92 {{ upvoteCount | shortNum }}
92 {{ upvoteCount | shortNum }}

OMG a company is threatening to sue me

by coog
73 replies
Hey guy's I have an MFA site that's domain has a companies trademark in it. It's been up for a couple of years and doesn't do all that well, only about $100 in the last year.

Anyway the company contacted me via email, I did a reverse DNS on the sending mail server and it's a valid mail server. They told me I couldn't use the domain because of the registered trademark in the united states etc...

I sent an email back saying that I didn't reference their company in any way anywhere on the site and asked if it was OK to add a disclaimer that I wasn't affiliated with the company (I figured this would be a NO, but I had to try)

Here's the email I got today:

Thank you for getting back to us. Unfortunately, any mark that contains the words "******" and "******" together is copyrighted by us in the United States. I noticed your registrant detail stated the site is up for renewal next Monday. We would like to pay that, so that there is a smooth transition. I will contact Go Daddy to begin the process. I will be in touch with you again very shortly. Thank you.
Don't you think it's rather presumptuous of them to assume I will just hand the domain over to them!

Can this domain be sold to someone outside of the United States to use or do you guy's think I'm stuck and should just let them have it. I don't think it's illegal to own an inactive domain so I'm tempted to take the site down and keep the domain :-) Just because of that email...

I'm not sure of the legalities in all this...any advice from the guru's?
#company #omg #sue #threatening
  • Profile picture of the author PPC-Coach
    You're stuck.

    This is why you don't buy domains with trademarked terms in them.

    I've spoke to lawyers about this issue as I have some people who bought domains with trademarked terms I own. He said I can not only get the domain back, but I can sue for damages for any earnings the domain produced. So unless you want to lose the domain and possibly have to pay more for damages, give it up.
    Signature
    {{ DiscussionBoard.errors[4316701].message }}
  • Profile picture of the author Willie Crawford
    It's making so little that I would simply hand it over to them.

    You'll waste more than that in just resources communicating
    back and forth with them.

    Willie
    Signature

    Here's A Ready-Made High Ticket Product To Make Your Own.
    Click To Go BIG!

    {{ DiscussionBoard.errors[4316719].message }}
  • Profile picture of the author Dan C. Rinnert
    Originally Posted by coog View Post

    Don't you think it's rather presumptuous of them to assume I will just hand the domain over to them!
    Don't you think it was rather presumptuous of yourself to think you could use their trademark to try to earn money for yourself?

    As the trademark holder, they have the rights to earn an income from the use of their mark. You do not.

    Now, if you are in a completely different niche, then you may have a leg to stand on. In that case, contact a lawyer.

    But, something in the eMail does bother me: "Unfortunately, any mark that contains the words "******" and "******" together is copyrighted by us in the United States." That would be a trademark issue, not copyright. So, something could be fishy there. If you are in a different niche, it could be someone trying to scare you off from using their trademark without knowing what they are doing. Or it could have been a typo.

    Your best bet really is to talk to an attorney.

    But, if you're not making much money off it anyway, is it really worth fighting for?
    Signature

    Dan's content is irregularly read by handfuls of people. Join the elite few by reading his blog: dcrBlogs.com, following him on Twitter: dcrTweets.com or reading his fiction: dcrWrites.com but NOT by Clicking Here!

    Dan also writes content for hire, but you can't afford him anyway.
    {{ DiscussionBoard.errors[4316742].message }}
    • Profile picture of the author coog
      Originally Posted by Dan C. Rinnert View Post

      Don't you think it was rather presumptuous of yourself to think you could use their trademark to try to earn money for yourself?
      :-) got me there!
      Signature
      {{ DiscussionBoard.errors[4316824].message }}
  • Profile picture of the author Troy_Phillips
    It's a $100 a year site .. thank them for using their resources to get it switched over
    Signature

    {{ DiscussionBoard.errors[4316763].message }}
  • Profile picture of the author coog
    Agreed, this site is from back when I first started IM'ing. I'm older and wiser now about picking domain names but this one has just been sitting there chugging along so I never got rid of it...
    Signature
    {{ DiscussionBoard.errors[4316764].message }}
  • Profile picture of the author Blaine Moore
    For less than $10/month, I wouldn't deal with the hassle of it all, especially if you are infringing on their trademark.
    {{ DiscussionBoard.errors[4316773].message }}
  • Profile picture of the author Alexa Smith
    Banned
    Originally Posted by coog View Post

    Don't you think it's rather presumptuous of them to assume I will just hand the domain over to them!
    No, I don't.

    I think you're very lucky that's all they want. They're legally entitled to that and a whole lot more, too, if they genuinely own the trademark (you'll check that?).

    Owning the trademark confers obligations on them as well as rights. They're obliged to defend it, otherwise their failure to do so can be held against them when they try to renew it.

    Their other available remedies include claiming from you all money you've ever made from the site, and suing you for punitive damages.

    If you've used for financial gain a domain-name including someone else's trademark, you have a very good result, here. Ask yourself how you'd feel if you'd gone to all the trouble and expense of registering a trademark and they'd been breaching your civil-law rights by using it to make money.

    I'm not a lawyer but willing to play one on TV if the fee's right: preferably not a prosecutor, though, or one of those boring types who deal with trusts and wills ...
    {{ DiscussionBoard.errors[4316783].message }}
  • Profile picture of the author Dennis Gaskill
    If you want legal advice you'd be better off contacting a lawyer.

