellow person. You raised a very valid point, the expense of arbitration far outweighs the intrinsic domain value to me, and I would rather spend money to promote my business and company rather than to go through the uncertainty of legal hassles. If I think as an investor then I should cut and run as it’s not worth taking further loses. But the human in me preaches me to stand up to injustice, I shouldn't be made to pay for some one else’s mistake. Frankly I don’t blame the registry or domain auctioneer that much because the company XXXXXX screwed up by not renewing and are just throwing up meaning less excuses now. Its like a house foreclosure, the previous owner didn’t pay up and the bank sells it off after due notice and wait period legally.

If the domain was captured in an accidental drop or something scrupulous then yes I would take full blame for it as I got my self into it knowingly. But in this case, this domain was bought with no wrong intent other than to promote ones business which in no way infringes on any others marks. As you suggested I will have to seek legal consultation before I decide which way to go. Any good consultation lawyers out there people for matters such as these ???.
Thanks
Jack

 

[beatz]

Any good consultation lawyers out there people for matters such as these ???

John Berryhill of course:

http://www.dnforum.com/forum299.html

http://www.johnberryhill.com/


And the equally famous Ari Goldberger, winner of cases like newzealand.com, post.com, mexico.com etc :

http://www.esqwire.com/

 

[Domagon]

You may, if you have the funds to do it, and more importantly assuming the previous owner (the auction site) has significant funds to go after, may be worth going after...

There was some discussion awhile back, I think it was here on DNF, about whether a previous registrant could potentially be held liable if the domain was later found to have TM problems ...

Anyways, I concur with others here ... get an experienced attorney involved ... obviously, first try to protect your asset, but if not possible (ie. the complainant's claim is very strong), then definitely consider going after the seller ... they likely are not as free and clear as they think ... you may not get far with that, but is an angle worth pursuing if nothing else.

Ron

 

[carlton]

That you intend to use this name for a business totally unrelated to theirs may be a signficiant point. Simply having a trademark does not necessarily give them exclusivity to the word. Worth investigating.

 

[Jacksplat]

Like everyone says here, get some legal advise. I find it hard to make comments without knowing the name itself as some names may be public domain (as I call it), and other names (with previous marketing efforts) can be considered the property and right to one entity. Knowing the name helps. But, without knowing the name I can only say that if you feel strong about your right to use this name and don't feel any wrongdoing on your part then fight the fight with all you got. If it gets pricey then research your ass off. Not just issues of ownership to the name itself but also the other parties information. Look for weaknesses and find the best way to use it. I've found that if you can convince the other party they're entering a losing battle they may not begin with what they propose. Never forget that although some may portray some suit in an office without fear, they go home each day and expect peace and tranquility and for the most part have fears like anyone else. Never back down is all I can say. But if your wrong and you know it, give the name back, if you knew it when you bought it, then it's your loss.


This is my opinion. A good lawyer might be very helpfull.

 

[Deleted member 5660]

you absolutely need a domain lawyer to respond. Don't respond yourself and discuss "concessions", etc. The first thing i would want to see is a copy of their domain renewal receipts and i would get the historical whois data. i would also want to know if the lawyer on their TM application is the same lawyer who sent you the letter.

If you actually filed a TM application or are doing so right now you should also have a lawyer for that as well.

If you can't get lawyers and just decide to cave at least tell them you spent XXXXX and explain that is your out-of-pocket expenses. The dispute policy UDRP allows you to ask for the out-of-pocket expenses. Both lawyers mentioned above will at least discuss the matter with you before sending a bill so at least talk to one of them.

 

[Rockefeller]

For a person who professes not to be able to tie his shoes, I find jdk's advice to be extremely thorough and very interesting.

LOL. Thought that was funny. Sorry. :tape2:

 

[Dave Zan]

This is where things get interesting, the lawyer in his letter alleges that the registrar "accidentally" let me become the owner and that It’s illegal for me to own the domain.

Typical BS.

Chances are the original registrant/company let the domain lapse, as you said.
If that's the case, end of story.

Since you're putting up a biz with that name that's not competing with them,
then you definitely have rights to it. But if they're prepared to go the whole
nine yards, then it's up to you whether you should prepare for that possibility.

Talk to a lawyer as the others have said. Let him/her handle that for you, and
good luck!

Incidentally a long-time veteran just joined here as well: Brett Lewis. :-D

 

[john211]

If your business is in a different field, you have, in my opinion, EVERY right to own that domain, with or without trademarks. Its like apple.com, they sell computers, but its not like someone can not eat or say apple on tv, its a fruit! If they are making allusion on computers, yes, thats TM infringment.
You can register mygreatapples.com(if available) and talk about the fruits, but you can not register the same domain and talk about laptops and stuff. So you see, the same domain can break and not break the law, depending on the use.
You have a very defendable case, just like nissan.com. They guy won, cuz he's selling nissan computers, and not nissan cars. Granted, it cost the guy probably over 50K or even a lot more to defend the case, but I doubt the company you are talking about is as big as Nissan, and even then, those TM issues were new at the moment, and now it is more obvious what are the TM laws and domains, so it would not take that long or take that much money to fight for a name.

Just point to that company that you are allowed to use that name since you're in a different biz, and tell them you are ready to fight(even if not) since you are in your rights.
Another recent Tm issue. I read somewhere that a restaurant named Barbie was allowed to keep its name because the judge said that it was obvious for customers to make a difference between a doll and a restaurant(if only all the judges were like that) . So yea, if you paid thousands for the domain, I'll say fight for it(within your reasonnable limits).

 

[jackj]

Dave, John thanks for your responses.
I know that usually the defendent (Me) is made to pay for the attorney fee etc in the event we go to court and loose. But is it possible that the compliantant be made to do the same if I win the case in court of law because its them who are stirring this up after the fact that they let the registration expire and its been several months since.
Thanks
Jack