Oh Boy Registered Trademark What Do You Think About This?

by EA
18 replies
Hi there fellow warrior friends,

I have a .com domain and the hosting is in different country then the company which wants to sue me, I received e-mail where they are saying this is a registered trademark term but they only have this trademark in their country and .com is world wide, but they want me to stop using this domain and close the site down and to stop the promotion and if I don't do this they will sue me in front of a judge and they also are saying that I need to pay the bill if this go in front of a judge.

What's your opinion on this? I'm curious.

Thank you very much.
#boy #registered #trademark
  • Profile picture of the author aaron_nimocks
    Do you fall under these same laws as they do? The reason why torrent sites are still up because they don't have to follow the same rules.

    So are you, your hosting company, and your domain registry all located in a place where "their" law doesn't apply?

    The answer is probably not and you will most likely need to give it up.

    Never mess with Oprah either, just give her oprah-winfrey.net and it will save you a big hassle.
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  • Profile picture of the author Charlotte Jay
    Don't reply to the letter. Consult legal counsel as soon as you can. Internet and trademark law is very complicated and you would be better off talking to a lawyer than an internet forum.
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  • Profile picture of the author sbucciarel
    Banned
    You can't really get good legal advice on a forum. Trademark law is complicated. Did you check that they actually do have a trademark and are you competitors ... in the same category? Is the domain registered in the same country as the trademark?
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  • Profile picture of the author P.Sharma
    I think it is much better to get some legal help if you are serious about the domain name. Not many of us here have legal knowledge and a bad advice could end you up in trouble. Taking opinion is fine but you must remember that this is not going to be legal
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    • Profile picture of the author Crew Chief
      Originally Posted by EA View Post

      Hi there fellow warrior friends,

      I have a .com domain and the hosting is in different country then the company which wants to sue me, I received e-mail where they are saying this is a registered trademark term but they only have this trademark in their country and .com is world wide, but they want me to stop using this domain and close the site down and to stop the promotion and if I don't do this they will sue me in front of a judge and they also are saying that I need to pay the bill if this go in front of a judge.

      What's your opinion on this? I'm curious.

      Thank you very much.
      OP, first rule of thumb; never seek legal advice from an unlicensed practitioner. Their advice may sound great and reasonable but could cause you to give up rights, ownership and/or lose money that you otherwise would not have lost or given up.

      As Charlotte, Suzanne and P.Sharma stated, you need to seek qualified legal advice and here's a prime example why.

      If you searched the TESS, Trademark Electronic Search System, you will find no less that 50 Oh Boy trademarks in a myriad of variations such as the drawing below.



      Does that drawing mean this company has a exclusive legal rights to the phrase, "Oh Boy"? A thousand times NO! It means they have a trademark on "Oh Boy" WHEN it is accompanied by a fat chef with bow tie wearing a chef hat and a smile along with the word, "Brand" attached to the phrase Oh Boy. To be clear, they DO NOT own ANY exclusive right to the phrase, "Oh Boy".

      In addition, when you stop to think about it, there are a number of songs and movies entitled, "Oh Boy". Are the songs by Buddy Holly, Camron and Mariah Carey and host of other artists violating the trademark laws this company is claiming to have?

      Moreover, there are numerous restaurants throughout the USA and abroad that use the phrase Oh Boy.
      So you see, if you followed the advice of the mainstream and gave up your domain or stopped using it, you would most likely have given up a domain you had every legal right to use.

      And by the way, the letter you received, I've received a couple myself from Attorneys representing individuals who demanded that I immediately turn over domain names that I own to them. I called their bluff with one of my Attorneys and hadn't heard from them since.

      Sometimes people and companies with attempt to bluff and/or coerce domain name owners to give up their valuable domains under false legal pretense. If a person doesn't know their rights, they will be taken advantage of.

      Giles, the Crew Chief
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  • Profile picture of the author EA
    Thanks for your replies,

    I understand there is law but I find it rather stupid to sue me.. Basically because the affiliate program I am promoting is in another country and the company who wants to sue me is also in different country, they only have registered trademark in my country
    but I think they don't understand I'm just promoting affiliate offer in other country P.S. I would never mess with Oprah she's one of a heck nice lady!

    So what do you think?
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    • Profile picture of the author Alexa Smith
      Banned
      Originally Posted by EA View Post

      I understand there is law but I find it rather stupid to sue me.
      Sometimes threatening to sue someone is a prelude to taking the domain name from them and leaving them feeling it's ok because it could have been so much worse. And sometimes it's a prelude to suing them.

      You can't get legal advice (which you need) here, though. The couple of lawyer Warriors here understandably don't give individual legal advice in the forum at all, so you can get replies only from people like me and those above (and doubtless below) who are not qualified to give advice.

      Personally, I'd be going to a lawyer immediately, if not sooner.

      Good luck!
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    • Profile picture of the author Charlotte Jay
      Originally Posted by EA View Post

      Thanks for your replies,

      I understand there is law but I find it rather stupid to sue me.. Basically because the affiliate program I am promoting is in another country and the company who wants to sue me is also in different country, they only have registered trademark in my country
      but I think they don't understand I'm just promoting affiliate offer in other country P.S. I would never mess with Oprah she's one of a heck nice lady!

