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

[sm2007]

I actually received a Cease and Desist (C&D) on a domain from a MOTHER of all: E - b - a - y

Basically said :
In violation, stop using, you may not sell as we will go after you and new owner for damages etc. etc. etc.

Didn't respond, that was 2 years ago. Never heard from again... they missed the other 3 i had and i still have all of them.

You would think they would be a little more relentless than most!

[Chris Monty]

I would let it play out and see how serious they really are. I've never even heard of that Hertz product so how popular can it be?

If they want you, they will come and get you. THEN, make a decision.

[Simon Nicholls]

I could do that, but I really don't want to get that far over a $10 domain name.

They have added a cutoff date, we'll see what happens and if I recieve a reply.

Simon.

[Simon Nicholls]

Ok . . . .

Just recieved an email back, I have started the transfer process.

They are willing to refund me for any domain costs that I may have incurred. In response to my question that after I transfer the domain, am I still liable - he is going to forward the question to the attorney, who will then get back to me . . . .

Least I'm going to get the domain fee back . . .hopefully.

Hopefully I'm now in the clear!

[Dixiebelle]

Hi Ezy Dollar: Sorry to hear that this has happened to you. I encountered a similar incident a couple of years ago. Here's what I did. You can do the same.

1. Write a letter to the hertz Corp. headquarters, addressed to the CEO, and
include a copy of the letter that you received. Here is the address:

Hertz Worldwide Headquarters
225 Brae Blvd.
Park Ridge, N.J. 07656

Attn: Mark P. Frissora, CEO

2. Ask if this is the law firm that represents Hertz Corp., and if they are seriously interested in your domain, and that if he really feels that it is an infringment on the Hertz name. I would also ask why they have not purchased the .net, .info, .org, etc., if they are so concerned. Explain the situation to him, as you have in this post, and offer to sell the domain name to them at a reasonable price. Then wait for a response.

3. Send a letter back to the "supposed" law firm, informing them that you have sent a letter to the CEO of Hertz Corp., in regard to this matter, and are waiting to hear from them before making a final decision as to what to do.

Who knows - you may never hear from them again. I didn't. As a matter of fact the letter I rec'd wasn't really from a law firm. It was from someone wanting to scare me into turning over my domain naame to them.

I never found out how the misrepresentation was handled, although I did receive a reply from the company stating that they were not interested in my domain and was not familiar with the person who sent the demand letter.

Good luck,
Dixie

[jensrsa]

Fortunately you haven't built it into a paying business yet so it should be easy to start with a new domain.

Backup your site and database so you can easily and quickly set up the new site.

Jens

[Simon Nicholls]

Dixie, brilliant advice, I may just do that! I'll see what happens next!

Jens, one step ahead, already done! ;-) By linking to this forum, I don't think I've ever had so many visitors! ;-)

[sylviad]

Originally Posted by Gary McCaffrey

Think they might go after these guys too?

Neverlost - Home

Good catch, Gary. Good question. These guys are using the EXACT name, and the product is unrelated. Maybe they get away with it because they are in Sweden and not the US. (extension .se)

PJS...

The thing is, if you haven't started marketing the site yet what's the big deal? Just let it go. It isn't worth the trouble - hassles - legal fees, etc. to fight them. You have to admit that Hertz is a mighty big organization with lots of power. It would be differnt if you'd had the site for awhile and was making great progress with it, getting lots of attention... but you aren't.

Let them have it and move on. Is it really worth your time to go through legal battles or even to bother communicating back and forth, which could take a lot of writing? Put your time to better use and get yourself a better domain name.

Sylvia

Edit: By all means, check into the so'called legal firm, see if they are legit and that the issue is real, as Dixie explains. If that all turns out to be real, do as I say and give them the domain. Otherwise, ignore them and carry on with the domain.

[Simon Nicholls]

Which is what I'm doing!

I actually thought it was a decent domain, hence why I bought it!

[sylviad]

Maybe you can do what the Swedes did, and register the domain for another country. If you're in the UK, why not use the domain name with the uk extension? That might be sufficient.

Sylvia

[lightningzeus]

This is absolute BS imo. I do not believe they have a case at all. Just because they are some big company, it does not mean they can do whatever they want. And no your domain may be close to there trademark or w/e, but it does not in any way or form have their exact trademark. The only sucky thing is that if you do not have a lawyer, they will bring in some fancy lawyer and just out gun/ out talk u.