    Did you check with the trademark office to see if they really have the claim they purport?
    Signature

    Just when you think you've got it all figured out, someone changes the rules.

    {{ DiscussionBoard.errors[4316817].message }}
    • Profile picture of the author coog
      Thanks Dennis, what's funny is that the guy who contacted me was their affiliate manager. He's well documented :-)

      I guess I should count my blessings that they didn't sue and hand it over to them..

      Thanks guys!
      Signature
      {{ DiscussionBoard.errors[4316874].message }}
    • Profile picture of the author Tim Franklin
      Originally Posted by Dennis Gaskill View Post

      If you want legal advice you'd be better off contacting a lawyer.

      Did you check with the trademark office to see if they really have the claim they purport?
      Thank you sir the first post that makes any sense here, since the OP did not mention the actual domain name in question most everyone here is speculating, that he is even in violation.

      See a lawyer, get advice, there is a lot of well meaning but ultimately very bad advice above this post.

      We just do not have enough information to make a judgement call on this issue, for example say you have the word, wine, and the word cellar in a domain name and some one has a business name called the wine cellar .com does that mean that they have ready access to your domain name?

      Of course not, but we dont know the circumstances here, so it is really impossible to make a call one way or the other,

      One thing that bothers me on this, is that I have never seen anyone willing to pay the domain name fees in a dispute, never, that makes me wonder just what is going on, If it is worth it to you check it out, even a phone call should do the trick or even some good detective work online could yield some information, it sounds like a scam to me, but again get real advice from a real attorney, (disclaimer, this is not legal advice)

      only you know for sure, if your domain name, is confusingly the same or similar, to , a trade marked name, so that someone would not know the difference then you know what to do, but if there are two unrelated words in the domain, and it is not confusing, then get real advice from a legal professional, it is really just that simple you know what to do, and since your the only one that can logically make the decision here take everything you see here with a grain of salt including this message.

      Again the thing that I don't get is why would anyone offer to pay for a domain name transfer, when they can get it free, as long as they are actually entitled to it that is.

      If you are not infringing on their trade mark, get advice, if you are you know that you are because you made that decision when you purchased it, so again only you know what to do here, everything else here is just window dressing.
      Signature
      Bitcoin | Crypto | Blockchain Secrets |
      {{ DiscussionBoard.errors[4318203].message }}
      • Profile picture of the author coog
        Originally Posted by Tim Franklin View Post

        Thank you sir the first post that makes any sense here, since the OP did not mention the actual domain name in question most everyone here is speculating, that he is even in violation.

        See a lawyer, get advice, there is a lot of well meaning but ultimately very bad advice above this post.

        We just do not have enough information to make a judgement call on this issue, for example say you have the word, wine, and the word cellar in a domain name and some one has a business name called the wine cellar .com does that mean that they have ready access to your domain name?

        Of course not, but we dont know the circumstances here, so it is really impossible to make a call one way or the other,

        One thing that bothers me on this, is that I have never seen anyone willing to pay the domain name fees in a dispute, never, that makes me wonder just what is going on, If it is worth it to you check it out, even a phone call should do the trick or even some good detective work online could yield some information, it sounds like a scam to me, but again get real advice from a real attorney, (disclaimer, this is not legal advice)

        only you know for sure, if your domain name, is confusingly the same or similar, to , a trade marked name, so that someone would not know the difference then you know what to do, but if there are two unrelated words in the domain, and it is not confusing, then get real advice from a legal professional, it is really just that simple you know what to do, and since your the only one that can logically make the decision here take everything you see here with a grain of salt including this message.

        Again the thing that I don't get is why would anyone offer to pay for a domain name transfer, when they can get it free, as long as they are actually entitled to it that is.

        If you are not infringing on their trade mark, get advice, if you are you know that you are because you made that decision when you purchased it, so again only you know what to do here, everything else here is just window dressing.
        Hi Tim, thanks for the wise words, I've actually already done the research and mentioned it in my previous posts. I even have a post that gives the domain name (check post #54) :-) if you read between the lines.

        I've called them, checked the mail server IP etc...

        Update - they sent me a nice reply thanking me for being responsive and saying they would give me their godaddy info on monday and I told them I would push the domain. I would call this case closed...
        Signature
        {{ DiscussionBoard.errors[4318343].message }}
  • Profile picture of the author Gene Pimentel
    HOLD ON here. First of all, be aware that there are a LOT of scammers who send letters like this every day, to steal good domains. This probably isn't the case here, but be aware.

    None of what I'm about to say is legal advice. Just my personal experience.

    There is no such thing as "copyrighting" a domain name. Can't be done. They were probably referring to a trademark when they said "Unfortunately, any mark that contains the words "******" and "******" together is copyrighted by us in the United States". This indicates to me they they are more reacting, rather than asserting their legal right to a trademark.

    A trademark very often may be used if the product or service you're promoting is in an entirely different industry. A trademark only applies to the industry it is commonly associated with.

    As Willie pointed out, is the battle worth it? You may be 100% in the right, but is it worth the time and expense to defend yourself over this?

