Trademark warning letter and request to deregister.

[neonoceans]

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              So I get this email just after registering a name that is trademarked- linked with a well known trainstation- which is not trademarked. ie. Trademarkednametrainstation.com
              Not using the trademark name alone but as one word linking the trainstation name. The registrar parked it free- I don't get any revenue or even set the links from the parked page and the page is set up by the registrar and is covered with other peoples ads using the same trademarked name. What's a prudent course of action. 1. ignore letter 2. Deregister or 3. negotiate and negotiate what?
              The registration was not in bad faith -no website just my domain.
              Should I ask the registrar to remove parked page? which came free with purchase. The company is planning to open a store in the trainstation.- which is probably why they sent the letter.
              
              

Reference:
.


I write on behalf of (Big fashion company)., owner of the trademarks and also the owner of ..... domain names.

Since 1912, .... has invested time, effort, expense and expertise into establishing the ..... trademark as a valuable indication of the origin and quality of the goods sold under it. As you are no doubt aware, the ..... and ..... trademarks are known throughout the world and associated with items of unique design and quality.

It has come to our attention that you are the administrative contact of the domain name.
The ..... trademark is registered in many countries and in most of the classes of products/services.

Therefore, the use of our trademark in a domain name shows a clear intent to take advantage of our world-wide notoriety and diverts internet users. Furthermore, the links offered in your website are connected to websites that offer for sale products bearing the ..... and ..... trademarks without being authorized by the trademark owner with the consequence that such products could violate our intellectual property rights.

In view of the substantial reputation that our trademark has developed since now, we are entitled to take action against you for infringement of our rights.

As a consequence thereof, you are requested:

• to immediately de-register the domain name ...........
• not to use the ..... trademark or any mark substantially identical or similar to it in any future domain name you will register;
• to pay, in the event of any breach of these undertakings, ..... costs on a solicitor/client basis.

Should you not observe this warning and not excute this undertaking within 10 days from the receiving of this notice, we will feel free to adopt any appropriate defence of our image and trademark. By sending you this letter, ..... is not waiving any of its legal or equitable rights or remedies, all of which are expressly reserved.

Please confirm your acceptance of the above by signing a copy of this letter and return it to us by fax ........

Best regards.




Group Intellectual Property Director



For acceptance of the above requests:
Date and signature

 

[Theo]

So you registered something like adidastrainstation .com and you expect them not to send you a C&D ?

 

[neonoceans]

So you registered something like adidastrainstation .com and you expect them not to send you a C&D ?

It was more like adidaswaterloo.com and no, I wasn't expecting a C&D- in fact I was surprised to see so many "unauthorised" same Brand name ads on my free parked page- why doesnt' the corporation go after those actually selling the fake goods?? Point is the alleged trademark applies only to the brand in and by itself -not forming part of another nonrelated term like a place name as a single word, which currently has no connection to the brand- is it not? Also they have no trademark I think where I'm based. I'll have to check. I don't know if that makes a difference or not, In any case what are my options? I do believe there will be at some point an actual so called adidaswaterloo.com (not the brand I used) similiar to what I registered- but it hasn't opened yet...

 

[Theo]

You're assuming too much. The basis of tm law is the protection of the mark against any dilution, not merely its existence in the class of goods that it was granted for. Furthermore, from your description, your registration can be perceived as a localized variant of the mark, indicating for example a local store for that product. This is a misuse of the mark unless you are an authorized dealer for that product in that location.

 

[Dale Hubbard]

Acro has it. That's the way it is, prima facie.

 

[neonoceans]

Well by that logic, there's a site of the same brand registered by someone else say, for arguements sake- called adidastown.com and from the looks of it, the site has nothing to do with the trademark holder (but in the adidas town site example- maybe there is something to do with adidas.)
A case of double standards ? Either the trademark holder goes after all or none? I'm interested in what the implications could be.
As for trademark dilution- happens all the time. My own company name was copied with a typo and a C&D order from my board to the domain owners in India achieved nothing. Maybe the really big companys have money to throw at lawyers.

 

[Theo]

Another common misconception: someone else is doing it, therefore it's permitted.

Focus on your own situation. If raising that point to the tm holder makes you feel better, be prepared for a not so kind response from them. The more one swirls the pot, the denser the soup becomes.

 

[domain newbie]

i don't know if this helps ?? - but some parked pages has disclaimer at the bottom:

"Disclaimer: (your company INC) maintains no relationship with third party advertisers. Reference to any specific service or trademark is not controlled by domain owner and does not constitute or imply its association, endorsement or recommendation."

 

[BidNo]

Just deregister -- unless you're ready to spend thousands (and potentially tens of thousands) to protect the domain; and most likely still lose it. Companies are required by law to defend their trademarks or they lose the right to do so; they are not likely to back down and walk away from their brand. Just chalk this up as a lesson learned and realize the downside risk from your course of action is far worse than any potential upside. They're giving you a second chance and I would strongly suggest you take it.