[davezan]

Originally Posted by Ezy Dollar

In response to my question that after I transfer the domain, am I still liable

Theoretically, yes. In reality, it's very, very, very, very, very rare for a mark
holder to further pursue a potential infringer, even after satisfying their initial
condition like transferring the domain name to them.

Originally Posted by lightningzeus

I do not believe they have a case at all.

Maybe. But let's review a few facts:

1. Hertz does have a trademark for Never Lost for GPS systems.

2. The OP's domain name bears their trademark.

3. The domain name showed content for, of all things, GPS.

4. Various decisions indicate having an extra letter or word won't get around
infringement, especially if commercial.

While companies don't always get to do what they want, neither do we. It so
happens some parties are ready to demonstrate their established rights, and
how it's being infringed on.

We're aware a lot of people don't like this, depending where they stand. But it
can very much help to understand how and why this happens, and what to do
to possibly avoid or deal with it.

[Scott Lundergan]

This guy got to keep his domain

Nissan Computer Corporation

[Paul Myers]

Scott,

This guy got to keep his domain

Nissan Computer Corporation

Yeah. Just like Mike Rowe got to make a sweet deal for the domain MikeRoweSoft.com. It's his real name, and he was selling software he wrote.

Here's one thing I didn't see mentioned. A lot of companies do these things as a way to prove they're diligent in protecting their marks. That way, they don't go the way of kleenex, which is now considered a generic term for facial tissues, IIRC.

If you respond with a letter explaining why you believe there will be no confusion (very different name and/or in a different field), and why it won't be confusing to their prospective clients, that will often satisfy them and serve their primary interest in the mark.

I've had a couple of these and handled them that way. No problems. But I was VERY far from conflicting usage or anything a judge would call "bad faith."

Note: I'm not a lawyer and this is not legal advice. Just something people can consider when preparing to speak with lawyers on similar issues in the future. An IP or trademark lawyer will know this stuff already. Most lawyers who don't specialize in that field, in my experience, won't. The details are where things can get sticky.


Paul

[SimonRiver]

They don't have a case. The product you're selling is completely different from Hertz, which is a car rental company. Thus trademarked terms are not competing with each other.

So if you're not in competition, or in the same market, then it's just all another way for lawyers to make money off of Hertz for writing threat letters to waste people's times.

They have no case and they are laughing their way to the bank.

[Steven Carl Kelly]

Originally Posted by SimonRiver

They have no case and they are laughing their way to the bank.

How are they banking cash by having lawyers send him a letter demanding he surrender a $7 domain name?

[Black Hat Cat]

6. By law, any trademark holder has to protect their trademark or risk loosing it. So rightly or wrongly, Hertz is doing what is required to maintain their international trademark. No point in fighting that fight, just more hassle than its worth.

7. He doesn't even know if it IS Hertz making this claim. Aren't legitimate claims of this nature handled via snail mail?

[davezan]

Originally Posted by SimonRiver

They don't have a case. The product you're selling is completely different from Hertz, which is a car rental company. Thus trademarked terms are not competing with each other.

So if you're not in competition, or in the same market, then it's just all another way for lawyers to make money off of Hertz for writing threat letters to waste people's times.

They have no case and they are laughing their way to the bank.

Originally Posted by blackhatcat

7. He doesn't even know if it IS Hertz making this claim.

People, please read the thread in its entirety. But here's a shortcut:

Originally Posted by Ezy Dollar

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,

Note the parts in bold. And no, blackhatcat, they're not required to handle all
that via snail mail only.

Then again, Microsoft has demontrated various times a trademark holder does
not even have to send a C&D in the first place if they choose to sue outright
in court. That's probably because they got money, but that's since "inspired"
other mark holders to do the same.

[jensrsa]

Originally Posted by Scott Lundergan

This guy got to keep his domain

Nissan Computer Corporation

After 9 years in the courts, and the battle is still not over, the court ordered Nissan Motor Corporation to pay $58,000 as cost under rule 68, this is less then 2% of what the cost was to defend this case.

Not worth it for the $7 domain that is the topic of this thread.

