Advice on how to proceed

[tdz]

Dear members,

today I received this email:

IMPORTANT NOTICE REGARDING JOOST

WITHOUT PREJUDICE

We contact you today on behalf of Joost N.V. ("Joost"), owner of the famous and well-known trademark and trade-name "joost" as well as copyrights in and to the various Joost logos, webpages, software and promotional materials.

This letter serves to place you and/or your company (collectively, "You") on notice that the domain name joostlive.net (the "Domain"), which appears to have been registered by You, includes and infringes upon the famous and well-known "joost" trademark and trade-name. Joost never authorized You to use its trademarks or trade-names for any purpose, including domain name registrations. Accordingly, Your registration of joostlive.net infringes upon Joost's valuable rights in and to the term "joost."

Be advised that Joost will only grant such authorization pursuant to a valid license agreement, which Joost has never issued to You. However, should You continue to misappropriate the "joost" trademark and trade-name without proper authorization, Joost is prepared to enforce its valuable rights to the fullest extent of the law.

Joost understands that You may have acted in good faith and intended no harm. Further, Joost wishes to resolve the matter with You amicably rather than pursue cumbersome legal action. In any event, we ask that You immediately contact us regarding transfer of this Domain and any other Joost-related domain names under Your management and/or control.

Please take appropriate measures to ensure compliance with the points above within five (5) days from the date of this letter. You may contact us for further clarification on this matter via the email address designated below.

This demand is made without prejudice to all rights and remedies, legal and equitable, which Joost may have available to it, all of which are hereby expressly reserved.


Sincerely,


Genga & Associates, P.C.
Joostdomains AT gengalaw DOT com
Attorneys for Joost N.V.

What I should to do?

Thanks for any help

[Prosperous]

Your domain also 'infringes' on the quite common Dutch name 'Joost'.

[denny007]

How I do handle C&D's: I push the domain into a rubbish acount I created at the same registrar with different set of fake whois and do nothing else. 50% of C&D's will leave you, 30% will send from time to time, 10% will keep sending C&D's regulary (for example AOL is sending 1MB attachments, intentionally, had to filter it out to /dev/nulll ). 10% will go to a WIPO. Thats for domains which are TM typos. If I think the domain is clean, then it depends on domain.

[stevan@aplegal.co]

What you do with domains is dependent on whether the domain is worth fighting for or not. If it is not worth fighting for then make sure they can not trace the domain back to you as suggested below. If it is fighting for then you need to create some sort of trademark use / secondary meaning in association with the domain that has goods and services that are not confusingly similar with the goods and services of those that sent the C&D. If you notice the company that sent your C&D do not have an US registered mark so you have the opportunity ot oppose their mark (they just filed for it) and to create your own use.

[tdz]

I don't understand how is possible register a TM with a common Dutch name!
Thanks everyone.

[JohnGBUK]

Be advised, "without prejudice" is a legal phrase that allows parties to discuss and negotiate a settlement to a legal claim, without admitting liability. Any documents headed "without prejudice" cannot be used in evidence in any subsequent court case without the permission of both parties.

Consider (but do not answer here)... are there, or have there been any content on your parked pages that relates to the products of the firm who sent the letter to you. My advice to you, please be cautious about what you write here. You can never be sure who is watching

[cyberlaw]

If it is not worth fighting for then make sure they can not trace the domain back to you as suggested below.

Stevan: I'm sure you didn't intend to advise folks to violate ICANN rules, right? Perhaps you'd like to clarify?

Eric Menhart
CyberLaw® PC
http://www.cyberlaw.pro

[domaingenius]

Be advised, "without prejudice" is a legal phrase that allows parties to discuss and negotiate a settlement to a legal claim, without admitting liability. Any documents headed "without prejudice" cannot be used in evidence in any subsequent court case without the permission of both parties.

Consider (but do not answer here)... are there, or have there been any content on your parked pages that relates to the products of the firm who sent the letter to you. My advice to you, please be cautious about what you write here. You can never be sure who is watching

Do not at all rely on "Without Prejudice" protecting you as there are LOTS of
situations where it will not protect you, including its use in some UDRP,DRS proceedings etc as well as in Courts dependent on what has been written.

They probably got the TM because they made the word distinctive.

DG

[stevan@aplegal.co]

Stevan: I'm sure you didn't intend to advise folks to violate ICANN rules, right? Perhaps you'd like to clarify?

Eric Menhart
CyberLaw® PC
http://www.cyberlaw.pro

Eric,

Thank you for pointing out that my suggestion would seem as if I was suggesting folks not put the correct whois information on the domain. I am of course suggesting no such thing. However, a corporation may own a domain and that corporation may be owned by a foreign corporation, etc. which would make it very hard and certainly expensive for an entity to litigate against the person controlling the domain.

My comments are more from the point of view that every element of business must take in to account the cost of each action and reaction. If a domain does not make much money then it probably will not be worth litigating over and every domainer should understand that this goes from the point of view of not only themselves, but both litigants and they should act accordingly by setting up their corporate structure appropriately.

[INVIGOR]

The fact it's a last name means squat in WIPO. Stevan can attest to that, as we lost a WIPO case with a last name. It's gonna boil down to the facts of your case and how they are presented, period.