Ok, Seriously - A Law Suit? Are they having a giggle?!

[Simon Nicholls]

Thank you Jens, I've submitted my problem to them.

[Simon Nicholls]

Thank you all for the comments.

I can understand there you are coming from with regards to move on, it's not worth the hassle, although I just want to find out how they can come to the conclusion that my website address has something to do with Hertz!

[jensrsa]

Originally Posted by Ezy Dollar

Thank you all for the comments.

I can understand there you are coming from with regards to move on, it's not worth the hassle, although I just want to find out how they can come to the conclusion that my website address has something to do with Hertz!

Not Hertz, Neverlost plus GPS, and promoting a competing product at that.

Jens

[Scott Ames]

I really am starting to hate lawyers. Your domain has nothing to do with rental cars, except that GPS systems are in some rental cars. I'm sure no one is going to confuse you with Hertz.

Still, they have deep pockets. I've gone around and around with these types. They would rather pay their lawyer thousands rather than give you a few bucks for the domain.

[Christopher R Everson]

On a side note, F1 racing is one of the most viewed, highly profitable sports out there. In 2005 it was one of the most overall watched things on the planet.

[AgileHosting]

[OFF TOPIC]

Originally Posted by Christopher R Everson

On a side note, F1 racing is one of the most viewed, highly profitable sports out there. In 2005 it was one of the most overall watched things on the planet.

Indeed, it has fantastic traction (no pun intended) with the international audience. It's the highly corporate and media centered U.S. market that they are scratching for.

NASCAR has the top spot in the U.S., unfortunately F1 and the other circuits are nowhere near what NASCAR's got going money-wise.

And as I said -- it's a crying shame -- people are totally missing out. I find F1, DP, Sports Car etc. to be far more interesting than NASCAR ... the racing is riveting! But for whatever reason, they just haven't been able to tap into the Big bucks and public view like NASCAR has, in the U.S. ... sorry, I should have been more specific earlier.

OK, I'll stop now. Sorry.

Bailey

[/BACK TO TOPIC]

[ironwood]

Looks like there may be room for about 2 cents more of free advice. There are some very good well thought out replies here. My thoughts are these and they may be worth exactly what you are paying for them. You have heard it said many times I am sure that our legal system is not perfect but it is the best in the world.

However a major flaw in our legal system especially when it comes to civil law is even if you are innocent you may have to prove you are innocent. Corporations like Hertz have very deep pockets and can afford to hire legal council and drag you through the most misirable years of your life and very quickly take your concentration away from building your business while trying to show them where they are wrong. It can get very, very expensive in monitary terms as well as psychological

Also it would appear that your site may be new and not yet profitable. If this happened to me it would take me about 5 minutes to get angry, throw things around tell my wife and anyone who would listen how unfair this is and then send them the domain and move on.

Two things to avoid like the plague if you can help it are lawyers and the IRS. Not necessarially in that order of course. If you think life can be unfair just try to get the best of those two organizations.

I hope you can resolve this with yourself and move on. Best of luck.

Chet Hastings

[pjs]

Originally Posted by Ezy Dollar

Hi All,

I've just had an email from a lawyers office in the USA, stating that my domain NeverGetYourselfLost.net is in violation with some law. Apparently, it's nearly the same as Hertz's "Neverlost" trademark . . .?!?!

Are they having a laugh? Or am I seriously in the wrong? My domain sounds nothing like the above trademark, nor do I sell any Hertz products! It's an eBay site!

Below is a copy of the file they sent me, I've replied to them saying if they want the domain, then they can buy it off of me for a price that I seem right!



LAW OFFICES
HOWARD, PHILLIPS & ANDERSEN


C

E-Mail:

September 30, 2008



VIA EMAIL () AND
FIRST CLASS MAIL

Simon Nicholls

UNITED KINGDOM

RE: NEVERGETYOURSELFLOST.NET — Infringement and Dilution of Hertz
Trademarks

Dear Mr. Nicholls:

This law firm represents The Hertz Corporation (“Hertz”) on intellectual property and
trademark enforcement matters. Hertz takes policing and enforcement of its intellectual property
rights seriously.

