LOL Trademark Infringement are they kidding?

38 replies
I just got a letter in the mail from an attorney that says I am intruding on their domain name. Lol this was a domain I bought 2 years ago and it is not even hosted something I forgot about, and wasn't aware that I was infringing on anything.

Anyways whats the law on this yes its similar but its definitely not the same! Should I ask them to buy this domain from me lol. Damn i was sitting on a goldmine and didnt even know it!


What is the law on this 2 words are the same as theirs but I have free in front of it and its a .info instead of a .com

What should I do I am not even sure who the register was? Should I just get rid of the domain? What would you suggest?
#infringement #kidding #lol #trademark
  • Profile picture of the author GeorgR.
    a) yes, you should ask them to send you a couple $100k, i am sure they will gladly do.
    b) yes, you are sitting on a gold mine. The C/D letter from the lawyer is proof. I can see the lawyers already packing bags with money, ready to send to you

    c) you are serious?

    (d) do you seriously think someone can use "microsoft" or "apple" or "xbox" or whatever TM terms...and its ok simply by putting "free" in the name or having an *.info instead of a .com?

    It doesn't matter at all. Get rid of the domain, delete it, unless you want more letters from the lawyers and then it can get very costly.
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    • Profile picture of the author entrepreneurjay
      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!
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      • Profile picture of the author wjtyoung
        There are many discussions about this on some of the big domain forums that you might check out. I have been through this, got the letters, emails, threats etc. I agree with the above posts about not taking legal advice online, but I suggest you do NOT offer to sell it to them. They may be able to use this against you in court saying that you were just trying to profit from them. (I realize this sounds stupid, of course we want a profit when we buy a domain)

        If you aren't planning to fight them to let you use it, just cancel the domain from whatever account it is in and forget it. That is what I ended up doing because I wasn't using it and wasn't going to any time soon.
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    • Profile picture of the author entrepreneurjay
      Originally Posted by GeorgR. View Post

      a) yes, you should ask them to send you a couple $100k, i am sure they will gladly do.
      b) yes, you are sitting on a gold mine. The C/D letter from the lawyer is proof. I can see the lawyers already packing bags with money, ready to send to you

      c) you are serious?

      (d) do you seriously think someone can use "microsoft" or "apple" or "xbox" or whatever TM terms...and its ok simply by putting "free" in the name or having an *.info instead of a .com?

      It doesn't matter at all. Get rid of the domain, delete it, unless you want more letters from the lawyers and then it can get very costly.

      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!
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    • Profile picture of the author MKing75
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      • Profile picture of the author sbucciarel
        Banned
        Originally Posted by MKing75 View Post

        If the domain name existed and was registered before the company was incorporated then they cannot come after you for this.
        That's not exactly true. "First Use in Commerce" can be applied and he has not used it in commerce and I assume that the other domain holder has.

        I won a trademark dispute because the trademark that I applied for was used first in commerce and the other trademark had never actually been used at all (and I was able to prove it), so they lost the trademark and I was able to trademark the name I wanted.
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  • Profile picture of the author Sleaklight
    You should post it on sitepoint in an auction, add a reserve price of half a million and show them the letter you got as proof as being valueable.

    Just kidding! I am being sarcastic. Don't do any of the above and don't ask or take legal advice online, consult a real lawyer
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  • Profile picture of the author seasoned
    Originally Posted by entrepreneurjay View Post

    I just got a letter in the mail from an attorney that says I am intruding on their domain name. Lol this was a domain I bought 2 years ago and it is not even hosted something I forgot about, and wasn't aware that I was infringing on anything.

    Anyways whats the law on this yes its similar but its definitely not the same! Should I ask them to buy this domain from me lol. Damn i was sitting on a goldmine and didnt even know it!


    What is the law on this 2 words are the same as theirs but I have free in front of it and its a .info instead of a .com

    What should I do I am not even sure who the register was? Should I just get rid of the domain? What would you suggest?
    It is *****INCREDIBLE***** some of the BAD advice you are getting. HERE is what you should do....

    1. Find out WHO is planning on suing you.
    2. Find out what TRADEMARKS, COMPANIES, and PRODUCTS they have. If any are similar to your domain name, and existed before it, YOU are likely a DEAD DUCK! If any are identical, were registered trademarks, and existed before it. you ARE a dead duck!
    3. do ****NOT**** offer to sell it for more than your REALISTIC cost. It is best not to even offer to sell it.