    If it is important to you, do a lot of research on the trademark in question. Get legal advice from a qualified attorney.
    {{ DiscussionBoard.errors[4316940].message }}
  • Profile picture of the author coog
    Your right Chris letting it go... btw sending you a PM about a discussion we had last week.
    Signature
    {{ DiscussionBoard.errors[4317049].message }}
    • Profile picture of the author tpw
      Originally Posted by cosmokid View Post

      The notice you received seems fishy to me, but perhaps if this notice was sent out by their affiliate manager and not the actual trademark owner, his use of "this site is COPYRIGHTED by us" is more understandable. No trademark owner would refer to their trademark this way.

      I suspect the person who contacted you may be trying to pretend to be the trademark holder to snag a domain they want.

      There are a few things wrong with this contact:
      • Trademark holders do not refer to their trademark as a copyright;
      • Copyright does not protect trade names;
      • When I first started online, I ACCIDENTALLY stepped on someone's trademark. The company did not want to transfer the domain to them. They simply wanted me to stop using it;
      • Trademark holders do not allow Affiliate Managers to communicate on behalf of a trademark protection case;
      • Where is the communication from the attorneys?

      This whole thing is fishy...

      While the trademark may be valid, this looks like someone grabbing info on the web to substantiate a claim that does not belong to them.

      If you use the resources in this thread to verify a valid trademark holder, I would simply let the domain expire, and let the scammer sweat whether he will get it or not.


      p.s. BlueFartcat: Not to nitpick, but the very thing you were saying people were not answering is the very thing I read in at least 2 posts prior to yours...
      Signature
      Bill Platt, Oklahoma USA, PlattPublishing.com
      Publish Coloring Books for Profit (WSOTD 7-30-2015)
      {{ DiscussionBoard.errors[4317282].message }}
      • Profile picture of the author azmanar
        Originally Posted by tpw View Post


        This whole thing is fishy...
        My partner and I have been receiving such messages from Hong Kong, Shanghai and Taiwan companies.

        I told them to go to hell.

        My partner however, did communicate with them and they responded very "professionally".

        I told him to ignore the messages because our domain names are based on our registered LLC, years ago. Thus, we have something solid to make a stand for.

        My offline clients have also been receiving similar messages.
        Signature
        === >>> Tomorrow Should Be Better Than Today
        {{ DiscussionBoard.errors[4317415].message }}
  • Profile picture of the author Black Hat Cat
    Banned
    It's amazing how no one here actually read his post. From the company's response to the OP:

    "Thank you for getting back to us. Unfortunately, any mark that contains the words "******" and "******" together is copyrighted by us in the United States."

    Copyright and trademark aren't the same thing. Clearly this wasn't from any legal entity. You can't copyright a word, or two words together. If they haven't trademarked those words, there is most likely nothing they can do.
    {{ DiscussionBoard.errors[4317123].message }}
    • Profile picture of the author Dennis Gaskill
      Originally Posted by Black Hat Cat View Post

      It's amazing how no one here actually read his post. From the company's response to the OP:

      "Thank you for getting back to us. Unfortunately, any mark that contains the words "******" and "******" together is copyrighted by us in the United States."

      Copyright and trademark aren't the same thing. Clearly this wasn't from any legal entity. You can't copyright a word, or two words together. If they haven't trademarked those words, there is most likely nothing they can do.
      Your assertion that no one actually read his post is kind of presumptious, don't you think? The point about trademark vs. copyright was mentioned in two different posts before yours. Besides, because someone didn't pick up on the point doesn't mean they didn't read the post. Many probably don't know the difference.
      Signature

      Just when you think you've got it all figured out, someone changes the rules.

      {{ DiscussionBoard.errors[4317265].message }}
  • Profile picture of the author Bill Farnham
    Thank you for getting back to us. Unfortunately, any mark that contains the words "******" and "******" together is copyrighted by us in the United States. I noticed your registrant detail stated the site is up for renewal next Monday. We would like to pay that, so that there is a smooth transition. I will contact Go Daddy to begin the process. I will be in touch with you again very shortly. Thank you.
    If this correspondence came from the legitmate source looking to protect their Trademark they must have handed the assignment of this email off to an intern.

    Because the wording makes it smell like three day old fish.

    Just be sure to keep copies of all communications regarding this for future records. This isn't legal advice, but anybody that would write the email you just got is probably in no position of authority. Be very aware of who you are being asked to transfer this domain name to. If the new registration is not in the name of the Trademark holder there's a good chance somebody from inside that company just played you.

    ~Bill
    Signature
    {{ DiscussionBoard.errors[4317139].message }}
  • Profile picture of the author Ben Gordon
    Give them the domain. Since you aren't making a lot of money from it and they do have the trademark registered, I wouldn't suggest arguing over it.
    {{ DiscussionBoard.errors[4317151].message }}
    • Profile picture of the author jasondinner
      You're lucky all they want you to do is hand them over.

      They're doing you a favor.

      If you don't they'll take you through this utter waste of time called
      The National Arbitration Forum in which a "panel" will rule in their
      favor regardless which will force you to give them the domains anyway.

      Just happened to me and the domains were parked and a few months
      away from being expired.

      Was a total waste of time and the lawyers are total dicks who assume
      you were trying to get over on their client.

      Just give them the domains.

      - Jason
      Signature

      "Human thoughts have the tendency to transform themselves into their physical equivalent." Earl Nightingale

      Super Affiliates Hang Out Here

      {{ DiscussionBoard.errors[4317417].message }}
      • Profile picture of the author tpw
        Originally Posted by jasondinner View Post

        You're lucky all they want you to do is hand them over.

