Urgent: Need an advice from any internet lawyer

[Dirk Wagner]

Hi everybody,

since I am a long time member here in this forum and know that there are
some internet lawyers are here too who know the laws about trademarks
I want to ask you about a case which happened to me 10 days ago.

About 10 days ago I received an email from somebody using a @facebook.com
email address who want me to force to shut down my domain facebooksecretsexposed DOT com or they would take legal actions against me.

I am a German native and living in Germany too. The domain is registered at namecheap
with whois protection and hosted at a US server.

Please can anybody of the internet lawyers here give me an advice if I have to take those
actions they told me in their email about or could it be something like fake?

Below I have added the email I received from this person:

----------------------------------------------------------------

Subject line: Notice of Facebook Trademark Infringement

Message:
We are writing concerning your registration and use of the domain name facebooksecretsexposed.com, which contains the famous Facebook trademark.

As you undoubtedly know, Facebook is the leading online social network service. Facebook adopted the name and trademark Facebook in February 2004 and, since that time, Facebook has actively used the Facebook name and trademark in connection with its online social network service, including maintaining the web site Welcome to Facebook | Facebook. The term Facebook is one of the most famous trademarks on the Internet. Facebook owns exclusive trademark rights to the Facebook name in the United States and internationally, including related common law rights. Accordingly, Facebook enjoys broad trademark rights in its name.

Facebook has made a substantial investment in developing and providing its services. As a result of Facebook’s pioneering efforts and devoting substantial effort and resources to providing only high quality services, the Facebook name and trademarks are widely known among the consuming public worldwide, and the name and trademarks embody substantial and valuable goodwill.

Accordingly, we were concerned when we learned of your registration and use of facebooksecretsexposed.com. As we hope you can appreciate, protection of its trademarks is very important to Facebook. Your registration and use of facebooksecretsexposed.com violates the Lanham Act (15 U.S.C. 1051 et seq.) because it infringes and dilutes the famous Facebook trademark.

Infringement occurs when a third party’s use of a company’s trademark (or a confusingly similar variation thereof) is likely to confuse consumers as to the affiliation, sponsorship or endorsement of the third party’s services. Trademark dilution occurs when a third party’s use of a variation of a company’s trademark is likely to lessen the distinctiveness of the company’s famous trademark.

We have filed several proceedings before the United Nation's World Intellectual Property Organization's arbitration panel. Facebook has prevailed in each case and the domain names at issue were all ordered to be transferred to Facebook. Facebook is concerned that your unauthorized use of the Facebook name may cause confusion as to whether you or your company’s activities are authorized, endorsed or sponsored by Facebook when, in fact, they are not.

We understand that you may have registered facebooksecretsexposed.com without full knowledge of the law in this area. However, Facebook is concerned about your use of the Facebook trademark in your domain name. As you may know, the Anticybersquatting Consumer Protection Act provides for serious penalties (up to $100,000 per domain name) against persons who, without authorization, use, sell, or offer for sale a domain name that infringes another’s trademark.

While Facebook respects your right of expression and your desire to conduct business on the Internet, Facebook must enforce its own rights in order to protect its valuable and famous trademark. For these reasons, and to avoid consumer confusion, Facebook must insist that you immediately stop using facebooksecretsexposed.com and disable any site available at that address. You should not sell, offer to sell, or transfer the domain name to a third party and should let the domain registration expire.

Please confirm in writing that you will agree to resolve this matter as requested. If we do not receive confirmation from you that you will comply with our request, we will have no choice but to pursue all available remedies against you.

Sincerely,


Sxxxxx Kxxxxxx
Domain Name Manager

Legal Dept.
Facebook, Inc.

Message end:
-----------------------------------------------------------------------

I hope to get an advice asap that I know what I have to do now. Also I would like
to know if I have to rename the product too or what else I have to take care of
other than shutting down the domain name.

Thanks.

Dirk

[Gene Pimentel]

Dirk,

I'm not a lawyer, but I deal with domaining issues every day and have seen this a hundred times. You've registered a domain name containing a well known and documented TRADEMARK. Unfortunately, unless you want to spend thousands in a legal battle that you can't win, your only option (in this case) is to NOT use the domain. Let it expire.