Hertz is a worldwide corporation, specializing in the leasing and renting of automotive
vehicles. NEVERLOST® is a duly registered trademark that belongs to Hertz. Hertz first began
using NEVERLOST® in 1995 and has been using the mark continuously since that time as the
name for Hertz’s in-vehicle navigation system, which uses state-of-the-art GPS technology and
digital mapping to provide driving directions and other information to automobile drivers.
NEVERLOST® is a famous and distinctive trademark that is used by Hertz worldwide and is
associated by consumers exclusively with Hertz and Hertz’s navigation system. The domain
name for Hertz’s official website is neverlost.com.

Your recent registration of the domain name nevergetyourselflost.net, a domain name that
is confusingly similar to Hertz’s world famous NEVERLOST® trademark, and use of the
domain name to operate a commercial website advertising GPS-related goods and services,
violates Hertz’s trademark rights. The Anticybersquatting Consumer Protection Act (“ACPA”)
provides for statutory damages of up to $100,000.00 per domain name when a famous trademark
is incorporated in a domain name without authorization from the trademark owner. See 15
U.S.C. § 1117(d). Hertz has obtained injunctions and judgments against those who have used its
trademarks in Internet domain names without authorization. See, e.g., The Hertz Corp. v. Names
for Sale, Civ. No. 00-734-A (E.D.Va. Aug. 10, 2000) (permanently enjoining defendant’s use of
Simon Nicholls
September 30, 2008
Page 2



neverlost.com, hertzneverlost.com, and hertzmagellan.com and ordering transfer to Hertz).
Under the ACPA, moreover, a United States court has the power to enter orders concerning
domain names that incorporate famous trademarks that have been registered in violation of the
ACPA without the registrant’s presence or participation.

Hertz, accordingly, asks that you make no further use of the domain name and transfer
your registration to Hertz. If you have not done so by October 10, 2008, we will infer that you
are unwilling to resolve this matter voluntarily and will advise Hertz of its remedies.

Cancellation of the registration will not resolve this matter. If you attempt to cancel the
registration, Hertz will have no choice other than to immediately file suit for violation of the
ACPA. If suit is necessary, we will advise Hertz to seek to recover from you all costs and
expenses incurred by Hertz in recovering the domain name from any subsequent registrant, as
well as actual and statutory damages.

This letter is without prejudice to the rights of Hertz, all of which are expressly reserved.

Very truly yours,






Any help of advice would be appreciated!

As far as I know, they can't sue you for domain ownership. They are probably trying to scare you into giving up the domain.

[spicegator]

Don't you just wish for once you could take a steel toed boot and kick it up an Attorney like this's Ass.

[Chris Lockwood]

I'm surprised that lawyers are sending a notice like that via email. If you hadn't responded, they wouldn't know you had received it.

[davezan]

Originally Posted by pjs

As far as I know, they can't sue you for domain ownership.

It's been done before. I've transferred domain name ownership upon receipt of
a court order from a suit a few times.

Originally Posted by Chris Lockwood

I'm surprised that lawyers are sending a notice like that via email.

Don't be. C&Ds are routinely being sent via email nowadays, and one lawyer I
know sends his via email with a PDF.

C&Ds are attempts to resolve an issue within an "artificial" deadline. They will
take action if no reply is secured within that period.

I once blogged something about this:

Four Common Domain-Trademark Myths | Dave Zan's Domain Name Blog

(Hmm, I guess I should include myth number 5: that others doing it means it's
okay or legal.)

As for some of you folks beginning to hate lawyers, wait 'til you get a dispute
in your lap. They can be your friend or your enemy, depending on what side of
the fence you're on.

IANAL, but I've checked into the Holiday Inn the other night...