        They're doing you a favor.

        If you don't they'll take you through this utter waste of time called
        The National Arbitration Forum in which a "panel" will rule in their
        favor regardless which will force you to give them the domains anyway.

        Just happened to me and the domains were parked and a few months
        away from being expired.

        Was a total waste of time and the lawyers are total dicks who assume
        you were trying to get over on their client.

        Just give them the domains.

        - Jason

        Don't give anything up without first verifying the existence of an actual trademark.

        We can assume someone will have a trademark... That does not mean that they do.

        And if it is a valid claim, get out.

        If it is a non-valid claim, require proof from the person contacting you as to their identity. Ask for a phone number.

        I have seen companies try to enforce trademarks they do not own, just to eliminate competitors.

        Few things are ALWAYS as they seem.


        p.s. When I got into Trademark trouble, they sent me a certified letter from their attorneys.


        p.p.s. As Ronald Reagan was fond of telling Mikhail Gorbachev, "Trust, but verify."
        Signature
        Bill Platt, Oklahoma USA, PlattPublishing.com
        Publish Coloring Books for Profit (WSOTD 7-30-2015)
        {{ DiscussionBoard.errors[4317463].message }}
        • Profile picture of the author jasondinner
          Why even bother going through all of this trouble for a site that barely makes $100 in a year?

          You already wasted at least 2 hours debating on this very forum

          If they really are serious and they do have legal grounds, you're just asking them
          to suck more of your time to deal with the crap that is sure to follow if you come
          across as standoff-ish.

          Pick your battles. Again - your site made $100 in the last year. Build another one.

          - Jason

          Originally Posted by tpw View Post

          Don't give anything up without first verifying the existence of an actual trademark.

          We can assume someone will have a trademark... That does not mean that they do.

          And if it is a valid claim, get out.

          If it is a non-valid claim, require proof from the person contacting you as to their identity. Ask for a phone number.

          I have seen companies try to enforce trademarks they do not own, just to eliminate competitors.

          Few things are ALWAYS as they seem.


          p.s. When I got into Trademark trouble, they sent me a certified letter from their attorneys.


          p.p.s. As Ronald Reagan was fond of telling Mikhail Gorbachev, "Trust, but verify."
          Signature

          "Human thoughts have the tendency to transform themselves into their physical equivalent." Earl Nightingale

          Super Affiliates Hang Out Here

          {{ DiscussionBoard.errors[4317890].message }}
          • Profile picture of the author tpw
            Originally Posted by jasondinner View Post

            Why even bother going through all of this trouble for a site that barely makes $100 in a year?

            You already wasted at least 2 hours debating on this very forum

            If they really are serious and they do have legal grounds, you're just asking them
            to suck more of your time to deal with the crap that is sure to follow if you come
            across as standoff-ish.

            Pick your battles. Again - your site made $100 in the last year. Build another one.

            - Jason

            This is true.

            But the same things happen to site owners who hold domains that make 5-figures a year.

            Think BIG picture.

            My advice has been presented for those who will find the thread 5 years from now, as much as it is for the original poster of today's thread.

            I would not contest a request for a $10 per month domain, but I would make certain not to have the wool pulled over my eyes on a domain that earns hundreds or thousands of dollars per month.

            There are a lot of scams running, where good decent people are getting screwed, simply because they don't know how to verify, and they take the easy route, instead of the one that makes the most sense: Verify before you act.
            Signature
            Bill Platt, Oklahoma USA, PlattPublishing.com
            Publish Coloring Books for Profit (WSOTD 7-30-2015)
            {{ DiscussionBoard.errors[4318113].message }}
          • Profile picture of the author Troy_Phillips
            Jason,

            Actually the site , after hosting, probably only made 50 bucks in a year. I am almost positive the op could have made $50 in the time debated here.

            I know it can be hard to just go on your way at times but ..... yeah .. you are on spot with this one.



            Originally Posted by jasondinner View Post

            Why even bother going through all of this trouble for a site that barely makes $100 in a year?

            You already wasted at least 2 hours debating on this very forum

            If they really are serious and they do have legal grounds, you're just asking them
            to suck more of your time to deal with the crap that is sure to follow if you come
            across as standoff-ish.

            Pick your battles. Again - your site made $100 in the last year. Build another one.

            - Jason
            Signature

            {{ DiscussionBoard.errors[4318657].message }}
  • Profile picture of the author JamesGw
    First, I recommend contacting a lawyer.

    Other than that, I think if you're not using their website for services detailed under their trademark, you'd probably be able to defend your use of it. That said, it's probably not worth it at all.

    I'm not a lawyer though, so I'm not 100% ont hat.
    Signature
    Brazilian Jiu-Jitsu Techniques | Precision SEO
    {{ DiscussionBoard.errors[4317168].message }}
  • Profile picture of the author DPM70
    Now might be a good time to test all those theories about sandboxing, de-indexing and blacklisting.
    Signature
    I don't build in order to have clients. I have clients in order to build. - Ayn Rand
    {{ DiscussionBoard.errors[4317209].message }}
  • Profile picture of the author idreesfarooq
    if they offer you some good cash then just sale your site and hook up with new one.
    Signature

    Check out for more strategies on my website www.marketingwithidrees.com

    {{ DiscussionBoard.errors[4317228].message }}
  • Profile picture of the author Sfrew
    It may irritate you that they presume you will turn it over, but let's be pragmatic...even if you were making money on the site...really GOOD money...is it worth 100's of thousands of dollars and ten years of your life to fight about whether there is a trade mark infringement? Turn it over. Get out.
    {{ DiscussionBoard.errors[4317250].message }}
  • Profile picture of the author Jake Gray
    This is definitely the "easy way out".