There are some cases where you can get away with using someone else's trademark in a domain name, but this is not one of them.

Again, I am not a lawyer and this is not legal advice. If you don't want to comply with Facebook's request, you need to hire a lawyer that can advise you appropriately.

[Dirk Wagner]

Hi guys,

thanks for your advices.

Hmm it seems you are right on this. I just checked the domain for Google Cash Detective 2 and they use a different one now but I still wonder that they use the complete product name which contains "Google" in it on their website with the statement

"GOOGLE is a trademark of Google Inc. The Google Cash Detective 2 is not
officially endorsed or affiliated with Google Inc. (but we like them a lot!)"

Does this mean you only have to shut down the domain name but you still can use the
product name or would it be the next step that they complain that I use the word
"Facebook" in my product title?

As you can see at my website I offer several bonus products which were not
created by me but use the term Facebook in their product title as well.

Kind regards,

Dirk

[Adeel_Chowdhry]

I got this too Dirk...

I registered Facebook-Videos.com last year.. never got around to doing anything with it though... and got the exact same email.

I even emailed them back but the piece of junk came back as undelivered.

Oh well!



Adeel

[Mark Hess]

I was in a similar situation after receiving an email from ebay... in the end I just decided to take the site down to avoid any legal trouble.

Now I look to keep away from purchasing domain names with trademarks in them.

[Dirk Wagner]

Hi Adeel,

ah interesting to hear but then my only open question is if I can stay with the
product title or if I have to change it as well. It is quick to choose a new domain name
but when I have to rename the complete product this would take much work and then
I also couldn't offer the bonuses any longer since they all use the same term in their
product titles.

Adeel, what's about your video series you offered in the past about Google? I remember
that the domain name contained the term Google as well right? Did you get anything from Google to shut down the domain name?

Dirk

[SurviveUnemployment]

I'm not a lawyer, but it seems there is a free speech issue. You could write a book with the word "Facebook" in the title. You could register the domain "facebooksucks.com" and criticize Facebook. Why shouldn't you be able to register this kind of name? Besides, the words "face" and "book" are not exactly trademarked separately, nor are they unique. "Google" is unique because the dictionary word is spelled "googol."

If it were me, I would keep the domain and feed off the free publicity of a lawsuit.

[Gene Pimentel]

Originally Posted by SurviveUnemployment

You could register the domain "facebooksucks.com" and criticize Facebook. Why shouldn't you be able to register this kind of name? Besides, the words "face" and "book" are not exactly trademarked separately, nor are they unique.

If you register a domain containing a TradeMark, especially one as well known as FaceBook, you "could" win the legal battle if the content of the site has NOTHING to do with the "FaceBook" the trademark owner. If you use the domain for anything related to the true trademark, you will not win the legal battle. That's what a TradeMark is for.

Yes, many people get away with it. Many TradeMark owners don't care. Others will kick your butt to the end of the earth to protect their TradeMark.

The bottom line is, every situation is different. A legal investigation will determine whether or not you are using the TradeMarked domain in "Bad Faith" as they call it.

Originally Posted by SurviveUnemployment

If it were me, I would keep the domain and feed off the free publicity of a lawsuit.

Sorry, but that is incredibly irresponsible advice.

[yourreviewer]

Originally Posted by SurviveUnemployment

If it were me, I would keep the domain and feed off the free publicity of a lawsuit.

You must be kidding, right?

[Robyn8243]

Dirk:

I would be suspicious of a Trademark infringement letter coming via email.

I have certainly heard of many trademark violations letters being sent,
and as Gene has pointed out, generally it will not be worth the time and
expense involved to attempt to fight it, however, I would be suspicious of such a
request coming via email.

Without getting into the merits of whether you are actually violating Facebook's trademark....Facebook undoubtedly has a legal department, and I would
think that if this request were coming from Facebook, you would be receiving
a notice by snail mail.

Email is known for being an unreliable method of delivering messages, and as a recovering, retired attorney NOT GIVING LEGAL ADVICE, I find it hard
to imagine that any legal notice would be sent via email.

Despite your use of Whois privacy, legal department would still be able to contact you. It would just be an extra step.

Has anybody here heard of a Trademark violation letter being sent by email?

