Trademark Confusion- Newbie PlEASE HELP! - qualityassurant / com

[TheRayven]

Hi,

I am a new domainer and recently received a cease and desist secondary notification. I never received the actual letter, but today I found a message in my spam folder saying that I am about to be UDRP'd if I do not delete the domain today. The company is Assurant Inc. who owns Assurant (.) com and the domain I own is Quality Assurant , com . I have it parked at Sedo and had no intentions of trademark infringement.

Do I have any recourse other than to simply delete the domain??

Thanks in advance for your advice

 

[Shane]

Sounds like bs to me.

 

[Cartoonz]

tell them they can have it for $1k, that's way less than the UDRP would cost them and it is no guarantee they would win.
That said, it does sound like BS... but from your end.
WHY would you register this last month?

 

[TheRayven]

I am brand new at this stuff. Sounds like a generic phrase to me. I have a few friends who work in QA and was surprised the name was available so I registered it. The email came from [email protected] so I believe it is them and assume the smart thing to do is just delete it. Can't that hurt your case and make it seem like you are trying to cybersquat by asking for money for the name?

 

[Shane]

Yeah do NOT ask for money. Send the guy an email explaining your story and then stick to your guns. If you truly didn't register it in bad faith... you have nothing to worry about.

 

[TheRayven]

Whoops. I deleted it before I saw that response. They have the word Assurant TM'd and if you Google it, every result on the first 3 pages is either owned by or related to them. Figured it was not worth it. In theory though, as I did not intend to dilute their brand and was not using it for anything other than parking, would it have been a risky move to try to stick it out and keep it? Quality Assurance is a huge industry and Assurant Inc. is an Insurance company.

 

[Shane]

Huge industry = valuable domain

They just secured your domain for reg fee by sending an email. They win.

 

[urlurl]

if assurant is trade marked, and its not a dictionary word, best to delete

 

[dean]

You can own a domain name that is trademarked! As long as the use is not within the same Trademark classification, and as long as your domain does not pose confusion to the site visitor. Always check uspto.gov
http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=4004:1qnnnv.1.1
to find the trademark status as "live" and the classification numbers (like 009, 44) then check the definition of that class here
http://www.uspto.gov/trademarks/notices/international.jsp

DO NOT FEAR A CEASE AND DESIST LETTER! It would cost a company about $1,500 to $5,000 to request your domain back using WIPO organizational and that does not include legal fees. In most cases those companies would just try to buy the domain for under 1000 bucks - it would be cheaper for them. See charges:
http://www.wipo.int/amc/en/domains/fees/index.html

However , if your site is completely different, and you're using adsense and affiliates, before sure blacklist the products and services of that classification.

If your domain and website are doing similar business (same classification) but that business's trademark is filed in another county and not in the USA, then you would still have a problem if you offer services in that county.

If a company uses TM in their brand/logo that most likely means they do not have an official trademark. Using an (R) symbol means they have an official trademark. Always check the uspto.gov site

Disclaimer: This is not legal advice and I'm not a lawyer. There are scenarios above does have some exception. Seek more advice.

As a domain owner and business person, I've been through these issue before. Hope that helps!
Dean