[Paul M]

I think it would be best for you to just give up the domain name, as you have said
yourself what's the point of going up against a corporation for a $10 domain name.

If they do continue and you decide to fight, they can take you to court (in the US)
which would involve travelling and high legal/travel costs on your part. If you didn't
turn up to court in the US they would win the case no questions asked.

If your domain name is found to be in violation of there trademark they can ask
that you cancel or transfer the domain to them.

Also asking them to buy your domain just damaged your case as this could be
seen as cybersquatting.

However I am not a lawyer, so its best for you to get proper legal advice from
a lawyer or just drop it an move on.

I know its not nice to lose your domain name, but trust me, this is not a fight
you want to waste your time or money on.

Regards
Paul

[JasonKing]

Originally Posted by Ezy Dollar

Unfortunatly I can't afford any kind of attorney. If they want the domain, then they can have it. It cost me $10 and hasn't made me any money whatsoever!

But I'm just confused, it has no link to the trademark at all.
I can think of so many sites that could potentially violate a law!

That didn't take much ...

[John_Reese]

I need to preface this by stating that I am not an attorney and this in no way should be considered legal advice.

----

I have a lot of experience in this area. I was once one of the largest domain brokers in the world (mid-1990s). I have personally owned over 30,000 domains and have been involved (from both sides) in legal disputes and issues regarding domain names and trademarks.

There is about a 95% chance that you will legally LOSE this case. Hertz has a registered trademark on a term that is similar to the one you are using, and what's really important is that trademarks are registered based on CLASSES OF GOODS. If you were selling special pet collars and tags, for example, to keep pet's from getting lost, the situation would be different. But Hertz has registered this mark in the specific class of goods related to GPS systems -- exactly what you're using the similarly phrased domain for.

* This is why there CAN be an "Apple Vacuum Cleaners" and an "Apple Computer" company. They are doing business in a different class of goods.

The first question that is asked is, "Does the mark (domain) in question cause confusion in the marketplace?" This is the foundation of trademark law. It's obvious that YES your domain does because it's similar enough that 'some' (which is all it takes) might think it's related to Hertz' mark.

You not being aware of their trademark doesn't matter. It's still potentially causing confusion in the marketplace and that's why they are taking action to protect their mark.

The fact that they didn't register other extensions doesn't matter. They only have to protect their mark from those that ARE potentially infringing upon it; not take every possible preemptive measure to keep others from infringing in the future.

Just give them the domain and register something else for your site.

-John Reese

[davezan]

If John Reese's post doesn't convince anyone this, I don't know what will.

Thanks for sharing, John. And you're 99% (if not 100%) correct.

[Simon Nicholls]

Thanks all for your advice.
I've sent another email asking for account details.

Look at what I found on the original email containing the PDF file:

Ladies and Gentlemen:

This law firm represents the Hertz Corporation in trademark enforcement matters. Please find attached important correspondence addressed to you regarding your registration of DRIVETHEWORLD.BIZ. A hard copy will follow by first-class mail.

Sincerely,


I don't even own drivetheworld.biz!

Once I've sent the domain across, all this should go away?

Simon.

[toonarme]

This is bloody ridiculous! So we're not allowed to register any domain name which contains the words 'lost' and 'never' just in case some moron thinks that we're referring to a hire car with GPS? The world's going mad...

[KarlWarren]

Originally Posted by toonarme

This is bloody ridiculous! So we're not allowed to register any domain name which contains the words 'lost' and 'never' just in case some moron thinks that we're referring to a hire car with GPS? The world's going mad...

Yes... I could register neverlost dot co dot uk providing I don't use it to promote GPS systems...

Say for instance I wanted to use it to sell a wrist strap product to help parents who are worried about their child getting lost (just as an example)

That would be fine...

[KarlWarren]

To make it a little clearer...

If I run a computer company I can't trade under the name:
My Crow's Soft

However, if I run a rehabilitation centre for sick birds:
My Crow's Soft would be perfectly legitimate

Causes no brand or trademark confusion with Microsoft.