I would be curious to hear from Gene on this issue.



Robyn

[ecoverartist]

But he did say his domain registration info was protected by one of those privacy guard services - so maybe Facebook just took the easy way out and emailed whatever address the domain registrar setup to forward to Dirk?

I wouldn't want to step on any trademark toes, so I'd just drop the domain and consider registering a similar one with no trademarked names in it. For example, ebay couldn't stop you from registering auctionsitesecretsrevealed.com and Facebook couldn't stop you from registering "socialnetworkingsecretsrevealed" or something like that.

[Michael Silvester]

Originally Posted by SurviveUnemployment

I'm not a lawyer
If it were me, I would keep the domain and feed off the free publicity of a lawsuit.

Dude, that is the stupidest thing that I have ever heard
mentioned on this forum. And I've seen alot...this takes the cake.

To the OP...

Man, its a domain that costs less than $10 per year. You need to
drop it like its hot...because you will totally get your ass kicked if
you try to do this on the sly...or try to beat this thing.

You have a trademarked name in your domain...and being an internet
marketer its obvious that you will be marketing something to do with
facebook.

Dude, just cut your losses...and move on.

Take Care,

Michael Silvester

[AmyBrown]

Originally Posted by Robyn8243

Has anybody here heard of a Trademark violation letter being sent by email?

I would be curious to hear from Gene on this issue.


Robyn

Yes, I've received a trademark violation notification via email. The issue was far less clear than the OP. The email was followed up by a letter when they determined the action I took was not sufficient. My attorney verified that they did in fact represent the company involved. In the end I believe they were wrong, however it wasn't a battle I was willing to fight at that time.

[mikeyman120]

I notice a lot of clickbank vendors use cb in their domain instead of clickbank. Maybe you could use fb for facebook. I had a few domains with ebay in them and they sent me a similiar letter. I let them expire and changed to word ebay to auction.

Mike

[sbucciarel]

I would delete the domain from your account. It's an obvious trademark infringement and it's obvious that you meant to use it to gain from the Facebook trademark. Unless you live under a rock, you had to know what and who Facebook is. It's a case you can't and won't win and will cause you nothing but a huge headache at the very least.

[SurviveUnemployment]

What about facebooksucks.com? Am I not allowed to register that domain? Are we not allowed to criticize trademark owners? What if I used the facebooksecretsrevealed.com (or whatever) for content that had nothing whatsoever to do with the social networking site?

No, scratch that -- I would use facebooksecretsrevealed.com to reveal every secret I could about Facebook, from their shady ties to the CIA to their original right-wing moneymen to the fact that they know way more about too many people than they should. That would definitely give me First Amendment protection.

Now Facebook comes along and sues me. Guess what? First thing I'm doing is issuing a press release -- the real kind -- that will get me major media coverage because the media loves these David-and-Goliath stories. The story is getting buzz all over the Internet. Hundreds of thousands of people are checking out the site out of curiosity, and I'm laughing all the way to the bank.

Just because you own a trademark does not mean that you own the words "face" and "book," and it sure doesn't mean that you are immune from criticism. As a freedom-loving American, I'd be willing to go to the mat over it.

If the original poster wants to work with me on a strategy to make some SERIOUS money off this, PM me. I know some lawyers who would like the publicity, too.

Or maybe I'll just register facebooktotallysucks.com, cross my fingers and hope that they're dumb enough to sue me.

[jimh1626]

Originally Posted by SurviveUnemployment

What about facebooksucks.com? Am I not allowed to register that domain? Are we not allowed to criticize trademark owners? What if I used the facebooksecretsrevealed.com (or whatever) for content that had nothing whatsoever to do with the social networking site?

No, scratch that -- I would use facebooksecretsrevealed.com to reveal every secret I could about Facebook, from their shady ties to the CIA to their original right-wing moneymen to the fact that they know way more about too many people than they should. That would definitely give me First Amendment protection.

Now Facebook comes along and sues me. Guess what? First thing I'm doing is issuing a press release -- the real kind -- that will get me major media coverage because the media loves these David-and-Goliath stories. The story is getting buzz all over the Internet. Hundreds of thousands of people are checking out the site out of curiosity, and I'm laughing all the way to the bank.