Jens

[jensrsa]

BTW Ezy Dollar, nevergetyourselflost.com is available, as long as you don't sell GPS

Jens

[KarlWarren]

For anyone who says that HERTZ do NOT own the trademark:
Trademark Electronic Search System (TESS)

They do.

[Simon Nicholls]

I did mention to the person who contacted me that all of the others were available to buy, surely if they were THAT hot on copyright etc they would of bought them all up!

[Simon Nicholls]

Ok, good news, I guess!

I have started the transfer process and all charges against me are apparantly going to be dropped!

Now just need to focus on building and selling these other websites!

Simon.

[Chris Monty]

Good show! Glad to hear there is a happy ending!

[solano101]

Originally Posted by Arindam Chakraborty

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




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

Arindam

i don't think so

[laynee]

I can't imagine that getting into a legal quagmire would be worth it over a site that you say isn't getting that many visitors. I would, at least, send out a few press releases about what's happened. I never had anything against Hertz until I read your post, but I'm so not-impressed by companies that pull crap like this. In my opinion, your domain is completely not infringing on anything, and now, given the choice between Hertz and the myriad other rental cars, I'll be going with one of the others.
Good Luck,
Laynee

[JustVisiting]

Originally Posted by 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?!).

Simon

In a word ... not without massive expense on their part!

What are they going to do, extradite you? The guy that hacked the Pentagon is probably being extradited, but I doubt whether the UK Government would hand you over!

Before I continue with my next comment, I want to emphasize that I have worked with many American's and they are great folk....however US lawyers seem to think US law applies to the world...it doesn't.

If it is genuine you could really profit from this at a later stage. I'd phone the 'News of the World', 'Daily Mail' etc and tell them whats happening. This would be bad publicity for Hertz - who have a large business in the UK.

You could start a blog, with the domain name in question, and document every communication they send you. Of course you would monetize it with Adsense.

After saying this, to infringe a registered trademark surely it has to be an exact replica of the original, yours isn't.

[shreder]

What ever you do, do NOT give them the domain right away.
There are many Internet bullies who send out letters such as the one you received just to acquire some free domains.

Your domain is using regular expressions - Never get yourself lost is something I can use everyday and actually use it daily.

Here's a list of domain lawyers:
NamePros.Com

Here's a forum where you can get more experienced domainers' advice:
NamePros.Com

Just filing a case to get the domain will cost them at least $1500

Don't give up!

[JustVisiting]

Simon

If you do transfer you MUST charge them a transfer fee, upfront of course. Charge US lawyers rates, $500 per hour should do it, minimum 2 hours to include your admin costs.

[hiphil]

Take a copy to your local CAB and arrange for a consultation with a lawyer, I think you can get 30 minutes free legal advice.

[Simon Nicholls]

I've already transferred the domain over! :-( I'm going to email them now and ask for payment. I'm not keeping my hopes up . . .

Simon.

[Simon Nicholls]

I've just sent them this email on the fly . . .

Hello,

I recently transferred a domain over to you (Index of /). I recieved an email from yourselves, you agreeded to pay me the cost of the domain, I would also like a fee on top of this - I had no idea that t he website was apparantly violating your clients copyright procedures.

My fee will be $250 + The original domain fee,

Please advise to how you would like to proceed with these fees....

Regardsm

Simon Nicholls.

I'm not keeping my hopes up though . . .

[JustVisiting]

Originally Posted by Simon Nicholls

I've just sent them this email on the fly . . .

Hello,

I recently transferred a domain over to you (Index of /). I recieved an email from yourselves, you agreeded to pay me the cost of the domain, I would also like a fee on top of this - I had no idea that t he website was apparantly violating your clients copyright procedures.

My fee will be $250 + The original domain fee,

Please advise to how you would like to proceed with these fees....

Regardsm

Simon Nicholls.

I'm not keeping my hopes up though . . .

Good on yer! They certainly don't work for 'free' so why should you?

[ronr]

I just saw a blog about blog getting a C&D letter from Tmobile for using the same color Magenta as T-mobile on their web page.

The blog was about gadgets.

[Simon Nicholls]

It's pathetic.

I don't think I'm going to get anything however, what could I do next?

Simon.

[KirkMcD]

Originally Posted by Simon Nicholls

My fee will be $250 + The original domain fee

I hope you are kidding. You were lucky to get an offer for the original domain fees. They tend to look down upon these things.

what could I do next

Walk away. It's not worth your time and effort.