This is my understanding of it, I am sure I'll be corrected if I am wrong.

BAD PUN ALERT!!!

It could still be IllEagle.

[Simon Nicholls]

I agree with Karl. Anyway, email sent - now waiting for reply!

[Mark Brian]

You are correct Karl. Same business names are "okay" as long different business nature.

Now my question is, what if you are based in a different country, are there international trademark registrations? Or do you have to register manually to all countries in the world?

[Kay King]

I've sent another email asking for account details.

I'm not sure what details you are expecting. The conflict is pretty clear - and one answer above pointed out something many don't understand:

To continue to protect the integrity of a trademark, the company needs to actively pursue violations. If a company doesn't do that, they can lose their right to protect their name. That's why they hire legal firms to do nothing more than keep an eye on where their brand name is used and perhaps misused.

Legal advice on a forum isn't usually worth squat. However, you have members here highly experienced in the domain area telling you to drop the name and move on. That's your best course of action.

kay

[TheWatcher]

Someone mentioned F1 in relation to Trademarks.

Just so as you know, Bernie LOST in his attempt to trademark F1 ... AND his attempt to wrestle f1.com from it's owner! He ended up buying the domain later.

F1 Trademark Case

[davezan]

Originally Posted by Mark Brian

Now my question is, what if you are based in a different country, are there international trademark registrations? Or do you have to register manually to all countries in the world?

Look up Madrid Protocol. But it's limited to only its member countries, and it's
not really affordable to the arguably average small business owner.

OTOH, there's an administrative process called the Uniform Dispute Resolution
Policy. It can allow a trademark holder in country A to try to cancel (which is
rather silly) or transfer a .com domain name from its registrant in country B if
its conditions are met, and it's part of your registration contract.

And Simon, they'll probably be content if you transferred the domain name to
them. If they subsequently ask you to sign something to the effect you won't
register a domain name possibly infringing their marks, you don't have to sign
it.

As for the rest reading this and finding this questionable, you can register any
domain name you want. But certain legal and administrative laws or processes
limit your ability to use them, namely not using them commercially that might
infringe their trademark name-sakes.

The more unique and/or famous the mark, such as Karl Warren's example for
Microsoft, the more likely users will confuse your domain name with its holder.
Likelihood of confusion is what it boils down, which is what trademarks aim to
prevent in the first place.

[Ricter]

Saddeningly quick cave-in.

[Kay King]

Saddeningly quick cave-in.

I'd call it taking an action using common sense. It's easy to tell someone else to fight a battle - when you don't have to pay any of the consequences.

[Ricter]

Originally Posted by Kay King

I'd call it taking an action using common sense. It's easy to tell someone else to fight a battle - when you don't have to pay any of the consequences.

I fight almost everything. Way of life. I think I'm in the right forum, no?

[KarlWarren]

Originally Posted by Ricter

Saddeningly quick cave-in.

That's very easy to say when it's not you on the receiving end of a letter from a company that has the resources to take you to court, when you don't have the resources to defend yourself.

Whether or not he would win does not matter, they could still cost you thousands in legal fees to defend yourself anyway.

[Gene Pimentel]

Originally Posted by Ricter

I fight almost everything. Way of life. I think I'm in the right forum, no?

A true "Warrior" won't go into a battle that can't be won.

[Ricter]

Originally Posted by Gene Pimentel

A true "Warrior" won't go into a battle that can't be won.

False, that's soldier thinking. A warrior will fight to the death on principle alone.

[KarlWarren]

Originally Posted by Gene Pimentel

A true "Warrior" won't go into a battle that can't be won.

A Sun Tzu fan...

Sun Tzu - Wikiquote

Some really great lessons.

[davezan]

Originally Posted by Ricter

I fight almost everything. Way of life. I think I'm in the right forum, no?