Just because you own a trademark does not mean that you own the words "face" and "book," and it sure doesn't mean that you are immune from criticism. As a freedom-loving American, I'd be willing to go to the mat over it.

If the original poster wants to work with me on a strategy to make some SERIOUS money off this, PM me. I know some lawyers who would like the publicity, too.

Or maybe I'll just register facebooktotallysucks.com, cross my fingers and hope that they're dumb enough to sue me.

WOW. You're nuts. Facebook has so much money they would not only cost you any money you could make off the product, but anything you might make for the next 100 years.
You would be lucky to come out of it with the shirt on yor back.
Why don't buy the domain name from him if you want to pursue it.

Jim

[Dan Grossman]

Legal issues aside, domain name trademark disputes are settled outside the legal system. ICANN has control over policy and enforcement through their dispute system. If Facebook wants the domain, it only has to meet ICANN's qualifications and they will transfer the domain over to them. They don't have to prove trademark infringement in a court, which is one reason sites might use a trademark on their pages but not in the domains -- the work involved in stopping the two things is very different. Find a lawyer that's familiar with the dispute resolution process to review your case.

[sbucciarel]

Originally Posted by SurviveUnemployment

What about facebooksucks.com? Am I not allowed to register that domain? Are we not allowed to criticize trademark owners? What if I used the facebooksecretsrevealed.com (or whatever) for content that had nothing whatsoever to do with the social networking site?

facebooksucks.com without a single ad on it, would fly. Anything with facebook in it with an ad on it, is obvious that the person is trying to capitalize from their trademark. You're allowed to criticize, but not monetize a trademarked name.

As for the rest of that off the wall malarkey .... who cares?

[Dan C. Rinnert]

Originally Posted by SurviveUnemployment

What about facebooksucks.com? Am I not allowed to register that domain? Are we not allowed to criticize trademark owners? What if I used the facebooksecretsrevealed.com (or whatever) for content that had nothing whatsoever to do with the social networking site?

No, scratch that -- I would use facebooksecretsrevealed.com to reveal every secret I could about Facebook, from their shady ties to the CIA to their original right-wing moneymen to the fact that they know way more about too many people than they should. That would definitely give me First Amendment protection.

I am not a lawyer, but...

Criticizing a company is free speech. I believe there have been court cases that have upheld that in the case of COMPANYNAMEsucks.com websites. If it's used to express an opinion, or parody, etc., then it is protected speech.

A trademark provides commercial protection. So, use of a trademark in commerce is restricted. So, calling something COMPANYNAMEsecretsExposed may be infringing.

However, the trademark holder has to prove that use of the mark creates confusion among consumers. Does COMPANY NAME Secrets Exposed create confusion? It doesn't seem likely.

But, they may have greater standing under dilution as revised in the Trademark Dilution Revision Act of 2006.

To me, it seems to fall in a gray area, but, again, I'm not a lawyer. The Facebook mark is not being used to brand the product but rather to convey what the product is about. It's not a book about "Social Networking Secrets" rather it is a book specifically about "Facebook Secrets".

Note that there are "...for Dummies" books using Facebook in their titles:

Facebook for Dummies
Facebook Marketing for Dummies

Did they seek permission to use the mark first? I don't know. Maybe.

So, the use of "Facebook" in the domain name and product title may be defensible. The question is whether it's worth fighting for. Obviously, fighting the case is going to take a lot of money. Perhaps the OP could countersue for compensation if Facebook is found to be in the wrong. But, that's assuming the OP has the money to pursue the case to that point. Is it worth putting the time, money and effort into a prolonged legal fight, or is it better to just cut the losses and figure out a new name?

Of course, intimidation could be what Facebook is betting on but, still, you need money to stand up to legal intimidation. Even though it may be unfair, sometimes you have to pick your battles. And this may be a battle not worth engaging.

All in my non-lawyerly opinion, of course.

[tj]

Originally Posted by SurviveUnemployment

If it were me, I would keep the domain and feed off the free publicity of a lawsuit.

How about that you paypal Dirk the money for the lawsuit? I am sure you would enjoy also a part of the publicity.

Timo

[Kay King]

I'm not a lawyer

That is the key phrase here. We can argue and analyze the law all we want, but we don't know anything except what we read and interpret - and that's not enough to give legal advice.