[Simon Nicholls]

I'm not kidding, why should I be?

I paid for that domain - I'm not going to just give it away. As said before, they are bullying me into giving it to them.

They can look down at me all they like, it would be different if the site was making $100 a day wouldn't it?

[obiswill]

Welcome to the litigious world of the USA. If McDonald's in the USA can sue the real McDonalds family in Scottland from using their family name on their restaurant...anything is possible. However (I have to put on my Georgetown Law Cap now! ) in your instance you are the victim of Corporate lawyer bullying.

You have no infringment issue, unless you sell the same and/or similar GPS product (you can't confuse the consumer in the marketplace). Never Get Yourself Lost can very easily be argued to be in the 'public domain' (and I would advise you to TM if it you plan on using it for biz) by any junior attorney. This is sent to you as a scare tactic in hopes that you will be too afraid, or not knowledgeable of TM infringement laws. Have an attorney repsond with a letter citing case law and this will be gone quickly.

FYI..this happened to me 3 years ago when I received one of those letters from the NBA (National Basketball Association) Attornies. I remember laughing when I read it. I called a friend of mine who replied to their Attorneys with case law, and in return threatened them that if they persisted in their legal harassment they would be sued for damages that resulted in the disruption of our business practice as well as legal fees. That was the last we heard from them!

[Thomas Belknap]

Originally Posted by Simon Nicholls

I'm not kidding, why should I be?

I paid for that domain - I'm not going to just give it away. As said before, they are bullying me into giving it to them.

They can look down at me all they like, it would be different if the site was making $100 a day wouldn't it?

You were pretty happy just to give the domain up and have the problems go away. Now you are trying to make money off of it?


Maybe you should have just kept the domain and ask for the fee then? Oh, that is right, you were worried about lawyer fees. lol

[Simon Nicholls]

Indeed. Well, now they have the domain what harm will it do asking for compensation?

I wasn't happy giving it up, but as you say - I couldn't afford the legal fees.

[Thomas Belknap]

Originally Posted by Simon Nicholls

Indeed. Well, now they have the domain what harm will it do asking for compensation?

I wasn't happy giving it up, but as you say - I couldn't afford the legal fees.

Nothing wrong with a little cybersquating, eh?

[TE2]

Originally Posted by Simon Nicholls

Indeed. Well, now they have the domain what harm will it do asking for compensation?

I wasn't happy giving it up, but as you say - I couldn't afford the legal fees.

Hey Simon,

I am NOT going to tell you what to do or give any advice. I just want to share this with you and the others reading this thread.

One of my best friends says this all of the time...

"Would you rather be happy or would you rather be right?"

Think about those words. I did and still do on a daily basis.

I applied them a few months ago when my son was falsely accused of a serious crime. It cost us $8000 "cash" to get an attorney, go to Grand Jury, and get vindicated. Then another $1500 to expunge it completely from his record although he was never charged and the Grand Jury cleared him (plus they asked if they could bring charges against the false accuser).

We had a decision to make - spend the next few years and more money to prosecute the accuser and get that $9500 back or... just let it go and get on with our lives.

Our choice... to be happy!

I sincerely hope you find this helpful now and in the future.

Regards,

John

[Li Weng]

This is ridiculous. I don't see how this is a breach of copyright at all! It's a different phrase, only with two words the same. How can they justify this? I can't believe it.

[gatorjack]

Basically, Hertz and they bullying attorneys have nothing better to do than to try and push around anyone they want. They see a domain that is similar to one they have registered, so instead of making an offer (as a normal business would do), they would rather waste their money pushing someone around.

The fact of the matter is in order for them to show infringement, they must show that your user of the domain would cause consumers to confuse your website their thair trademarked name. Since your website, product, and service are nothing near the service Hertz offers, I don't see how they would have any chance of winning.

I will repeat this, they must prove that your domain will confuse consumers. Just because you have a domain similar to their name does not mean that it is infringing. Now, if your offered rental services on your website, especially a service similar to the service Hertz is speaking of, then I could see the point of them having a cow over it.