Then go ahead and register a domain name bearing an arguably famous mark,
use it commercially (like maybe Microsoft), and let us know how it turns out.
I guess some people love to fight, but life isn't always about fighting, and not
all so-called battles are won that way.

[Paul M]

Originally Posted by Gene Pimentel

A true "Warrior" won't go into a battle that can't be won.

Spot on gene, but there's no telling some, so we will just let them carry on
with pointless expensive battles while we build businesses.

Regards,
paul

[Ricter]

Originally Posted by davezan

Then go ahead and register a domain name bearing an arguably famous mark,
use it commercially (like maybe Microsoft), and let us know how it turns out.
I guess some people love to fight, but life isn't always about fighting, and not
all so-called battles are won that way.

That would be starting a battle you can't win. See the difference?

It's always the other guy, the one who wants something of yours, that tries to talk "sense" into you and give you all kinds of reasons why you should just give up, walk away. The nice people of this world simply roll over and give the boors and bullies what they want every friggin day.

I learned from working in a jail for a decade that you fight, and you fight again, and you keep fighting, and you make bullying and intimidation DAMN difficult for the scrotes of this world, even if they can whip you in a fight.

Edit: anyway, Ezy's fight is already over. Moving on...

[Paul M]

Originally Posted by Ricter

That would be starting a battle you can't win. See the difference?

It's always the other guy, the one who wants something of yours, that tries to talk "sense" into you and give you all kinds of reasons why you should just give up, walk away. The nice people of this world simply roll over and give the boors and bullies what they want every friggin day.

I learned from working in a jail for a decade that you fight, and you fight again, and you keep fighting, and you make bullying and intimidation DAMN difficult for the scrotes of this world, even if they can whip you in a fight.

Edit: anyway, Ezy's fight is already over. Moving on...

There's a big difference between fighting a bully, an going into a battle
you just can't win because they have all the money, resources and law
on there side.

There's also a fine line between knowing when to give up and stupidity.

Regards,
paul

[davezan]

Originally Posted by Ricter

It's always the other guy, the one who wants something of yours, that tries to talk "sense" into you and give you all kinds of reasons why you should just give up, walk away. The nice people of this world simply roll over and give the boors and bullies what they want every friggin day.

There's a time for everything, Ricter. But I'm sure you know that.

Moving along now...

[Ernie Lonardo]

I think John Reese just about summited it all up.

It sucks I know..but you're better off just giving in and concentrating on your business.

[Floyd Fisher]

Originally Posted by mrsleep99

These guys are just trying to bully you out of your domain name, fight this, I'm pretty sure they are in the wrong.

Before opening your mouth, you really need to look up the case 'Nissan vs Nissan' and see what that kind of fight can cost you.

He may be in the right, but Hertz has lawyers on standyby that can do things to make life real miserable for him. And they don't mind spending the money to do it.

He needs to get with a lawyer asap and see where he stands, and decide if that kind of fight is worth it.

[Simon Nicholls]

Originally Posted by Kay King

I'm not sure what details you are expecting. The conflict is pretty clear - and one answer above pointed out something many don't understand:

To continue to protect the integrity of a trademark, the company needs to actively pursue violations. If a company doesn't do that, they can lose their right to protect their name. That's why they hire legal firms to do nothing more than keep an eye on where their brand name is used and perhaps misused.

Legal advice on a forum isn't usually worth squat. However, you have members here highly experienced in the domain area telling you to drop the name and move on. That's your best course of action.

kay

I meant account details so I can send the domain across to the Lawyers or Hertz.

[Tuzic]

hi,

yes seek some legal advise against it like free advise & google search them, be thorough.

[Brad Lindsay]

Firstly I'm not an attorney so can't give and am not giving legal advice.

With that said, whilst you're pondering on what to do and taking legal advice, if you decide to keep you site online as you appear to have done so far, if it were me, I would at the very least and without delay put up a prominent notice on the site clearly stating that the site has no connection or affiliation to The Hertz Corporation nor to the NeverLost® brand which is a registered trade name and brand of The Hertz Corporation.