I think if you check you'll find the Dummies books have purchased full rights to use certain names. They don't just grab them and run.

That's the problem - we only have anecdotal and online info. We KNOW there are trademark laws and we KNOW they can be strictly enforced.

Anyone who wants to be tough and go up against a giant like Facebook should talk to a lawyer before doing anything about it. I think it will let the air out of your tires.

kay

Edit: Opinions aside, you should look closely at these words

Legal Dept.
Facebook, Inc.

They don't have to hire lawyers - they have them on staff to take care of things just like trademark infringement. As for the products, you can talk to a trademark attorney to see where you stand or you can ask the person who emailed you where Facebook stands on this (they already know about it). If you don't answer the email sent to you you may have to answer something more threatening. It's not a risk worth taking unless you have a lot of money and time.

[Dan C. Rinnert]

Originally Posted by Kay King

If you don't answer the email sent to you you may have to answer something more threatening. It's not a risk worth taking unless you have a lot of money and time.

The OP should talk to a lawyer before responding or not responding, and do so pronto since it has already been ten days.

Apparently, there are a lot of these messages going out. It appears Facebook (or MarkMonitor) may have some kind of script that tracks down domain names containing "facebook" or variations thereof, and sends the registrants the letter. In some cases, the domain names didn't appear to have anything to do with Facebook, they just happened to contain the name. So, it suggests they haven't checked each site and domain but perhaps only mass-sent these letters.

Someone said that his lawyer advised them to take down their site, but not reply to the eMail that was sent, thus not admitting any wrong doing. Others said their replies were undeliverable.

In any case, the OP should talk to his own lawyer. As our non-lawyerly discussion has shown, there are a lot of considerations that go into this, and it's best to review your own unique situation with your own lawyer.

Probably, the end result will be dropping the domain name and possibly changing the book title. Much less expensive to find a new domain for $10 than pursue any legal avenues.

[Tom Dean]

Has anybody here heard of a Trademark violation letter being sent by email?

All of mine regarding domains have been sent by email & I use private registration. When appropriate action was not taken it was followed up by a formal letter. I had a "moment" years ago when I registered quite a few. It took some two years to get around to me but eventually they all did.

I've been wondering when facebook & twitter would start sending notices to all the domains using their trademark to sell products.

-T

[derekwong28]

This is not a threatening letter, in fact it is one of the most courteous letter I have ever seen. For a start, they did not reserve the right to seek compensation for the use you have already made of the domain and also for the legal costs incurred. This is unlike all the other letters I have received. I gave up a domain with the name Danone in it last year.

It is true that residing in Germany would make it more difficult for Facebook to sue you. But again they have the resource to do so if they want. Frankly this is not worthwhile to you to stand your ground.



Derek

[DogScout]

The email could have been faked and the return address faked as well. IF you put a site up that is news about them, parodies them, reviews them or uses them as an example to educate others and you are an accredited educator, the use of that name would fall under one of the fair use clauses and based on the site name it is obvious what it is for.

I tend to take everything with a grain of salt, my 1st action would be to reply to the email and see if it bounced and to contact my registrar to see if they got a similar letter.

the DMA makes enforcing copyright or trademark easy no matter what country they ate in (except the Ukraine and Bulgaria)

in any case, I wouldn't freak yet.I used Mickey mouse in a parody on copyright in '04 (because Disney has lawyers that do nothing but check little girls bedrooms for violations Lol. OK, iI am funning a little, but though I saw their IP address visit my site several times a day, they never made a move at me. I is unlikely based solely on the URL (which is in review stye) that the real facebook would not know they have no case, or they could be just testing you. (Ask them if they'd like to buy it. Has to be cheaper than suing you.)

[DogScout]

Also, I was once given a letter by someone that wanted to use Minnie Mouse in a tag. The letter was just as nice as the one you got, but gave her permission to use Minnie mouse... too bad is was signed my the Warner bros copyright czar. Lol

[Dan C. Rinnert]

Originally Posted by DogScout

(Ask them if they'd like to buy it. Has to be cheaper than suing you.)

That could establish "bad faith" and basically hand them their case.