Too many of these pushy attorneys that have nothing better to do with their time seem to think that just because a name is "similar" to one of their client's that they can shove people around. Attorneys like that don't need to be in law in the U.S. They need to live in a Communist country where their bullying services can be better utilized.

[davezan]

Originally Posted by TE2

One of my best friends says this all of the time...

"Would you rather be happy or would you rather be right?"

Cultivate and cherish your friendship with that person, John. He's a wise man
or woman, though the answer to that might depend on the situation.

Originally Posted by Li Weng

I don't see how this is a breach of copyright at all!

Arguably, the average person doesn't understand, much more care, how and
why these things happen until it happens to them. That's to be expected.

But if one cares to find out, especially when a few answers here have already
been posted, then they might understand it better. I once felt that way until
I took it upon myself to figure out why, though I think I was fortunate.

Oh, and Simon...they don't owe you anything. But you can try doing what I
quoted from John above.

After all, life's too short concerning one's self over things he or she does not
necessarily have full control over. But...it's your choice.

And since you gave the domain name to them, the issue's practically moot. It
is time to get back to work and make money without infringing on the rights of
established parties, folks, unless you work out a win-win situation with them.

[Maria Gudelis]

Simon - if this assumption is correct - they had only sent you the email right?

You haven't been served or a lawsuit hasn't been prepared and filed by this law firm right?

So...they first have to prepare claim against you, then serve you in your own country - so ... until that happens - it's all a bluff and bully behaviour.

You've made the decision to give up the domain ...in the future...if you can't afford an attorney - remember - you can represent yourself 'pro se' - there is nothing wrong with doing that and also quite effective as the only one racking up attorney fees and having to do all the work to prove their claim - is them.

future - You have that decision / option - to simply not respond to bullying and wait and see if they really will file a lawsuit ( ps - and it sure would have been interesting to see what a judge thinks of how close it is to the trademark - everyone has fair use of the words never and lost in other context to 'neverlost' trademark.)

[Buster Iversen]

Originally Posted by Simon Nicholls

But do I really need to? Do they have a case?

The website never even has any visitors! I've not marketed it at all.
As far as I'm concerned the domain is not infringing any slogans?!

It is irrelevant if they have a case or not, the important part is if you can afford to go to court over it or not.
Apart from that it is not particular bright to ask for legal advice on a forum, or respond to legal letters without legal advice for that matter.

[Simon Nicholls]

Originally Posted by Buster Iversen

It is irrelevant if they have a case or not, the important part is if you can afford to go to court over it or not.
Apart from that it is not particular bright to ask for legal advice on a forum, or respond to legal letters without legal advice for that matter.

Yeah well, you learn from your mistakes!

If I can't afford legal advice, I can't get legal advice can I? Even if I went to the Citizens Advice Burearu, I'd only get 30 minutes before I need to start paying.

If there is a next time, well - maybe I'd go about it in a different way. But unfortuantly a $7.99 domain isn't worth going to court over . . . as said before, if the site was pulling in $300 a week or whatever, then maybe, just maybe it would be different.

Simon.

[davezan]

Originally Posted by Simon Nicholls

If I can't afford legal advice, I can't get legal advice can I?

Depending on how relatively easy or difficult the case might be, some lawyers
or solicitors might give a free initial consultation. Not everyone might give any
surefire answer if they're not given the full specifics, and if they think it's not
easily answered in an email.

Look on the bright side: you could've been made an example...or worse. Some
got lucky, but those that didn't weren't so.

Good for you if you listened to a few who told you to fight and later won. But
if you lost, what will you maybe do to them?

[Tim Franklin]

Some good advice here,

As another poster mentioned, offering the sell the domain name, was a bad move, it does give them some ammunition.

At this point, there are really only two options, get some legal advice or
substantially change the website to something so completely different that there can be no case made that the website infringes in any way.

Were it me, I would just move the page to a "parked webpage"

I have several domains, that are close to other more popular websites, most of the time I keep these parked, this is a legal tactic, which keep anyone from attempting to claim that the domain is infringing.

Once the statute of limitations has run its course, I will be free to use the website in the way I see fit.

However, I did obtain some legal advice about these domains and it cost me about $150.00 for that legal opinion.

In your case it is probably not worth the time and money, but I am stubborn, I would not just give it up to them, I would just park it.

General disclaimer, I am not an attorney, this does not constitute advice.