Trademark violation of which I was unaware

Profile picture of the author danifae by
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
#internet marketing #domain brand #trademark #unaware #violation

  • 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
    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 gslauen
    Yes, perhaps just let it go. They won't have a case then.
  • 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!
  • Profile picture of the author Kay King
    You've had the site for three years? Did you check to see when the term was trademarked?

    My advice would be the same - check with an attorney. I'd pay an attorney to respond to that email in a definitive way as I think there's something odd about it.

    The message doesn't seem "right" to me. Anyone could look to see the domain will expire soon if not renewed - no need to transfer an expiring domain except the person wants the ability to grab that domain.

    I would not reply to the message myself in any way, shape or form - but would send a legal response.

    kay
  • 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.
  • Profile picture of the author BulletheadX
    Originally Posted by Dan C. Rinnert View Post

    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!
    ^^This.^^

    You don't have a legal obligation to do anything demanded of you in a C&D letter. If they really want those things they'd have to go to court to force them from you. It's very common for lawyers to go overboard in those letters because they know that they cause a great deal of fear and anxiety in most people, who they know are very likely ignorant of their rights.

    Companies aggressively defend their trademarks because their claims of uniqueness, powers of enforcement and so on can be diluted if they don't. Look at Band-Aid and Xerox.

    In many cases you can get a free consultation with an attorney; whether you can find a trade attorney in your area is a different matter. Perhaps you can get a usable answer from one of those "ask-a-lawyer" forums online.

    If it were me, I'd ignore them and let it expire, and if they contacted me again I'd shoot a note back and tell them they've already spent more in attorney fees than I'd ever made on the site and that the domain was up-for-grabs on whatever date.

    However I wouldn't necessarily advise anyone else to do what I would do. :rolleyes:

    Good luck,
    Robert
  • Profile picture of the author danifae
    I received a lots of good hints here. Thank you to all

    First, after the first period of searching for a long keyword, I did not paid much attention to this site.

    Today I made a search.

    - The first site on google is mysame-keyword-&different.com
    The site have an extremely tiny circle thing after the FIRST word on the graphical logo. It is not visible what it is. No other trademark or copyright symbols appears an any page of the site. It doesn't seem to have anything to do to the trademark owner who contacted me through the attonery group. The only item which results from a search in the site for that 2 trademark words has very little to do with the attorney's client.

    - the second site returns lots of error messages: a database deleted by the owner after the attorney letter???

    - then few sites with no trademark in the url or facebook pages.

    - then again mysame-keyword-&differentS.com

    - then an amazon page and here for the first time I can see that the 2 words are part of a name of a producer (we are on google 2nd page)

    - then squidoo pages and other sites

    -then my exact same domain except that my is mysame-keyword-&mine.com and that is mysame-keyword-&mineS.com (plural).

    That is... I cannot see any site from this producer but many other sites some of which using the trademarked words plus others....


    @proapc how did you check the trademark date? I tried to google it but found not relevant sites.... this is a very good idea. I'm pretty sure they had it already. The attorney wrote their client had it since 1998, but I don't mind checking.....
  • Profile picture of the author danifae
    I checked here: http://tess2.uspto.gov/ but I didn't get any result.

    then I checked here: Check Trademark Availability Before You Register Your Domain Name and again I couldn't find anything but I also wrote some known brands and I got no results.
  • 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 seasoned
    Originally Posted by danifae View Post

    I checked here: http://tess2.uspto.gov/ but I didn't get any result.

    then I checked here: Check Trademark Availability Before You Register Your Domain Name and again I couldn't find anything but I also wrote some known brands and I got no results.
    that "assist2web" is a JOKE! I wouldn't rely on it. The USPTO only handles SOME international, and US trademarks. But the lack of it there, if you or they are in the US, REALLY strengthens your case! If THEY are in the US, they are IDIOTS! The USPTO should have been the FIRST place they registered it in. If they are NOT in the US. but you ARE, they are STILL not very smart, but it supports that you didn't know!


    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 danifae
    Honestly, I looked in many sites, but I cannot find these 2 words as a trademark
    I checked
    Trademark-Info
    and then Zibb. The Global business search engine.

    here I found they own a 4-word name with 2 of my 3 words
    BUT!
    on Free Trademark Search Online | Trademark a Word, Logo, Design or Symbol - Online. Fast & Easy| Experienced Attorneys, Easy Online Process| Get Your Trademark Now! I found that the above trademark was cancelled on 25 February 2011! and then I found the same on Tess:

    "Current Status: Registration cancelled because registrant did not file an acceptable declaration under Section 8. "

    It seems they don't own the 2 words of my 3-word domain and don't even own the name they used to....
    I will definitively seek for an attorney advice. I feel they are pulling my nose.... I deleted the files on my site which doesn't show anymore. But many other sites with the same words are still on... maybe they made the same search...
  • 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.
  • Profile picture of the author Andyhenry
    Originally Posted by danifae View Post

    Honestly, I looked in many sites, but I cannot find these 2 words as a trademark
    Do not assume that because they seem like 'normal' words and you can't find a trademark that you are ok.

    I had a friend, actually a fellow warrior (now deceased) who was in this same predicament a few years ago. Their domain name seemed to me (and them) like just normal words but they got sued for trademark infringement and it's much more complicated than many people realise.

    I'm not a lawyer and I don't play one on TV but if you were my friend and asking for my advice I would probably say - Let it expire, definitely don't agree to anything or make any payments without first seeking proper legal advice and don't stress about it. Let it go and get on with other things then if they still chase you via legal routes go see a lawyer and get proper advice about how to respond.

    Andy
  • Profile picture of the author AdamCBR
    if u are based outside the US and they are based in the US, i would tell them to go F themselves. not like you can get extradited for cases like this.

    it sounds like they are fishing. just cos u get a C&D letter doesnt mean anything. lots of lawyers send these out to scare people. but you havent actually done anything wrong.

    personally, if it was me. i would renew the domain, just to piss them off and ignore their letter altogether.
  • Profile picture of the author AdamCBR
    OR...reply requesting for proof of trademark, before u even consider anything.

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