You may wish to contact EFF to see if they're able to offer advice or assistance:

Electronic Frontier Foundation | Defending Freedom in the Digital World

Good luck!

Brad

[Simon Nicholls]

Brad,

Thank you for your comments. I've now taken the website offline, and have noticed the lawyer firm. I'm still waiting for a reposnse from them with regarding to transferring the account across to them.

I've also asked them to confirm that all action against myself will cease once the domain has been transferred.

Simon.

[joe.marsh]

Here is a suggestion..

I had a similar issue from the Boy Scouts Organization.

Search for other domains that have "never lost" in them and look at the age of them. Ask why they are coming after you and not the other ones who have been up longer.

Also put on your site near the top where it is seen right away a disclaimer. Such as this site is not associated with Hertz, never lost program, blah blah blah, Never lost is a registered trademark of Hertz.

I did this with the scouts and never heard from them again.

Hope this helps...

Joe

[Chris Lockwood]

Originally Posted by Floyd Fisher

Before opening your mouth, you really need to look up the case 'Nissan vs Nissan' and see what that kind of fight can cost you.

I'm not sure that's the best example, considering that Nissan was the man's name, and he still owns the domain.

[jensrsa]

Originally Posted by Chris Lockwood

I'm not sure that's the best example, considering that Nissan was the man's name, and he still owns the domain.

When the law and lawyers get involved anything can happen. The original owners of MacDonalds lost the fight to use their own name on their restaurants. So if your name is MacDonald (or Burger King) and you want to open a restaurant with that name expect a fight.

Different cases, different facts, different lawyers, different judges all affect a case so fighting a case, even if you are "right", can be a toss-up.

The Nissan case is not only about name, he had been trading under that name for a long time and had registered the domain ages ago as well.

Jens

[Chris Lockwood]

Originally Posted by jensrsa

When the law and lawyers get involved anything can happen. The original owners of MacDonalds lost the fight to use their own name on their restaurants. So if your name is MacDonald (or Burger King) and you want to open a restaurant with that name expect a fight.

Weren't they bought out?

This has nothing to do with the discussion here. Nissan the domain owner is not selling cars.

[see-you-at-the-top]

Yo Ezy,

I'm not a lawyer so this doesn't count as actual advice. But just remember that big corporations have teams of lawyers whose job it is to write those kinds of letters to people like you. Most people are so afraid of lawyers that they just roll into a little ball. The guy probably doesn't even remember writing that letter.

I don't know about the state where you live but most places have a law saying that a lawyer has to give you a certain amount of time, usually one hour, as a free consultation. It would take way less than that for a lawyer to tell you if this is something to be concerned about.

[Arindam Chakraborty]

Originally Posted by Ezy Dollar

Hi All,

I've just had an email from a lawyers office in the USA, stating that my domain NeverGetYourselfLost.net is in violation with some law. Apparently, it's nearly the same as Hertz's "Neverlost" trademark . . .?!?!

Are they having a laugh? Or am I seriously in the wrong? My domain sounds nothing like the above trademark, nor do I sell any Hertz products! It's an eBay site!

That is really crazy! I guess some people just need some excuse to strike out their competitors, but then again, you are not their competitor in anyway as you say. Good luck!

But

Any help of advice would be appreciated!

Like someone else said, a lawyer can give you better advice on this than a marketing forum.

Arindam

[Simon Nicholls]

I'm from the UK, so completly different rules (Can a US firm sue me anyway if I'm in a different country?!).

Again, I really can't afford a lawyer, I'm waiting for a reply back from them, I'm expecting one anytime now.

Simon.

[Valerie V]

These two articles may be of interest from the DNJournal:

Domain Name Journal - Legal Matters

At least you received a C&D. Some corporations are taking a more
aggressive approach and moving ahead with legal action in all
cases as a way of "making an example" of an unlucky few to
deter future "squatters"

Val