 

[Luc]

The ultimate insult for any trademark owner. Selling cheap knock offs when customers are trying to navigate to the actual site to buy the real thing.

Give it back or de-register.

 

[neonoceans]

The ultimate insult for any trademark owner. Selling cheap knock offs when customers are trying to navigate to the actual site to buy the real thing.

.

I'm not even selling anything. The registrar allows the free ads for cheap knockoffs. I didn't even ask for free parking.

My point is this: For all I care I may well have a dog called Adidas and a parrot called Waterloo and one day in the future I might decide to do a website on them called adidaswaterloo.com (not real brand/location name)
If I ask the registrar to remove the free parking page where other peoples knock off ads proliferate, Can I then tell the complaining company to go away and why they should go away? Actually I have no problem deregistering, but I don't give in easily-especially to a company that claims a Location as a TM too.

 

[DN BROKER]

I'm not even selling anything. The registrar allows the free ads for cheap knockoffs. I didn't even ask for free parking.

My point is this: For all I care I may well have a dog called Adidas and a parrot called Waterloo and one day in the future I might decide to do a website on them called adidaswaterloo.com (not real brand/location name)
If I ask the registrar to remove the free parking page where other peoples knock off ads proliferate, Can I then tell the complaining company to go away and why they should go away? Actually I have no problem deregistering, but I don't give in easily-especially to a company that claims a Location as a TM too.

all the best, keep us updated

 

[neonoceans]

Upon further research, I have discovered that the TM brand name is also the name of a Town and region in a popular region of Europe. Therefore by linking the town/region to a geographical transport location- (ie. example- adidaswaterloo) I don't think the TM holder can claim any TM infringement on both locations in a one word domain name? If that's the case I can offer for sale train tickets/ bus tickets/transport related services on any potential website I do decide to develop? Is this a rational justification for my keeping the domain that could be made to the complainaint here? Just exploring all options and thanks for advices so far.

 

[dvdrip]

If the train station is located at the Town or the region then you might have some luck.
But if the train station is at London and the Town is at China then you have no luck.

Also why did you register the domain in th first place?

 

[Deleted member 5660]

The ultimate insult for any trademark owner. Selling cheap knock offs when customers are trying to navigate to the actual site to buy the real thing.

Give it back or de-register.

Actually that happens every day in the real word. Every do into a drug store and ask for Tylenol? They send you down an isle with Tylenol and their store brand generic knockoffs.

 

[Theo]

For all I care I may well have a dog called Adidas and a parrot called Waterloo and one day in the future I might decide to do a website on them called adidaswaterloo.com

I suggest you call your dog and parrot otherwise; unless you have money to waste trying to pull that stunt in front of a WIPO panel.

 

[neonoceans]

If the train station is located at the Town or the region then you might have some luck.
But if the train station is at London and the Town is at China then you have no luck.

Also why did you register the domain in th first place?

Any transport link providing direct connections from that specific brand (which is also a region/town) to the specific location should be a valid reason- especially if there a lot of passengers travelling From London to China ina major transport hub- Hey it could be a long distance bullet train 20 years from now.
As to why I registered the name? Beats the hell out of me. Blame it after too many drinks at the Pub like quite a few on this forum.:smilewinkgrin:

I suggest you call your dog and parrot otherwise; unless you have money to waste trying to pull that stunt in front of a WIPO panel.

My mantra in all matters legal is to make the other party do all the work.
But thanks for your realism advice.

 

[dvdrip]

As to why I registered the name? Beats the hell out of me. Blame it after too many drinks at the Pub like quite a few on this forum.:smilewinkgrin:

So you provided the solution to your problem. Just delete the domain and go to the pub.

 

[neonoceans]

So you provided the solution to your problem. Just delete the domain and go to the pub.

So what's the scenario should I choose to ignore the complaint on my own.
Wouldn't mind a bit of insight from some members who've done that.
Some members seem to think the complainant is ruthless "they're giving you a second chance" or "Just drop it or hand it over" "It's not worth the expense protecting a dn unless you've sacks of money and you'll probably lose anyway" But on the other hand what actually happens in the majority of cases if one doesn't drop the name and ignores correspondence. Just how costly can it get for the dn owner. Curious to know from a legal standpoint, that's all.

 

[dvdrip]

So what's the scenario should I choose to ignore the complaint on my own.
Wouldn't mind a bit of insight from some members who've done that.
Some members seem to think the complainant is ruthless "they're giving you a second chance" or "Just drop it or hand it over" "It's not worth the expense protecting a dn unless you've sacks of money and you'll probably lose anyway" But on the other hand what actually happens in the majority of cases if one doesn't drop the name and ignores correspondence. Just how costly can it get for the dn owner. Curious to know from a legal standpoint, that's all.

It depends. They might go away. They might file a UDRP. They might sue you if you are located in the same country.

You can also ask them for $1000 and they might accept. But because they told you to de-register they are probably not interested.

You can always try to defend the UDRP on your own. It's cheap but time consuming. And time is money.