It may be cheaper, but that's probably the last thing you want to do!

[derekwong28]

If you want an example where the rightful owner of a domain can still have a lot of problems from a major corporation

nissan.com

Nissan Motor vs. Nissan Computer - Digest.com

[Dirk Wagner]

Hi everybody,

thanks for all your opions but as I said it would be more worth if I would see some
advices from people like Bob Sterling.

I am not afraid of changing the domain name but I want to know if I have to
change the ebook title too.

It also would be interesting to know for the future if I/we should avoid trademark
product titles as well.

I recognized tons of product names AND domain names which contain the word "Twitter" i.e. "twitteronlinesystem.com".
Wouldn't teh same case happen to all those people as well?

Kind regards,

Dirk

[SurviveUnemployment]

I happen to strongly dislike Facebook, and this type of bullying is one of the reasons.

Trademark law is designed to protect trademark owners from others using their name to promote similar products or services. So I can't market a soft drink called Coco Cola and label it with a white-on-red swoop, but I am perfectly within my rights to write a book called Why I Love Coca Cola and to profit from that book. I'm within my rights to spoof or parody the Coke logo in a magazine that has ads. I'm within my rights to write a book called How to Make Money Selling Coca Cola in Your Store. Your right to protect your product with a trademark does not take precedence over my right to free speech.

As for those who take the attitude that nobody should bother fighting Facebook because it has so much money, well, all I can say is that I'm glad George Washington didn't take that attitude. Go ahead and call me nuts. I have my own opinion of you.

[Richard Tunnah]

Originally Posted by SurviveUnemployment

What about facebooksucks.com? Am I not allowed to register that domain? Are we not allowed to criticize trademark owners? What if I used the facebooksecretsrevealed.com (or whatever) for content that had nothing whatsoever to do with the social networking site?

No, scratch that -- I would use facebooksecretsrevealed.com to reveal every secret I could about Facebook, from their shady ties to the CIA to their original right-wing moneymen to the fact that they know way more about too many people than they should. That would definitely give me First Amendment protection.

Now Facebook comes along and sues me. Guess what? First thing I'm doing is issuing a press release -- the real kind -- that will get me major media coverage because the media loves these David-and-Goliath stories. The story is getting buzz all over the Internet. Hundreds of thousands of people are checking out the site out of curiosity, and I'm laughing all the way to the bank.

Just because you own a trademark does not mean that you own the words "face" and "book," and it sure doesn't mean that you are immune from criticism. As a freedom-loving American, I'd be willing to go to the mat over it.

If the original poster wants to work with me on a strategy to make some SERIOUS money off this, PM me. I know some lawyers who would like the publicity, too.

Or maybe I'll just register facebooktotallysucks.com, cross my fingers and hope that they're dumb enough to sue me.

That is just crazy advice! When facebook take you to court the main defence would normally be that you weren't profiting from their trademark. How could you claim that if you court publicity? You say you could make a load of money. Well the reality is a court could make you pay facebook's lawyers fees and compensation that could well total into the hundreds of thousands! Is it really worth taking on an organisation that can reel out top lawyers that will cost you! All over $10.

Rich

[Gene Pimentel]

Originally Posted by SurviveUnemployment

As for those who take the attitude that nobody should bother fighting Facebook because it has so much money, well, all I can say is that I'm glad George Washington didn't take that attitude. Go ahead and call me nuts. I have my own opinion of you.

Causes worth fighting for, are worth the cost. A $10 domain name is not worth the cost. There is nothing to defend but your desire to profit from someone elses established TradeMark. Please don't mix the noble world-changing visions of a man like George Washington with the senseless fight to win control over a $10 domain name that you shouldn't have in the first place.

[Dana_W]

Originally Posted by Dirk Wagner

Hi everybody,

thanks for all your opions but as I said it would be more worth if I would see some
advices from people like Bob Sterling.

I am not afraid of changing the domain name but I want to know if I have to
change the ebook title too.

It also would be interesting to know for the future if I/we should avoid trademark
product titles as well.

I recognized tons of product names AND domain names which contain the word "Twitter" i.e. "twitteronlinesystem.com".
Wouldn't teh same case happen to all those people as well?

