Here is the message that was sent to me today.
what do you think
Your recent e-mail to has been referred to me for a response. You have previously indicated that a large amount of traffic intended for MTV Networks ("MTVN") and our NICKELODEON channel has been diverted to two Internet domains which you have registered, nickkid.com and kidnick.com. This is not surprising because the domains incorporate as a principal feature our internationally famous NICK trademark which is used on programs and products for kids. Because you also stated that these domains had originally been purchased by you not for the purpose of profiting, but for a family website, we negotiated with you in good faith. The result of those negotiations was an agreement to pay you $1000 per site - which not only compensated you for the registration fees, but also provided a bonus as "thanks" for bringing the matter to our attention.
However, now that Ms. Dillon has sent you the necessary paperwork, you have reneged on that agreement (on the apparent advice of your wife) and are demanding some unspecified greater sum to transfer the domains. This action has significant legal ramifications, and I want to make these clear to you.
1) This constitutes breach of the oral contract that existed between you and MTV Networks. In your communications with Ms. Dillon, all material terms were agreed to (e.g. payment terms, transfer requirements, etc.). The completion of the transfer forms and W-9 was not necessary to the formation of the contract, but was only necessary to your performance and our disbursement of the funds. As you have failed to perform on your obligations, you are liable to MTVN for breach of contract and MTVN has the right to enforce the agreement in a court of law.
2) By attempting to profit based on the confusion created between your domains and our trademark, you are now acting as a "Cybersquatter." The Anti Cybersquatting Protection Act, 15 U.S.C. 1125, provides, in pertinent part:
(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person--
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that--
***
(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark;
* * *
(B) (i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to--
* * *
(VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct;
* * *
(VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
* * *
(d) In a case involving a violation of section 43(d)(1), the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.
[Note: Some cybersquatters have also been subject to criminal prosecution under the Truth in Domain Names Act which prohibits a domain name that misleads children to adult content. As you negotiate with these "other companies" for the domains, you may wish to be aware of this legislation as your domains do in fact mislead children into believing that there will be content related to children's programming on your site. However, MTVN takes absolutely no position regarding the applicability of this statute in this matter.]
What the ACPA means in this case is that there is no question that the domains incorporate the famous NICK trademark, and that there has been actual confusion by consumers who e-mail you seeking our services (I believe you described it as "overwhelming"). If a court finds that you have a bad faith intent to profit from the domains now, not just at the time you registered, then you can be liable under the Anti Cybersquatting law. To find bad faith, the court can rely on your offer to sell the domains to MTVN and your admitted attempts to sell them to other companies with no rights to the trademark but who would presumably seek to unfairly trade off the traffic that is being generated from the confusion created by your domains. The statutory damages or fine that can be awarded is from $1,000 to $100,000 per domain.
It is not the policy of this company to do business with cybersquatters, and we only negotiated with you because it was our belief that you were not operating as one. Typically, we pursue legal action against persons that we feel are infringing our trademark rights rather than set the precedent that MTVN can be "held-up" over domain names. Given the number of marks that we deal with, it is worth the time and money for us to enforce our rights vigorously.
Now, it would appear that we were misled, as you are asking that we give you even more money for the transfer. This is precisely what the cybersquatters that we file suit against do. They attempt to cash in on the value of a domain name that exists only because of the incredible amount of time, money and energy that the people of this company have invested to make NICKELODEON such a popular channel with kids around the world. On their own, your domains are worth no more than they cost to register. It's only when you siphon off the goodwill of our channel that the domains have any value at all.
It is our continuing hope that you are not determined to divert the value of our efforts to your own ends. If your message to Ms. Dillon was due to a misunderstanding of your legal obligations and our legal rights, then we are also willing to honor the contract that you made. Please complete the forms and return them in the pre-paid envelope, and we will send you a check for $2000. We will not, however, negotiate further or increase the payment. If you decide to continue to breach the contract, we reserve the right to pursue any and all legal remedies available to us. Please respond via e-mail and let us know of your decision.
Please note that this message is not intended to be a complete recitation of all relevant facts and/or law, and is written without waiver of any rights MTVN may have, all of which are expressly reserved.
Sincerely,
Please give me advice.