    You have ONE hope of keeping the name and that is IF you used it for a reasonable, viable, and UNRELATED reason PRIOR to the dispute BUT, as you said, you did NOT! You MIGHT be able to if you held a PRIOR trademark, but even THAT is questionable.

    It is possible that EVEN if they JUST got the trademark, or company, etc... that they STILL may have a case. They are probably contacting you now because they JUST found out about it.

    If you are in doubt, contact a TRADEMARK ATTORNEY! YOU signed a contract holding you to what I spelled out. It is an adhesion contract that is considered signed when you buy the domain name, and it is called the UDRP. READ IT if you doubt what I have said. Of course, TECHNICALLY, the UDRP only refers to a FEW TLDS, like .com, .net,.org, but other TLDs have similar things. And then there is trademark law!

    If you offer to sell it for $100,000, etc... , you will AUTOMATICALLY have a MAJOR point against you if they have ANY right to the name. It will be considered an act in bad faith and you will be judged to be guilty of "cybersquatting", and will LOSE the domain!

    BTW just to make it clear IANAL! These statements are absed on the assumption they have some claim to the name. NISSAN consulting had more rights than YOU do, and THEIR suit was long and hard against a relative latecomer. Amazon.com had no case, but the plaintiff was considered to have acted in bad faith, so amazon.com won. Some DO try to SCARE people into doing things they don't have to do. That you haven't used the domain DOES hurt your case in most cases though. If nissan consulting, or amazon.com hadn't yet used the domain, they BOTH would likely have LOST the case.

    Steve
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  • Profile picture of the author entrepreneurjay
    They registers their domain after I did about a year after I should be suing them? Does this make sense?

    My domain name was register
    26-Oct-2008

    Their domain was registered Aug 4, 2009

    I do not think they have 2 legs to stand on
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    • Profile picture of the author seasoned
      Originally Posted by entrepreneurjay View Post

      They registers their domain after I did about a year after I should be suing them? Does this make sense?

      My domain name was register
      26-Oct-2008

      Their domain was registered Aug 4, 2009

      I do not think they have 2 legs to stand on
      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
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    • Profile picture of the author Dan C. Rinnert
      Originally Posted by entrepreneurjay View Post

      They registers their domain after I did about a year after I should be suing them? Does this make sense?

      My domain name was register
      26-Oct-2008

      Their domain was registered Aug 4, 2009

      I do not think they have 2 legs to stand on
      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.
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    • Profile picture of the author Jagged
      Originally Posted by entrepreneurjay View Post

      They registers their domain after I did about a year after I should be suing them? Does this make sense?

      My domain name was register
      26-Oct-2008

      Their domain was registered Aug 4, 2009

      I do not think they have 2 legs to stand on
      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.
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  • Profile picture of the author GeorgR.
    He has a domain which he obviously doesn't even use. He actually forgot about it.

    And you give him the advice to consult lawyers. Unless he has BIG PLANS with that domain (which IMO are likely bound to fail)...i dont see the point why he should go through all the hassle...for a parked domain he doesn't even use.

    Also..it is not clear whether this is about some unknown company or whether he uses some big, known name in his domain.
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    • Profile picture of the author MKing75
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      • Profile picture of the author Jay Jennings
        Originally Posted by MKing75 View Post

        We don't know all of the details here. If he has received a letter from a law firm, it could be serious. Obviously he doesn't know what to do (or he wouldn't be asking people on a marketing forum), so I think consulting a lawyer is the best advice one could give.
        Yeah, that's the best answer, probably.

        Several years ago Nintendo's lawyers contacted me and ordered me to give up one of my domains that was the name of a Pokemon character. However, it was also a word that had been around longer than me or Nintendo, so my answer to them was (and I quote), "Kiss my butt, you morons."

        Maybe not the best answer to give to a law firm, but they never got back to me after that.

        The moral of the story is, sometimes a legal letter is just a scare tactic from a bully.

        Jay Jennings
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    • Profile picture of the author seasoned
      Originally Posted by GeorgR. View Post

      He has a domain which he obviously doesn't even use. He actually forgot about it.

      And you give him the advice to consult lawyers. Unless he has BIG PLANS with that domain (which IMO are likely bound to fail)...i dont see the point why he should go through all the hassle...for a parked domain he doesn't even use.