Kind regards,

Dirk

Given that there could potentially be a HUGE amount of money at risk here, if Facebook really did decide to sue you - it would make sense for you to invest some money in paying for an hour's worth of a lawyer's time - just do a consultation and find out what he or she thinks you should do.

There's a huge amount of helpful advice on the Warrior Forum - but when it comes to legal advice - you get what you pay for. People here can give you their opinions, but I wouldn't want to stake my financial future on their opinions. Or even on my own opinion.

[Richard Tunnah]

Here's an interesting case. Shell have sued a guy that owns royaldutchshellplc.com for the domain 7 times now and lost. The guy hosts a site that discusses Shell - not always in a good light!

ROYAL DUTCH SHELL GROUP .COM ShellNews

Rich

[funky_budha]

the letter looks legitimate to me, so i would do what they ask.im sorry:-(

[sbucciarel]

Originally Posted by SurviveUnemployment

I happen to strongly dislike Facebook, and this type of bullying is one of the reasons.

Trademark law is designed to protect trademark owners from others using their name to promote similar products or services. So I can't market a soft drink called Coco Cola and label it with a white-on-red swoop, but I am perfectly within my rights to write a book called Why I Love Coca Cola and to profit from that book. I'm within my rights to spoof or parody the Coke logo in a magazine that has ads. I'm within my rights to write a book called How to Make Money Selling Coca Cola in Your Store. Your right to protect your product with a trademark does not take precedence over my right to free speech.

As for those who take the attitude that nobody should bother fighting Facebook because it has so much money, well, all I can say is that I'm glad George Washington didn't take that attitude. Go ahead and call me nuts. I have my own opinion of you.

Obviously you don't own anything that you don't value enough to protect from theft and most certainly, you don't know the law regarding trademarks. The law takes a dim view of cybersquatters ... those desiring to make money off of other people's legal trademarks. Try Googling it or going to namepros.com / legal forum and getting some real advice. They even have some real lawyers there.

And to the op ... it is quite common to send these letters via email. It's done all the time.

Interesting reading here if you are unclear about cybersquatting and trademark law

http://www.avivadirectory.com/domain-law/

and as for fair use:

Question: What are the limits of trademark rights?

Answer: There are many limits, including:

* Fair Use
There are two situations where the doctrine of fair use prevents infringement:

1. The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.

2. Nominative fair use
This is when a potential infringer (or defendant) uses the registered trademark to identify the registrant?s product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
o his/her product or service cannot be readily identified without pointing to the registrant?s mark
o he/she only uses as much of the mark as is necessary to identify the goods or services
o he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant

* Parody Use
Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody.

* Non-commercial Use
If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.

* Product Comparison and News Reporting
Even in a commercial use, you can refer to someone else?s goods by their trademarked name when comparing them to other products. News reporting is also exempt.

* Geographic Limitations
A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy?s Bakery in Boston, there is not likely to be any infringement if Jane Roe uses Timothy?s Bakery to describe a bakery in Los Angeles. They don't sell to the same customers, so those customers aren't confused.

* Non-competing or Non-confusing Use
Trademark rights only protect the particular type of goods and services that the mark owner is selling under the trademark. Some rights to expansion into related product lines have been recognized, but generally, if you are selling goods or services that do not remotely compete with those of the mark owner, this is generally strong evidence that consumers would not be confused and that no infringement exists. This defense may not exist if the mark is a famous one, however. In dilution cases, confusion is not the standard, so use on any type of good or service might cause infringement by dilution of a famous mark.

[waken]

Originally Posted by derekwong28

If you want an example where the rightful owner of a domain can still have a lot of problems from a major corporation

nissan.com

Nissan Motor vs. Nissan Computer - Digest.com

Nice example Derek.

While I do like some points of view by SurviveUnemployment (very valid points indeed - freedom of speech) but we must not forget that the man made law might not always favor the right person.

Anyway, to the OP.. pls seek competent legal advise to clear the doubts. But make sure you seek for more than one legal advisors.

[Dan C. Rinnert]

Originally Posted by SurviveUnemployment

As for those who take the attitude that nobody should bother fighting Facebook because it has so much money, well, all I can say is that I'm glad George Washington didn't take that attitude. Go ahead and call me nuts. I have my own opinion of you.