      So what do you think?
      Well, you may find it stupid to sue, but the fact is we are a litigious society. Do you REALLY want to get into a legal fight over a trademark? I wouldn't touch it with a 40ft pole. RUN, don't walk to your lawyer and get your legal ducks in a row.
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    • Profile picture of the author JohnMcCabe
      Originally Posted by EA View Post

      Thanks for your replies,

      I understand there is law but I find it rather stupid to sue me.. Basically because the affiliate program I am promoting is in another country and the company who wants to sue me is also in different country, they only have registered trademark in my country
      but I think they don't understand I'm just promoting affiliate offer in other country P.S. I would never mess with Oprah she's one of a heck nice lady!

      So what do you think?
      They don't (or shouldn't) care that you're just promoting something in another country. It doesn't matter.

      In order to keep their trademark rights, they have to protect them. Failure to protect trademarks can result in losing the trademark. Not necessarily to you, but to someone more threatening coming along later.

      Here's the possible scenario...

      They decide that they won't mess with you because you're just a guy in another country promoting an affiliate offer. You go merrily on your way, and they go on theirs.

      Time passes. Now a serious competitor pops up and starts using their trademark. They sue.

      The competitor says, Judge, there is no trademark to protect - they started allowing general use of the trademark term back when this guy used it for affiliate marketing.

      Judge says, you're right, they did - case dismissed.

      While consulting competent legal counsel in your own country is the best thing to do, the easiest way to make things go away is to simply take down the site and stop using the trademark.
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    • Profile picture of the author davezan
      Originally Posted by EA View Post

      Basically because the affiliate program I am promoting is in another country and the company who wants to sue me is also in different country, they only have registered trademark in my country
      but I think they don't understand I'm just promoting affiliate offer in other country
      If both you and the company in question are in the same country, then it will
      not necessarily matter where your domain is registered and website is hosted
      at. They can likely show you're within their area, and thus within reach.

      Also, various companies indicate in their legal agreements that affiliates can't
      use their trademarks in their domain registrations. While one can argue they're
      bringing sales to them, it can also be argued you're potentially "diluting" their
      mark or "siphoning" off people intending to search for the source anyway.

      There's an administrative process called the Uniform Dispute Resolution Policy
      or UDRP that a trademark holder can use if the domain holder is in a different
      country. It applies to .com domains so it won't really matter where you both
      are located.

      Oh, and be careful about others telling you to maybe fight them. It's tempting
      to do so, but remember that it's your behind on the line and not theirs.

      Good luck.
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      David

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  • Profile picture of the author arslih
    I do not think so you will get in trouble as the trade mark law is very complicated. Just giving you an example here gail.com which is very close to gmail.com

    But even big G could not do any thing to get this domain.
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    • Profile picture of the author andy_amyd
      hi,

      Its wise to take a advice from a legal person. However, If your domain is registered before than company was registered there is no way they can take your domain down.

      I have closely seen a trial like that in my place.

      Just shared..
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  • Profile picture of the author Trapped
    Simple math would be your best answer, are your profit margins high enough to cover the expenses of a case in front of a judge, lawyer costs etc? If no, shut it down and sleep tight.
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  • Profile picture of the author EA
    Thanks for your replies. Very much appreciate it.

    I'm thinking about buying a new domain name, not a trademark domain.

    I will then forward the traffic to my new domain name.

    And if they want to buy the domain name, they can do that.

    believe I have every rights to this domain name because in my country .com is not a popular domain name by any means. What do you think about this?

    P.S. Thanks everyone for their comment on this.
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    • Profile picture of the author Kay King
      Basically because the affiliate program I am promoting is in another country and the company who wants to sue me is also in different country, they only have registered trademark in my country
      I read that - and I have no idea what you are saying. You said previously the trademark wasn't in your country but above you say it is in your country.

      Take your chances, consult an attorney or change domains. A redirect may not be sufficient - and no one here can advise you on legal matters at all...let alone in 2-3 countries.

      kay
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    • Profile picture of the author Crew Chief
      OP, I think you missed it!

      Just because someone sends you a letter claiming you are using a trademark of theirs means little. YOU need to confirm or deny the veracity of their claims BUT DO NOT TAKE THEIR WORDS FOR IT!

      In many countries the initial consultation with an attorney is no charge. I have no idea about your country, but if that holds true, I'd go on at least three of these consultations just to get a feel of what you are dealing with.

      If the domain name is not worth it, throw up the white flag and acquiesce to their letter. But my question is, "Are you going to throw up the white flag every time someone sends you that type of a letter?"

      Originally Posted by EA View Post

      I will then forward the traffic to my new domain name. And if they want to buy the domain name, they can do that.
      You need to understand... if this is an actual trademark infringement, they WILL NOT be buying that domain from you, the trademark laws will force you to hand it over.

      But again, if THEY sent you a letter which did not come from an attorney, they are most likely attempting to use Fear Factor to compel you to comply with their wishes... which they may not have a legal leg to stand on.

      Originally Posted by EA View Post

      ...believe I have every rights to this domain name because in my country .com is not a popular domain name by any means. What do you think about this?
      Again, you didn't get it. You're still asking for legal advice from forum members who are not versed, licensed, educated or trained in trademark law.

      I'll say it again, just because someone sends you a letter claiming you are infringing upon their trademark, doesn't make it so. To essentially throw up the white flag without checking things out first makes no sense.

      Giles, the Crew Chief
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  • Profile picture of the author EA
    I do always follow affiliate agreements. I'm simply using a name, it's not the affiliate company who wants to sue me it is a different company in the same niche, this is not a product name. However, I have already bought a different domain name and I will redirect the traffic to the new domain and in the mean time consult with a lawyer Warriors thank you very much for your time, feedback and comment on this.
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  • Profile picture of the author EA
    Crew Chief, thank you very much for this helpful information, thanks other for comment on this. I will talk to a lawyer about this.
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