      Also..it is not clear whether this is about some unknown company or whether he uses some big, known name in his 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
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  • Profile picture of the author agc
    If it's two generic words, then they can go jump in a river.

    example: freejonespharmacy.info.

    however, if it's a brand name, then you may need to back down. example: freemicrosoftsoftware.info

    Now the real deal is this: they can harass you and cost you money.

    however, if you are slick, you can pro se them in circles for years and make them spend a whole lot of money. unless the law firm is the also the claimant.

    if you want to play, this could entertain you for years. if you don't have the stomach for it, you can just let it go.
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    • Profile picture of the author seasoned
      Originally Posted by agc View Post

      If it's two generic words, then they can go jump in a river.

      example: freejonespharmacy.info.

      however, if it's a brand name, then you may need to back down. example: freemicrosoftsoftware.info

      Now the real deal is this: they can harass you and cost you money.

      however, if you are slick, you can pro se them in circles for years and make them spend a whole lot of money. unless the law firm is the also the claimant.

      if you want to play, this could entertain you for years. if you don't have the stomach for it, you can just let it go.
      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
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  • Profile picture of the author MichaelHiles
    Dates are irrelevant. A trademark isn't like a patent. However, Dan Rinnert is correct in that if you're in a different industry, then your use of the term cannot be considered "confusingly similar". Ford Motor Company, Ford Model Agency. Reach Magazine, Reach Toothbrush.

    You don't have to retain an attorney to have a conversation with theirs on the telephone. Have a civil discussion - be prepared for anything, take good notes, and then make your decision after getting/exchanging more information.
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  • Profile picture of the author txconx
    How many times do trademark violations have to be discussed? And yeah - what a bunch of stupid advice being given here.

    1. It doesn't matter when they bought their domain name. The key is when they registered their trademark.

    2. It doesn't matter if your domain name isn't an exact match. If it is includes their trademark term, you may be in trouble.

    3. Whether it's parked or developed, doesn't matter but parked pages are more likely to get you into trouble because more than likely their ads and/or their competitors' ads are showing on the parked page - in which case they have not one, but two legs to stand on.

    It depends on how much you want to keep this domain name. If it's parked and not making much money, I suggest you verify their trademark registration and if it predates your domain name registration, give it up.

    If you had a lot invested in it or planned on investing a lot, then it MIGHT be worth hiring someone to defend your case. If you really really want to keep the name, then don't take quasi legal advice offered here, for heaven's sake - most of it has been inaccurate so far.
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  • Profile picture of the author sbucciarel
    Banned
    Originally Posted by entrepreneurjay View Post

    I just got a letter in the mail from an attorney that says I am intruding on their domain name. Lol this was a domain I bought 2 years ago and it is not even hosted something I forgot about, and wasn't aware that I was infringing on anything.

    Anyways whats the law on this yes its similar but its definitely not the same! Should I ask them to buy this domain from me lol. Damn i was sitting on a goldmine and didnt even know it!


    What is the law on this 2 words are the same as theirs but I have free in front of it and its a .info instead of a .com

    What should I do I am not even sure who the register was? Should I just get rid of the domain? What would you suggest?

    What you have in front of or at the end of or the domain extension is irrelevant. What is relevant is if you have the trademarked name in your domain. You could put the entire alphabet in front of IBM or Ebay and you're still going to be in trouble. So, you need to look up the trademark and see if it is trademarked, and if it is, I would just delete the domain. You haven't used it anyway. Do not offer to sell it to them. That could be used to prove that you registered in bad faith.

    All of the above are generalizations and shouldn't be taken for legal advice. If you can't afford a lawyer and you have violated their trademark, I would delete it.
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  • Profile picture of the author skorpion
    I just went thru this with ******.com....I looked into ****** prior cases won and realized I had no chance...so I gave it up. They sent me a small check for my troubles.
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  • Profile picture of the author agc
    rather than give it away, here's what you do:

    say they are "jones accounting". You are freeJonesAccounting.info

    get a wordpress "newspaper" theme. put up a one page wonder, with a single paragraph:

    here's all the free info you need about jones accounting: they appear to be unable to figure out that a domain without hosting cannot possibly "steal traffic" from them. Further they are not honorable enough to offer to buy an unused domain for a fair price, preferring instead to attempt to bully it away from someone through legal intimidation.

    then you scan the letter you recieved, and put it on the page.

    now you are in fact offering free information about jones accounting. Not only is it free information it is also 100% factual information to boot. You have every legal right to do so, so long as said information is true. luckily they have provided you with the letter, certified mail even, to prove it.

