LOL Trademark Infringement are they kidding?

Yeah I am serious as a hear attack I do not want to say the domain name its not even hosted just a dead domain I just got a certified letter in the mail I had to sign from a law office.

They are saying traffic is being diverted to my domain damn I wish I had hosting for it still lol. This is a dead domain name so their traffic would be diverted to nothing anyways wtf...

Its an adult site I did not do much with just messed with it for a minute and forgot about it... Never any commissions because I did not do anything with it. They are saying I need to transfer my domain over to them immediately or further action will be taken..

I thought April fools day already passed, you have got to be kidding!

No george I do not think that I just did keyword research and came up with that name a long time ago. I did not even know that there was a company with a similar name. The domain is a parked domain its not like I am profiting off of it, and why 2 years later kind of weird!

Amazon books had their tradmark and business several YEARS before amazon.com. Had they sued amazon.com a year or two earlier, THEY would have won. In fact, if Amazon.com was not SPO well known at the time, they would have won. HOW do I know? The judge said so! He saw this as an attempt of amazon books to take over the going concern that amazon.com built, and just said SORRY, you took TOO LONG!

THINK ABOUT IT!!!!!!!! NISSAN sued NISSAN.COM and they OBVIOUSLY did NOT have the domain! HECK, they weren't even known in much of the world as NISSAN when NISSAN.COM started. They didn't even EXIST when Mr. NISSAN was born! They didn't even exist when Mr. Nissan started his company! STILL, they gave nissan.com a run for its money! ALL because they were a BIG company that some people called NISSAN! As Mr. Nissan noted, the ACTUAL trademark was NISSAN MOTORS!

Steve

If you have any interest in keeping the domain, talk to a lawyer.

Trademark law is not simple.

Doesn't matter when they registered their domain name, if they had a trademark on their name first.

If you are in the same industry and competing against them, that can be a problem. If you are in different industries, it may not be a problem, except where the trademark is a well-known trademark.

I am not a lawyer, but I know that there are many factors that go into whether something is infringing upon another's trademark. Often, the law is not clear and these cases are left to the judgment of a court, unless the parties reach a settlement outside of court.

If you're not sure which direction you want to go, look at the domain name you have registered from this perspective. First, is it something that contains a well-known trademark, such as Xerox? Because Xerox is so unique and well-known, you would have problems starting any business with Xerox in the name, even if it doesn't directly compete with them. You would have a tough time, for example, opening a Xerox Fried Chicken joint. People would reasonably associate it with Xerox brand, so you would have issues.
If it is not such a recognizable trademark, it may be a scare tactic. For example, if you registered ChampionTreeService.dom, Champion Sportswear probably doesn't have much of a case against you. Nor would Champion Windows, or any number of other Champion brands, unless there is one that offers a tree service. In this kind of a case, especially where you do not have a website on the domain, it would be difficult to establish that you are actually infringing upon their trademark.

If your domain falls in the first category (the Xerox example), you may be better off dropping it. If it falls into the second category, or you're just not sure, and you'd like to keep the domain if possible, then you're going to need to speak to an attorney.

As for your domain being "similar but its definitely not the same", that will have bearing too. Confusingly similar is the guideline here; it need not be exact. If it is something like Zerox, the Xerox could definitely argue that it's confusingly similar.

The bottom line is that this is the kind of thing you need to discuss with an actual attorney, who can advise you as to the merits, or lack thereof, of their complaint against your use of the domain you have registered.

It's not about when they registered their domain...it's about when they trademarked their business name. They could have done that years before they registered their domain.

People were telling him to sell it for $100,000! That IS lawyer territory! If it is a little company with a trademark before he purchased the domain, THEY get the domain, even if they are BROKE!

Steve

MORE bad advice! LEGALLY(written law), you are right. Precedent says you are WRONG! TRY to register amazon.tld, or microsoft.tld!

Basically, if you use a CLEARLY trademarked term, FORGET IT! If you have one that is less obvious, you are not using it, and they have an earlier trademark, you may lose it. If you try to sell it for more than its intrinsic value, that may violate the UDRP, and you AGAIN have a problem.
If you have one that violates the trademark, and deals with the product, a competitor, or associateed things, you may have a problem.

If you, before amazon became famous, had a site that discussed the amazon, and maybe went to some little book store, for books, listed animal shops, etc.... you PROBABLY could have kept the domain claiming it was a standard term, etc... Try to do that NOW, and they will say YOU SHOULD KNOW, etc.... and may fight it.

