Trademark violation of which I was unaware

by danifae 80 replies
I read other threads about trademark violations but I couldn't find the answers I need. My situation is slightly different.

I have a site the domain of which is going to expire in a forthnight. I was wondering whether to renew it, because in 3 years I only earned €30 with Adsense and some €200 with ebay. A real waste of time (and this is not even one of my worst sites....)

Anyway, 2 days ago I received a letter from an attorney stating I violated the trademark of their client.

Honestly, I did not really know that part of the keywords I used in the domain was a trademark. I considered it only as an expression (it is something like "good bread machine" being the 2 words "good bread" the trademark).

The site was optimized for that sort of products, in particular for a different brand and in 3 years I had very little visits in general but most of all very little through the trademarked keywords.

Now they asked me:

"(1) cease and desist from further use in any way of the XXXXX XXXXX™
mark;
(2) transfer to our client the domain name www.xxxxxxxxxxx.com;
(3) provide information and substantiating documentation as to any revenue you have realized on account of or through, in whole or part, your infringing use of the XXXXX XXXXX™ mark as set forth herein, including without limitation any such revenue realized through the website www.XXXXXXXXX.com, and account and remit to us the full amount of such revenues;
(4) provide information and substantiating documentation regarding any other party in the infringing uses of the XXXXXX XXXXXXX™ mark as set forth herein;
and
(5) agree to enter a stipulated final judgment and permanent injunction in this matter.

Except for the www.XXXXXXXXXXXXXXX.com website, which must be changed immediately, XXXXXXXXXX is willing to provide you a reasonable period of time, not to exceed two weeks, in which to effect these changes."

I have no problems in transferring the domain to their client, apart from some technical difficulties because I cannot understand the registrar's instructions, and have already taken down all my files.

But before answering them I wonder about the economical requests. Will they really want the money? How could I show them the revenues? shall I send them a screenshot of my ebay affiliate account??? What about all the money I spent for the site?
What does the (5) means??

Had anyone ever replied in a way not to have to pay? Can you share your experience?
I really need your help!
Thank's in advance

edit: some spelling corrections
#main internet marketing discussion forum #domain brand #trademark #unaware #violation
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  • Profile picture of the author Michael Mayo
    You should seek the counsel of an attorney in this matter as receiving answers on this
    in the Warrior forum is a bad ideal.

    For legal advise on what you should do, speak to some one qualified.

    Have a Great Day!
    Michael
  • Profile picture of the author sbucciarel
    Banned
    I would agree only to transfer the domain and do that. You can inform them that you will contact your attorney for any other demands.
    • Profile picture of the author Dan C. Rinnert
      I would talk to an attorney before doing anything.

      As I recall, there are a few things that factor into whether trademark infringement has actually occurred. Simply the fact that your domain name contains their trademarked term, especially if it's a common phrase, like "good bread", does not necessarily constitute trademark infringement. What also goes into consideration is how the website was used. Is your website in the same niche as their business for which they have the trademark?

      It could be that they may not even have a case. They might simply be trying to intimidate people and squeeze out money from people.

      Or, they might very well have a case.

      That's why it's important to talk to an attorney. And do so before doing anything. Doing the wrong thing could get you in deeper trouble. So, get off the forum and get an attorney pronto!
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  • Profile picture of the author christopher jon
    [DELETED]
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    It buys my product or it gets the hose
  • Profile picture of the author gslauen
    Yes, perhaps just let it go. They won't have a case then.
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  • Profile picture of the author Mo Goulet
    I had the same thing happen to me and I checked their Trademark date and I owned the domain long before the had the TM. I sent them an email letting them know I was seeking a Regulatory Judgment in my local court and if they would like to buy the name they could have it for $2500. I they hadn't pissed me off and simply emailed me concerning the name, I might have sold it to them for $500. 2 weeks later they paid me $2500.

    Don't let that letter scare you. When you tell them you are filing for RJ, they know they will lose plus they now have to come to your ball park.

    The stupidest thing attorneys do is send cease and desist letters.
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    • Profile picture of the author webjedi
      Originally Posted by proapc View Post

      Don't let that letter scare you. When you tell them you are filing for RJ, they know they will lose plus they now have to come to your ball park.

      The stupidest thing attorneys do is send cease and desist letters.
      Agreed. Do not be scared, that is their tactic.
      Do not do a damn thing until you at least hear some free counsil from a professional, and let them review the letter and your background infor about this site.

      My guess is they don't have a case, personally I would round file it and move on but talk to an attorney before given your URL over.

      wj
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  • Profile picture of the author seasoned
    Michael Mayo is right, and I am certainly no lawyer, but...

    (5) agree to enter a stipulated final judgment and permanent injunction in this matter!?!?!?!?!?!?

    In this case, that sounds like an inappropriate boilerplate! On the CONTRARY, YOU should get a permanent injunction saying that they will not pursue matters against YOU any more for this!

    Frankly, I think something stinks here. And if you can show good faith, I doubt they have a case. I am, of course, assuming the words ARE generic, that you didn';t know about the trademark, and that you did not compete with them in ANY way unless it was a good faith use of the generic item.

    AGAIN though, IANAL.

    Steve
  • Profile picture of the author Michael Mayo
    OK, I took it a step further just to see what if...

    "MHP International"+"trademark"

    I would still recommend that you seek qualified counsel prior to any deals or resolutions.

    Have a Great Day!
    Michael
    • Profile picture of the author mrfusion
      If you really got balls sell the domain to them for just slightly less than it would cost to take you to court! (I wouldn't have the balls for it, I'm just saying...) :p
  • Profile picture of the author BulletheadX
    The first time I remember reading about the "bad faith" argument was in the case below. I haven't verified it but I was left with the impression that there could be criminal penalties involved for behavior akin to extortion.

    Going with the viewpoint that the law/court cases rarely favor the "little guy", I'd suggest being very careful about the battles you choose to fight.

    Robert

    "Under the Uniform Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers, trademark owners can only take away names that someone is using "in bad faith." A sign of bad faith is registering a name "primarily for the purpose of selling" it to a trademark holder.

    Read more: Madonna.com embroiled in domain ownership spat - CNET News"
  • Profile picture of the author Floyd Fisher
    Yeah, you need to talk to a lawyer on this one asap.

    While I would personally be inclined to say you may have a case, even if you are in the right....is this fight really worth waging?

    This is what you're in for, should you decide to fight this:

    Nissan.com - Lawsuit - The Story

    Read this story carefully, and decide what your next move should be.
  • Profile picture of the author HeySal
    Something is wrong with this - Sounds like a scam. You can check this out free of charge via your local DA's office. I'm betting its nothing to worry about but you need to make sure. If it's a scam, as I think it is - your local DA might just like to catch the jerk who sent it. They need to PROVE that they have had that site since 1998 ect. they can't just send an email and tell you that you have to start documenting earnings. That's nuts.

    Like I said - your DA's office is free. Just tell them you think it's someone trying to scare you out of money -which is what it sounds like and they will look into it for you.
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