    If they are willing to pay a lawyer to steal your domain, I wonder how much MORE they'll pay to eventually buy it? Hmmm?
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    • Profile picture of the author skorpion
      Originally Posted by agc View Post

      rather than give it away, here's what you do:

      say they are "jones accounting". You are freeJonesAccounting.info

      get a wordpress "newspaper" theme. put up a one page wonder, with a single paragraph:

      here's all the free info you need about jones accounting: they appear to be unable to figure out that a domain without hosting cannot possibly "steal traffic" from them. Further they are not honorable enough to offer to buy an unused domain for a fair price, preferring instead to attempt to bully it away from someone through legal intimidation.

      then you scan the letter you recieved, and put it on the page.

      now you are in fact offering free information about jones accounting. Not only is it free information it is also 100% factual information to boot. You have every legal right to do so, so long as said information is true. luckily they have provided you with the letter, certified mail even, to prove it.

      If they are willing to pay a lawyer to steal your domain, I wonder how much MORE they'll pay to eventually buy it? Hmmm?
      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.
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  • Profile picture of the author agc
    By the way, it's always worth the trouble to stand up to a bully.
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  • Profile picture of the author Kella Bella
    Before I just gave it up I would explain to them when I got it and ask them if they want to buy it. Never know you could make some bank off of it. :-)
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  • Profile picture of the author GeorgR.
    If he is indeed VIOLATING A TRADEMARK he has no right whatsoever to "sell" what does not belong to him IN THE FIRST PLACE. Please people stop giving such odd advice.

    Two scenarios:

    A) He does not violate TM and they are just "bluffing", then they cant do anything and he does not "need" to sell that domain anyway. (Easily verifiable since he can just look up that term whether its a TM or not)

    B) He IS violating TM, then they will (likely) do anything to get this domain down, and they will hardly make a deal with him to pay HIM for this domain. In fact, HE can be glad if he gets away with a C/D letter only.
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    • Profile picture of the author agc
      Originally Posted by GeorgR. View Post

      If he is indeed VIOLATING A TRADEMARK he has no right whatsoever to "sell" what does not belong to him IN THE FIRST PLACE. Please people stop giving such odd advice.
      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.
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      • Profile picture of the author GeorgR.
        Originally Posted by agc View Post

        So lets see how this works. I find a really juicy domain I want thats for sale on sedo for . 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.

        No, even better.

        Let's get some domains like "officialmicrosoftstore.info" "appleipoddiscount.info"...and then write to microsoft and apple whether they want to buy those for some good money. And write about it on a forum and make a WSO out of it aka "How i made good money from domains" using a "slick new method"....
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        • Profile picture of the author agc
          Originally Posted by GeorgR. View Post

          No, even better.

          Let's get some domains like "officialmicrosoftstore.info" "appleipoddiscount.info"...and then write to microsoft and apple whether they want to buy those for some good money. And write about it on a forum and make a WSO out of it aka "How i made good money from domains" using a "slick new method"....
          "official microsoft store.info" and "apple ipod discount.info" are WORLDS apart.

          the first one is a clear violation as it indicates some sort of official endorsement.

          the second one is much less clear cut. it _could_ be construed as an advertisement of a legitimate offer to sell a legitimate product or service.

          If I have apple ipods and I am selling them at a discount, then I have every right to advertise that fact, and they have no right to stop me.

          Now, they may try to control their supply channel and make sure I don't get any more product to sell... but as long as I am selling real ipods, they really can't stop me. really.

          there is nothing in that domain name that indicates that I am in any way affiliated with apple. it only indicates that I am selling genuine apple ipods. What if I have _used_ ipod and thats how I get your "discount"?

          now I realize that the gajillionaires would prefer if nobody could sell their products at discount, they'd prefer if they were the only outlet, and they would prefer if nobody could talk about them or use their name except in ways pre-approved by them. And they love to use the lawyers to bully and intimidate the little guys to get their way.

          But just because you got a letter, doesn't mean you have to let them shoot at an open goal.
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    • Profile picture of the author MichaelHiles
      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.
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      • Profile picture of the author Kay King
        This thread is a perfect example of why Allen posted this

        http://www.warriorforum.com/main-int...vice-here.html

        You have a domain you don't use - they have a trademark registered.