    The company is asking for the domain, I would simply do it.

    Wouldn't risk getting sued. That's just stupid.
    {{ DiscussionBoard.errors[4317429].message }}
  • Profile picture of the author Rich Struck
    I had a guy once try to get me for $20,000 to use a certain invented word. I did a little research and it turned out that the trademark had been allowed to expire and in any event it was last owned by a dissolved CA corp. Essentially a non-registered trademark was "owned" by a non-existent entity that was incapable of owning anything or doing anything including suing me. I told him to bite me and that was the end of it. Your mileage may vary but I wouldn't roll over quite so easy.
    Signature

    {{ DiscussionBoard.errors[4317507].message }}
    • Profile picture of the author Izesta
      A few years ago, I received a letter via Fedex from the attorney for the company. It was VERY official. They requested I cease and desist marketing under that domain name.

      I then did my research, found I was wrong, signed their statement, and was very happy it didn't end up ugly.

      Never heard from them again.
      {{ DiscussionBoard.errors[4317599].message }}
  • Profile picture of the author Michael William
    I would just flat out offer to sell it and tell them if they don't buy it you have another foreign buyer.
    Signature
    Mobile Commando Membership: - Make Your Fortune Selling Mobile Websites, Desktop Websites, and Google Places Optimization
    {{ DiscussionBoard.errors[4317523].message }}
    • Profile picture of the author tpw
      Originally Posted by Michael William View Post

      I would just flat out offer to sell it and tell them if they don't buy it you have another foreign buyer.

      If they own a valid trademark, offering to sell them their own property is bound to trigger a harsh response from a valid trademark holder.

      No steps should be taken without first validating the status of a trademark and who you are dealing with in these proceedings.
      Signature
      Bill Platt, Oklahoma USA, PlattPublishing.com
      Publish Coloring Books for Profit (WSOTD 7-30-2015)
      {{ DiscussionBoard.errors[4317544].message }}
      • Profile picture of the author Bill Farnham
        Originally Posted by tpw View Post

        If they own a valid trademark, offering to sell them their own property is bound to trigger a harsh response from a valid trademark holder.
        True, especially if you change the word 'bound' to 'likey'.

        No steps should be taken without first validating the status of a trademark and who you are dealing with in these proceedings.
        Finding out who you are dealing with is just as important as confirming the validity of the Trademark. Most people assume you can just do a TESS search and soley rely on the results for a basis of a Trademark's validity. If the TESS search shows a valid Federally Registed Trademark then it gets a little more black and white. But if no FRT shows up you still are not finished with your due diligence on the matter. At that point you still can be solidly in the grey.

        And handing over a domain name with a Trademark in it to someone you haven't verified as being the rightful owner of said Trademark isn't a good idea unless you just want to cut and run. And even then you will still remain in the chain of title and if the new owner who turns out not to be the rightful owner of the Trademark misuses the Trademark you still could have legal issues.

        So true on both counts.

        ~Bill

        (The above is not legal advice)
        Signature
        {{ DiscussionBoard.errors[4317662].message }}
      • Profile picture of the author Michael William
        Originally Posted by tpw View Post

        If they own a valid trademark, offering to sell them their own property is bound to trigger a harsh response from a valid trademark holder.

        No steps should be taken without first validating the status of a trademark and who you are dealing with in these proceedings.
        I'm just suggesting a nice little bluff to see if they have deep pockets. Besides it has yet to be determined whose "property" it really is. Stories like this always piss me off. The big companies trying to bully anyone with a domain that resembles their precious trademark.
        Signature
        Mobile Commando Membership: - Make Your Fortune Selling Mobile Websites, Desktop Websites, and Google Places Optimization
        {{ DiscussionBoard.errors[4317709].message }}
  • Profile picture of the author Mreese601@gmail.com
    Personally I would have to see some paperwork in the mail that has been notarized and that I can see that it was filed in the court system. From the email that was sent, I wouldn't trust that! This is just my opinion.
    Signature
    Fastest Way To Making Sales On The Internet
    {{ DiscussionBoard.errors[4317579].message }}
  • Profile picture of the author Robert Bridgen
    Hi I was in the same boat a couple of years ago and you cannot use that name in the USA The trade mark rules indicate they are the only company that can use the trade mark. So if you have a trade mard for the USA only you can use that name outside the USA. If you are in the USA / domain name registered in the usa or any thing to do with it in the USA You are not able to use it. But if the domain name is out side the use and hosting and you only advertise outside the usa and no one can get to it from the usa then You have a case. But if it is a big company they will make sure it costs you a lot of money.

    A family member of mine had a franchise hat sold paint and he got very good at it selling on the internet. The company closed down the franchises then wanted him to hand over the domain name with the website as he was the #1 seller over the internet. He said they can have the website but as the domain name had nothing related to any trade marks he won his case in court and the expenses. Now he said they can purchase the domain name for a stupid price. He will hold onto it forever so they cannot use it.