OTHERWISE, you can try to go to "court". ACTUALLY, the UDRP seems to say you CAN go to arbitration, so it might not be that expensive. A large company, like microsoft, etc..., may try to push this into court.

steve

Yeah I will prob just give it to them its no sweat off my back they can have it. I just think its silly. A parked domain that Is almost 2 years old that I forgot about none the less. Not worth my trouble - unless they want to reward me handsomely lol

True, but if you make one small indication that you are doing this for monetary gain on your part, they will have a case against you and will most likely win.

Meaning, you can do the site with "Factual Information" but you cannot do anything that indicates you are doing so to hopefully get them to buy it from you.

My domain was also an unused domain...just a blank white "not found" page. But they did some research and found out I had the page parked. The fact that I had the page parked and earned about .02 cents is enough to prove that I had intentions on profiting from the name.

So lets see how this works. I find a really juicy domain I want thats for sale on sedo for $xxx. parked. no hosting. lets make something up: bigboogers.com

So I build a trademark on some part of the name, say "bigboog", then in a year or so, send a form letter and I get the domain I wanted for free.

I think I just found a new line of business.

Before the .COM bubble pop, I had a domain called fastobject.com.

One day, I got the registered letter and called to talk to the attorney representing the case for a French company called Poet Software that ended up opening a US subsidiary.

I had registered the domain with the intention of starting a tech blog about object-oriented programming but the domain was the exact name of their vertical niche software application.

After explaining to the attorney that I was in the print marketing/publishing business, and intended to create an online programming magazine with this, I can understand how they would want the domain.

He originally came on really strong and huffy with me (typical lawyer bluster peacock positioning in the puppydog butt sniff phase of any business/legal engagement). But instead of losing my cool and simply just explaining that I was a businessman like the rest of them, I was willing to make amicable arrangements to transfer the domain to them on a sale basis, but they had to also buy my site, code and content as an asset transaction -- make me an offer because I hadn't done a whole lot with it and was willing to move on. But realize that that they had put me into a bad position, and I couldn't just walk away from the thing without suffering some financial loss.

The attorney said he'd discuss with the client and they would get back to me.

I get an offer letter in the mail for $47,000 to buy the site - to which I promptly accepted and initiated domain transfer escrow. They had budgeted ten times that amount to fight the court battle to obtain the domain. I was thinking a couple thousand because of the time and effort on the code/content, which they would be buying.

Now this was in the stupid money days of the internet, and the company has since gone out of business (go figure). The domain exists as a search engine adsense clickthrough park page for someone.

But I also had clearly represented that I wasn't squatting on the domain by having a publication of my own, etc... And while the name was exact, because I was a publication and not in the business of some boutique niche B2B software, I had somewhat of a defense that I wasn't infringing upon their trademark because it wasn't "confusingly similar". That is a key phrase in any and all disputes in trademarks.

My business attorney schooled me in the entire game after the fact, and handled the rest of the transaction.

The point to this anecdote is really to illustrate a couple of things... 1) you most certainly can sell a domain that is the subject of a dispute under the basis that the company will have to pay legal counsel to do anything and everything relating to the issue... and that cost is generally much higher than the price someone is willing to sell an unused domain. 2) had I fallen into some defensive mode of communication, I may have missed the actual opportunity.

Assuming that because someone simply makes a claim, that it will cost you millions of dollars in legal fees is not true.

Assuming that because someone even has a valid trademark, that they automatically win is not true based on the doctrine of "confusingly similar".

Assuming that the domain is unused, that it's better to just give it away is short sighted DEPENDING ON THE INDIVIDUAL CIRCUMSTANCE.

Rational, open-minded discussion is always a good way to go into any of this sort of engagement. You'll know what you're up against after a cordial chat with the involved parties, and they're not going to kick down your door and shoot your dog over a polite, professional conversation. You're in a more informed position after the discussion and can still dump the domain or whatever.

I'd debate that.

Photoshop is a registered trademark, but just go look in Amazon and see how many books use that word in the title. For example:

"Layers: The Complete Guide to Photoshop's Most Powerful Feature"

That's not an Adobe book -- in the front it even mentions it's not endorsed or sponsored by Adobe.

Just because there's a trademark on something doesn't mean you can't use it in some situations.

Jay Jennings