George Washington had congressional funding, and an accounting tactic that, sadly, is still in use by Congress today.

[seasoned]

Dirk,

I am not a lawyer, but I DO know the political, logical, etc... infrastructure, can read English, and have seen precedents. You said:

I am a German native and living in Germany too. The domain is registered at namecheap
with whois protection and hosted at a US server.

SURE, YOU may be living in Germany, but ****THEY**** have an international treaty with the US and other nations to HONOR tradmarks and copyrights SO, even if that meant ANYTHING, it really still doesn't mean ANYTHING! The domain is really NOT registered at namecheap! They are merely the registrar. They REAL owner is ICANN! AGAIN, even if that meant anything, it means NOTHING! You say it has whois protection. THAT merely allows some frustration outside of legal proceedings. AGAIN, MEANINGLESS here! As for hosted on a US server? Outside of the use of the facebook name, that doesn't mean anything here.

OK, Let me tell you the LEGAL truth!

YOU are a GERMAN resident, so you can't violate German laws, rules, or treaties they have, not that that matters! Trademarks and copyrights come under those treaties, not that it matters!

ICANN owns the name, and include an adherence contract that EVERYONE(it doesn't matter if you are CHINESE and live in outer mongolia) must agree to. It is called the UDRP!

Uniform Domain Name Dispute Resolution Policy - Wikipedia, the free encyclopedia
ICANN | Uniform Domain-Name Dispute-Resolution Policy

Frankly, the law says you should be judged against, and precedent says facebook must persist! So you are better off SETTLING! If ICANN judges against you, even if you were a trillionare, only spoke chinese, and couldn't be reached, and china considered such an action ILLEGAL, the name would simply revert to facebook! Even NAMECHEAP would lose control!

As for the whois service? Facebook could simply ask icann for it. If namecheap didn't give it to them, you could lose the name, due to a 2003 ruling. Of course, they can go the full on legal route ALSO!

Could you win? MAYBE! But the likelyhood is that you would lose. The longer it takes, the more you could lose. I am unaware of German laws in this case, regarding court costs, etc... UDRP USUALLY is handled by an arbitrator, as I understand it. BUT, if you decide to IGNORE it, you may just simply LOSE! They DO have a legal trademark, and you ARE diluting it. Most winners have a PROPER legal excuse. Like madonna HOSPITAL vs. madonna, or Nissan CONSULTING vs. Nissan motors. YOU are using THEIR trademark to refer to them! You can NOT even claim that you did not know of the trademark.

Amazon books once sued Amazon.com. THEY lost! WHY? Because amazon.com could claim they didn't know of them, and amazon books had pursued it too late. Had they pursued it a few years earlier, they could have WON!

Steve

[Convergence]

Well, this is an appropriate thread for just signing up for the forum...LOL

I currently have several domains with the trademark Ebay in them and we are promoting a fairly successful ebook with these domains. Unfortunately, the ebook is not necessarily complimentary to Ebay...

I wonder how long it will take for the letter to arrive...

Convergence

[Gene Pimentel]

Unfortunately for you, Ebay is particularly aggressive in protecting their TM. It's not a matter of "if", but "when". Good luck! And welcome to the WF!

Originally Posted by Convergence

Well, this is an appropriate thread for just signing up for the forum...LOL

I currently have several domains with the trademark Ebay in them and we are promoting a fairly successful ebook with these domains. Unfortunately, the ebook is not necessarily complimentary to Ebay...

I wonder how long it will take for the letter to arrive...

Convergence

[sevenish]

Originally Posted by Dirk Wagner

I recognized tons of product names AND domain names which contain the word "Twitter" i.e. "twitteronlinesystem.com".
Wouldn't teh same case happen to all those people as well?

No. Twitter has actually encouraged others to use their trademark in their products and marketing.

[fergusfish]

Dirk
trying to find your email address - have a problem with a product I bought from you yesterday - can't pm here as haven't added enough posts - can you contact me off list please

[Dirk Wagner]

Hi Fergusfish,

normally my helpdesk link is always shown at my websites but you
can send me an email to wagnerdirk [at] imopartners DOT com as well
and I will reply as soon as I am back at home in a few hours.

Thanks,

Dirk