    Robert Bridgeb
    Signature
    http://robertbridgen.com/reviews
    {{ DiscussionBoard.errors[4317606].message }}
  • Profile picture of the author LErinator
    Originally Posted by coog View Post



    Don't you think it's rather presumptuous of them to assume I will just hand the domain over to them!
    This is just a quick point, but to echo what a lot of people are saying, definitely contact a lawyer first thing. From there you can decide if it is even worth the fight as the company in contact probably has a retainer etc... Therefor they do assume you will just hand it over because it will cost you mad amounts of money, even if you win a suit or suits.
    {{ DiscussionBoard.errors[4317638].message }}
  • Profile picture of the author coog
    I called the company and left a message with the guy and he responded back in email that he got the message, unfortunatley he is the real deal so I'm not going to fight it. Like Chris say's it's not cost effective to fight it.

    Update - The've contacted godaddy and asked godaddy to hand the domain over to them for trademark infringement. Godaddy said no :-) seems like spinning wheels to me, I already offered up the domain to them...
    Signature
    {{ DiscussionBoard.errors[4317724].message }}
  • Profile picture of the author Ken28
    I received the same thing just yesterday for one of my sites.

    Too bad for them I just happen to know a thing or two about law

    Tell them to have their lawyer send you the paperwork. Contact me 'IF' you ever receive the documents from their lawyer.

    As echoed earlier - sounds as though you have the domain they're trying to snag. I definitely wouldn't roll over and hand it over, whether you're making money from it or not. But that's just me. I LOVE a good legal argument!

    *EDIT* I shouldn't say I received the same thing just yesterday. I haven't infringed any trademarks at all. What I got was someone trying to take my domain because they want it.
    {{ DiscussionBoard.errors[4317744].message }}
  • Profile picture of the author coog
    I have no idea why they would even want it. It's not even a .com it's a .org. Crazy IMHO
    Signature
    {{ DiscussionBoard.errors[4317809].message }}
    • Profile picture of the author Bill Farnham
      Originally Posted by coog View Post

      I have no idea why they would even want it. It's not even a .com it's a .org. Crazy IMHO
      Just out of curiousity, and you don't need to put the answers out in public, do they:

      A) have a website

      B) have a public whois profile for that domain

      C) feel like giving you the new whois information to allow you to tranfer the domain through GoDadday

      D) have a Registered Trademark you have confirmed

      and

      E) does the person/company you are dealing with generally match the above information.

      Because if the answers to the above questions are YES, then you'll sleep better knowing you are not being taken advantage of and you can move on without any ghost baggage or second thoughts about surrendering the domain.

      ~Bill
      Signature
      {{ DiscussionBoard.errors[4317918].message }}
      • Profile picture of the author capitalalchemy
        They are offering to assist you in the transition and were pretty warm in the email. I wouldn't take it any further than that because you can't ask for anything more than this. If I were you I would just be happy that it wasn't any worse and learn from the experience. You are getting a get out of jail free card with this because they could really make it more serious for you if they wanted.
        {{ DiscussionBoard.errors[4317938].message }}
        • Profile picture of the author WholesalerJoe
          Just close the site
          dont answer the owner
          and I bet ya they dont sue ya
          Signature
          We Wholesale Jewelry Clothes and Many Other Closeouts NEW DAILY DEALS!
          {{ DiscussionBoard.errors[4318795].message }}
  • Profile picture of the author Jonathan Mizel
    If the term really is Trademarked (which you can find out by searching the TESS database), then it doesn't matter who they are. You don't want it in your portfolio since it's a liability not an asset. It's not worth fighting over.

    I've had a number of TM domains, mostly ones I didn't know were TMs (The term "Onesies" is owned by Gerber in fact). When pressed, I'll give them to pretty much anyone since they aren't worth anything, at least not to me.

    Find out if it really is trademarked (Trademark Search - TESS) and if it is, and you can verify the owner, be thankful they just want the name.

    Jonathan
    Signature

    Your First Paid Traffic Campaign
    www.MarketingMonopoly.com

    {{ DiscussionBoard.errors[4317836].message }}
  • Profile picture of the author Gene Pimentel
    It's also important to realize that a "Trademark" does not have to be officially registered to be considered a legal Trademark. Searching a Trademark database is useless when it comes to issues like these.
    {{ DiscussionBoard.errors[4317869].message }}
  • Profile picture of the author WebPen
    Dump it my friend- and just don't do it again.

    I made some money with trademarked names before, but once I realized it was bad juju I IMMEDIATELY deleted everything on them.

    $100 a year isn't worth getting sued for hundreds of 1000's
    Signature
    {{ DiscussionBoard.errors[4317930].message }}
  • Profile picture of the author Gene Pimentel
    A very important point many are missing here is this. The amount of money being produced by a website has absolutely nothing to do with the value of the domain name. In this case, based on the OP's comments, the domain name doesn't have much value. But it is foolish to assume the only value being sacrificed is the revenue being produced by the website. I have hundreds of domain names in my inventory that are worth many thousands each, yet they are not producing any revenue at all.
    {{ DiscussionBoard.errors[4317940].message }}
    • Profile picture of the author Bill Farnham
      Originally Posted by Gene Pimentel View Post

      A very important point many are missing here is this. The amount of money being produced by a website has absolutely nothing to do with the value of the domain name.
      Something else many appear to be missing is a Trademark is limited to a specific use or catagory where it holds legal standing.

