Domain Name Issues... Trademarks

Why be surprised that a company that bothered to register its trademark will take action to protect that trademark? Yes, it could cause legal issues if you infringe on someone's trademark.

You don't want to go there - there is a law about cybersquatting that might apply. By all means, check with your attorney friends.

kay

If all they are asking for is for you to transfer the domain to them then you are lucky - do it. I had an issue with a Trademarked domain a couple of years ago which cost me a few thousand dollars because the company went straight for the money and not just wanted the domain transferred.

Trust me, it isn't worth it, you have infringed their trademark you need to transfer it to them.

Also, be aware...

This could be a scam or phishing email, I've got them a few times.

Make sure that they legally have the rights. Just do the trademark research.

Don't ask me how, I could do a book about it, just google "trademark research" and use the .gov stuff.

Is Allstate Insurance a trademarked name? Pretty sure it is, yet they can not remove the site allstateinsurancesucks.org even trying to claim trademark infringement.

Don't be so quick to take the advice you get here, unless your causing confusion in the market place causing delusion of their trademark they can't really do anything except threaten you.

However, if your are diluting their trademark based on the purpose, focus, and content of your site that is another matter entirely. Diluting of a company's trademark is usually attributed to very large and powerful corporations who's trademark is know nationally or even world wide.

Infringing on a trademark does not even have to be the use of an identical image or name if what your doing is causing confusion in the market place.

Again, even what I have said here can and should not be taken as legal advice, it is however what I have learned from reading a few federal court decisions regarding trademark infringement.

Seek the advice of an attorney, or just wait them out and see if they think they have a "real" case. They probably don't and are just trying to intimidate you.

Search for the trademark here:
Trademark Search - TESS

If it is trademarked, give it to them. It isn't a domain that you own if it is a trademark. It is a trademark that THEY own and have to protect to keep. The above example, allstateinsurancesucks.org is Fair Use. It has to be a non-commercial fan site, a review, whether good or bad, or spoof/satire, etc. to fall under Fair Use.

I understand but the law is the law...
However, if this matter is affecting your ego, I would try telling that
you wont be doing a thing with the domain and let it expire.
This way they can not claim you will "causing confusion in the
market place." (Rus Sells quote)
Anyhow, first check with your lawyer before responding the letter.
Meharis

1. We have no details on the trademark in question.

2. We are not attorneys.

3. Even if you are in the right you can still be sued and lose thousands defending yourself.

The only right answer in situations like this is to get actual legal advice. No one here can defend you in court, even if their advice is correct.

Thanks for the input. Believe me I realize that the advice/input here is not legal advice. However I know it is an issue that marketers do face in our circles so I was basically just getting a quick feel from those who may have had experience in this type of situation.

I don't have any intention or desire to make this a big deal, I've owned the domain for at least a year now and have not developed it yet, so it isn't like it's one of my babies. My only concern is whether or not I'm potentially in a legal issue that I actually need to direct my attention to significantly and in a timely manner.

Getting this email with the tone that I have to transfer it with no questions asked and as a matter of fact just struck me funny. Especially since I have no actual website up so I'm not representing, promoting, or doing anything else to the name. My first impression was that it was a bluff to get the domain straight out from me. And admittedly that doesn't sit well with me lol. NowI'm over that and I'm just really curious if it is a bluff or I am legally bound to give it up.

As was touched on above, because I have no website up, I haven't made any money from the name, am not representing, promoting, or associating myself to this entity. So like Rus mentioned, i don't think it's an issue of diluting their trademark. In regards to what sbucciarel said, what I had planned for the site sounds like it would fall under fair use.

In any event, I do appreciate the input and the link to TESS. I've already talked to my attorney and she's looking into it.

Thanks to everyone for taking the time to add their input.

I received something similar from ebay yesterday about a new domain my husband had bought that included the ebay name - I had totally forgotten about the whole "tradename" issues but all the email asked was that we not put content on the site and that it just get held by us until it expired naturally - it was a dot info afterall so it was no big deal but it makes me wonder about smaller companies (assuming the one that got in touch with you was) making a fuss and insisting on having the domain transferred? Is this a common thing online?

Just wondering
Lisa

Wait for the snail mail. Any real lawyer will send out hardcopy.