        Follow some of the lay advice in this thread and have fun in court! There are exceptions to everything in the law - but you don't have a dog in the fight.

        An unused domain that isn't earning isn't worth fighting for. If your domain was registered BEFORE their trademark was registered - and you had a profitable site....it might be worth standing up for it. That would involved lawyers and money. Do you really want to go down that road for this particular domain name?

        kay
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  • Profile picture of the author agc
    Also relevant: I seem to recall that you are supposed to do a "trademark search" before registering your own mark.

    If he owned the domain before they did, then it is entirely possible that their trademark may not even be valid. the fact that you owned the name first is prima fac... prima something evidence that their search was defective, making their application defective.

    After all, anyone trademarking an internet name without checking the internet as part of their search?

    And by the way, good point. Any website has to not be an offer to sell. lol
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  • Profile picture of the author briandario
    I had a similar problem with E-Loan. I contacted them and explained I was a local broker who only used the site so my clients could monitor their loan progress.

    They had me send them a letter saying as much and promising not to promote it otherwise.

    That was all.
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  • Profile picture of the author agc
    And by the way, this is another great reason why all your domains should be owned by a corporation.

    Let em sue. What are they gonna win? An uncollectable judgment against a bankrupt corporate shell? if that's how they want to spend their money, more power to them.
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  • Profile picture of the author GeorgR.
    the second one is much less clear cut.
    absolutely not. Since "Apple" (yes, Apple!) and Ipod are registered trademarks. There is not even room for debate.
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    • Profile picture of the author Jay Jennings
      Originally Posted by GeorgR. View Post

      absolutely not. Since "Apple" (yes, Apple!) and Ipod are registered trademarks. There is not even room for debate.
      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
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  • Profile picture of the author sbucciarel
    Banned
    To the OP. You are getting some really bad advice in this thread from pretend lawyers who have nothing to lose by giving it. There's a lot of ins and outs to trademark law and only a trademark attorney can give you advice that amounts to more than just some remarks by a troll with no regard for rules or law.

    You know whether or not your domain has their trademark in it ... we don't.
    You know whether or not you want to risk a lawsuit over this domain.
    You know whether or not this domain is worth the monetary risk you are taking.

    Holders of trademarks are defending a company asset that belongs to them and they must defend it to keep it. They are not thieves or bullies any more than anyone who is defending their property is.

    You will only give them a stronger case for bad faith registration if you attempt to sell it to them. Considering you are not using the domain in any meaningful way, this fight is hardly worth fighting.
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  • Profile picture of the author kindsvater
    Well, I'm relaxing at Monterey, checking email from the lounge, and decide to check on my favorite forum.

    Briefly, as usual, lots of bad advice on this thread. But some good advice as well.

    I'm not bothering to read every post, but dates are important. Very important.

    It could be they had a trademark before they registered their domain - so their registration date is not conclusive on the date issue.

    Assuming you register a domain before someone gets a trademark, then the trademark owner sends off a stupid letter, you're almost always fine. Especially if the domain is not even hosted. There are lots of domain dispute cases on this very issue.

    Tip: But, if you register first, then someone trademarks, and then you go back to your domain and try to make use of that trademark - then you have a problem and dates no longer matter as much.

    I could be wrong here, and my mind is muddled from the clear air, rolling surf, and friendly deer, but the way I see it - if you register a domain before someone trademarks the same or similar name, and your domain is not currently hosted - I'd be thinking that if that company was dumb enough to actually pursue that frivolous trademark claim I'd be sitting on a goldmine because that company and their attorney would later be defendants in a malicious prosecution action.

    Because if you're not hosted, not even promoting the name, you're not improperly siphoning off any traffic. And certainly not for an improper purpose. No trademark infringement is in sight anywhere. Which makes your legal risk quite minimal.

    On the other hand, the upside on a potential malicious prosecution claim is tremendous.

    There are not enough facts here for me, anyone else to given specific advice for this situation, and certainly not legal advice, but I would certainly setup that attorney and company, in writing, letting them know they are out to lunch and that they had better check their insurance policies because they will be sued.

    Another tip: do not offer to sell the domain for any amount of money. But if you want to be done with it, offer to transfer it as requested, but for reimbursement of the registration fee. Or, if you really, really want to be done with this, just transfer it to them.

    And, obviously, first get some actual legal advice from an attorney not only familiar with the law, but from someone who can actually review the domain names, trademark, and correspondence.

    .
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