      If the OP's usage is not in anyway connected to the area where the Trademark holds legal standing then he will be handing it over for the sake of simply moving on.

      That's expedient, but only the OP will be sure if that's the right move for them.

      ~Bill
      Signature
      {{ DiscussionBoard.errors[4318000].message }}
  • Profile picture of the author entrprnr
    In all honesty transferring a domain is a snap, and any assistance they can provide is picking their nose while you set it up. It's a hollow gesture imo.

    If I were you, I would reply that they are free to make an offer to buy it from me and I would name a reasonable price. I would tell them that until I receive a certified letter from their trademark attorney stating their position and the options available to me I am keeping the domain.

    I wouldn't trust anything else (and even then...).
    Signature
    Often the difference between a successful person and a failure is not one has better abilities or ideas, but the courage that one has to bet on one’s ideas, to take a calculated risk – and to act.
    -Andre Malraux
    {{ DiscussionBoard.errors[4318004].message }}
  • Profile picture of the author coog
    I think the value this particular domain is hard to determine. Let's use an ehhh hum wink wink example. Say you put the words "speedy" and "cash" together then added what they do, "advance" put all that together with a .org and you have a domain name that is of value but due to the first two words being put together "a trademark" the domain suddenly becomes of value only to the company owning the trademark.

    Update - they actually asked me for my godaddy PIN so they could get godaddy to do the transfer. Not doing that of course!
    Signature
    {{ DiscussionBoard.errors[4318013].message }}
    • Profile picture of the author tpw
      Originally Posted by coog View Post

      Update - they actually asked me for my godaddy PIN so they could get godaddy to do the transfer. Not doing that of course!

      More fishy!! Definitely do not do this!!!

      Not so much you, because you said you wouldn't, but for others who may face this situation in the future.

      You might just find that you will own NO domains when the day is done.
      Signature
      Bill Platt, Oklahoma USA, PlattPublishing.com
      Publish Coloring Books for Profit (WSOTD 7-30-2015)
      {{ DiscussionBoard.errors[4318146].message }}
    • Profile picture of the author Ken28
      Originally Posted by coog View Post


      Update - they actually asked me for my godaddy PIN so they could get godaddy to do the transfer. Not doing that of course!
      I'd say sure... right after you give me your bank account info and PIN and I 'verify' that first

      Seriously, it sounds as though someone is pulling one on you. Ask for the legal documents to be mailed to you and you'll look it over with your lawyer.

      Legitimate companies like this don't do 'business' over the web or ask for your PIN number! LOL
      {{ DiscussionBoard.errors[4318220].message }}
      • Profile picture of the author Rus Sells
        Godaddy must have a good reason to deny the request to transfer the domain.

        I wouldn't budge just on principle at this point esp after they asked for you godaddy pin number. No legit entity is going to take that route, and as another poster said, the usage of your domain has to actually infringed upon their trademark and cause delusion/confusion to the consumer.

        If they use the trademark for baby clothes and you use it for Skydiving there is no infringement, no delusion of the trademark nor any consumer confusion.
        Signature
        {{ DiscussionBoard.errors[4318256].message }}
        • Profile picture of the author tpw
          Originally Posted by Tim Franklin View Post

          Again the thing that I don't get is why would anyone offer to pay for a domain name transfer, when they can get it free, as long as they are actually entitled to it that is.

          If you are not infringing on their trade mark, get advice, if you are you know that you are because you made that decision when you purchased it, so again only you know what to do here, everything else here is just window dressing.

          Agree.

          For the sake of transparency, I am not an attorney, nor do I pretend to be one on the Internet.

          The bulk of my comments regard Due Diligence -- Buyer Beware... Or in this case, Potential Victim Beware.


          Originally Posted by Rus Sells View Post

          I wouldn't budge just on principle at this point esp after they asked for you godaddy pin number. No legit entity is going to take that route

          Agree.
          Signature
          Bill Platt, Oklahoma USA, PlattPublishing.com
          Publish Coloring Books for Profit (WSOTD 7-30-2015)
          {{ DiscussionBoard.errors[4318305].message }}
  • Profile picture of the author seokungfuguy
    I would just hand over the domain and me happy it didn't cost you anything. It could have easley been 1000$
    Signature
    what is in tea
    stop german shepherd barking'long haired black german shepherdgerman shepherd
    {{ DiscussionBoard.errors[4318023].message }}
  • Profile picture of the author Jeff84Buchanan
    For $10 a month it's not worth the headache if it is a real trademark infringement.
    {{ DiscussionBoard.errors[4318085].message }}
  • Profile picture of the author Tim Franklin
    Yes, sounds like you got it right, I had to do that with a few domains I had too, so dont feel alone.)
    Signature
    Bitcoin | Crypto | Blockchain Secrets |
    {{ DiscussionBoard.errors[4318375].message }}
  • Profile picture of the author Ken28
    Why all the drama if your intentions were to hand over the domain from the beginning?

    Example, your title says "OMG a company is threatening to sue me".

    When did they actually threaten that? You posted their e-mail to you and nowhere does it state they are suing you. They asked you to hand over the domain, they did not say you were going to court. Please explain.

    In many posts you relayed messages they sent to you and appeared confused, yet fully aware that you were going to hand the domain over. If those were your intentions from the beginning (which you can tell clearly) then why keep posting here?

