Need your opinion on trademark infringement

You need an attorney - but that doesn't mean you have to fund a full court battle.

An attorney experienced in trademark law can advise you of your rights about the time period of registration. He may also be able to send a letter in legalese to the company to defend your registration date if he thinks it is your best option.

Asking for a favor (to be grandfathered) is not a good strategy without first obtaining a legal opinion. Taking legal advice from a forum is not useful, either:p

kay

A few educational issues, even though we do not know the domain names or what the websites have on them - and that information is what ultimately the outcome of these disputes will hinge on.

It also unclear when the affiliate program began. That should have necessarily given notice of the website to the trademark owner.

And we know money is an issue, which is why the OP is posting here. So I'm not providing legal advice for this particular situation but discussing issues in general.

There are two general types of lawsuits a trademark owner could bring.

One is a domain dispute. A UDRP action. There is no statute of limitations for this and it is a quick process. No damages can be awarded. Only transfer of a domain. Quite often defendants simply don't bother with a defense and they lose the case and domain. But it costs them nothing.

Second is a federal trademark infringement / cybersquatting action. There is no federal statute of limitations for this but a state law may apply to limit the time for filing. Damages can be awarded. Sometimes significant damages and attorney's fees. These cases are rarely filed due to the huge expense involved. This can be filed regardless of the outcome of a UDRP action.

In addition to the statute of limitations, there is an equitable doctrine called laches. This means if you sit around, delay, and years later decide to sue for trademark infringement, the court can dismiss the case because of the harm to the other person caused by the delay.

3+ years is borderline. If the affiliate program has been in place for years, and the resort would see where traffic is coming from, then they could have a difficult case.

Finally, as I've said in countless posts before, having a trademark does not give the owner monopoly rights preventing any use in a domain.

The purpose of a trademark is to avoid consumer confusion. The idea that any domain with a trademark in it is verboten is one of the biggest misconceptions I see.

But of course, it also depends on how risk adverse you, and in cases like this, if a merchant has an affiliate over a barrel if the affiliate wants to remain an affiliate.

Here is a UDRP case worth reading:

Decision

There:

1. The domain consisted of a trademark.
2. The domain was being used by a retailer.
3. The trademark owner filed a domain dispute get the domain.
4. The retailer did not defend.
5. The trademark owner still LOST because the retailer had a legitimate interest in referring to products it sold and the website was being used in good faith.

I have not yet seen a case dealing with an affiliate website, but this is very similar. Typically the affiliate caves to keep their affiliate relationship. (And then the merchant often cancels their relationship anyway).

Thank you so much everyone that replied - I appreciate your input.

I'm rebuilding my website under a new name and start SEO early next week.

I'm not going to contact the lawyer, since no reply was asked of me. I'm going to forward the old name to the new name on the last day of June and wait for them to contact me with particulars on how to transfer ownership - if they even do that.

Thanks again,