    A little too much drama was drummed up for such a quick exit. Something isn't adding up.
    {{ DiscussionBoard.errors[4318380].message }}
    • Profile picture of the author coog
      Originally Posted by Ken28 View Post

      Why all the drama if your intentions were to hand over the domain from the beginning?

      Example, your title says "OMG a company is threatening to sue me".

      When did they actually threaten that? You posted their e-mail to you and nowhere does it state they are suing you. They asked you to hand over the domain, they did not say you were going to court. Please explain.

      In many posts you relayed messages they sent to you and appeared confused, yet fully aware that you were going to hand the domain over. If those were your intentions from the beginning (which you can tell clearly) then why keep posting here?

      A little too much drama was drummed up for such a quick exit. Something isn't adding up.
      Hi Ken sorry you feel that way, here's the first email I got on the contact form from my company website:

      Please contact me immediately regarding the website ***********.org. The term ***** **** is a registered U.S. trademark, and you do not have authorization to use it. Failure to contact and/or remedy immediately will result in legal action being taken against you.
      I posted after I got that message, it turns out they were very civil once I contacted them. My apologies for jumping the gun...just wanted to see if other warriors had run into this too
      Signature
      {{ DiscussionBoard.errors[4318455].message }}
  • Profile picture of the author derekwong28
    Seriously, it is not worth paying for legal advice for a domain that earns about $100 a year.

    Why don't you post your domain here so others can do some research for you?

    You can also pm experts on the thread like Gene to ask for some advice.
    Signature

    Do not get between a wombat and a chocolate biscuit; you will regret it dearly!

    {{ DiscussionBoard.errors[4318391].message }}
  • Profile picture of the author Michael Daniels
    ah... if you have any other words with there "trademark" such as ebaymoney fiverrdonuts mcdonaldscash then your NOT infringing on their trade mark.

    Domain trademarks are only the name ALONE.. don't listen to all this, blah blah.. most are guessing and don't know the LAW..

    They have "Mc Donalds" Trademarked.. by law..
    not "mcdonaldscash"

    If they go and trademark "mcdonaldscash"
    then that is another story..

    Would be cool if you get your domain trademarked after you give it to them..lol

    Make them pay you if they want the real estate! Period
    {{ DiscussionBoard.errors[4318539].message }}
  • Profile picture of the author celente
    One of my business partners had the same problem. But he was set up in correct bloodline trusts and well protected assest wise, i suggest you do the same, it will save your skin, but sounds like it is too late.

    Just some food for thought
    Signature
    Create a $5000 USD a month Business. 1-on-1 Coaching. By 6 figure marketer! - CLICK HERE
    {{ DiscussionBoard.errors[4318733].message }}
  • Profile picture of the author sbucciarel
    Banned
    Originally Posted by coog View Post

    Hey guy's I have an MFA site that's domain has a companies trademark in it. It's been up for a couple of years and doesn't do all that well, only about $100 in the last year.

    Anyway the company contacted me via email, I did a reverse DNS on the sending mail server and it's a valid mail server. They told me I couldn't use the domain because of the registered trademark in the united states etc...

    I sent an email back saying that I didn't reference their company in any way anywhere on the site and asked if it was OK to add a disclaimer that I wasn't affiliated with the company (I figured this would be a NO, but I had to try)

    Here's the email I got today:



    Don't you think it's rather presumptuous of them to assume I will just hand the domain over to them!

    Can this domain be sold to someone outside of the United States to use or do you guy's think I'm stuck and should just let them have it. I don't think it's illegal to own an inactive domain so I'm tempted to take the site down and keep the domain :-) Just because of that email...

    I'm not sure of the legalities in all this...any advice from the guru's?
    Presumptuous of them? Don't you think it's presumptuous of you to use someone's trademark for your own personal gain?

    They're being nice about it. They don't have to be nice about it. Do what you want to do and they'll do what they have to do to protect their trademark, if they do have a trademark (which you should do whatever research it takes to find that out).
    {{ DiscussionBoard.errors[4318779].message }}
  • Profile picture of the author krikkod
    They say they have copyright in the U.S - i don't see how that's applicable to the rest of the internet.

    You may be restricted to use it in the U.S but nothing is stopping you from using it in other countries.

    From my experience a copyright/trademark for one country does not immediately make it so for other countries. E.g i can trademark and copyright a business name such as 'dingleberries' here in Australia, but it doesn't mean i have the same rights to that name in the U.S, Asia or Europe - because i only registered it in Australia.

    Tell this guy to get f****
    Signature
    {{ DiscussionBoard.errors[4318825].message }}
    • Profile picture of the author sbucciarel
      Banned
      Originally Posted by krikkod View Post

      They say they have copyright in the U.S - i don't see how that's applicable to the rest of the internet.

      You may be restricted to use it in the U.S but nothing is stopping you from using it in other countries.

      From my experience a copyright/trademark for one country does not immediately make it so for other countries. E.g i can trademark and copyright a business name such as 'dingleberries' here in Australia, but it doesn't mean i have the same rights to that name in the U.S, Asia or Europe - because i only registered it in Australia.

      Tell this guy to get f****
      You can't "copyright" a business name. It's called a trademark and telling anyone to get f**** over a legal trademark dispute is just plain foolish.

      If the domain is important enough to the OP, he should contact a lawyer to find out what to do.
      {{ DiscussionBoard.errors[4318844].message }}

Trending Topics