C&D - Is this for real?

[Mr.Domains]

Back in April I bought a Pimp Game script for $200, and I hand-regged the domain PimpWarGame.com, which I thought was a good generic URL for my new site. After several months of inactivity, in just the last few weeks it has started to take off, with 10-15 new sign-ups a day. Then today I recieve a C&D email which reads as follows:

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Happy Empire Inc
1521 Alton Rd #362
Miami Beach, FL. 33139
trademark@happyempire.com
786.206.9020 phone
305.468.6230 fax

October 6th, 2005

Re: Unauthorized Registration and Use of PIMP WAR® (Registration #255892) in Domain Name www.pimpwargame.com.

I represent Happy Empire Inc. the owner of the famous, federally registered trademark PIMP WAR® under the following registration information :

Registration #255892
International Class: 041
Entertainment services, namely, providing an on-line computer game
First Use Date: 2000-03-24
First Use in Commerce Date: 2000-06-25.

It has recently come to our attention that you have registered the domain name pimpwargame.com and have put up a game similar to PIMPWAR.COM. Your choice of names will cause confusion among our players and negate the great steps we have taken to protect the game and name PIMP WAR® we have built up over the past several years. Although we are glad you are interested in running a pimp game on-line we can not allow you to use any variation of the words PIMP WAR in your domain name as it violates our trademark for PIMP WAR.

Since your game appears to just be getting started and you only recently registered the domain name the impact on your players should be minimal. Please move your game to a new domain name within the next 7 days and arrange to transfer the domain name pimpwargame.com to Happy Empire Inc.

As required by law I have sent notification to your ISP, Theplanet.com asking that they terminate hosting of pimpwargame.com as soon as possible. Please contact trademark@happyempire.com if you have any questions and also to arrange the transfer of the domain to us. If you have any legal questions about this request please consult and attorney who deals in intellectual property law.

Please respond in writing to confirm you have read and understand this request. Failure to do so will result in further action by our legal department which may result in financial damages awarded to Happy Empire Inc. against you.
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Is this for real, or is someone just trying to rip me off? I thought there were hundreds of "Pimp War" games on the web, can such a generic term really be their intellectual property?
Regards,

Neil

[DNjet]

Well , here is the trademark , dont know what kind of legal rights you have but I hope you make out ok,
http://tess2.uspto.gov/bin/showfield...e=8lsnle.4.433

[GeorgeK]

Their rights exist, see:

http://tarr.uspto.gov/servlet/tarr?r...entry=78040649

A valid registered trademark in the United States, and your domain is confusingly similar. Fairly open and shut case in their favour most of the time. The main thing you can rely upon would seem to be the fact that you're not in the US (WHOIS says France, your avatar here says UK), where they might not have any trademark rights.

[Sarcle]

I wouldn't fight to hard, but someone needs to call Slim Shady's camp on their song choice a total rip off, and I hear slim doesn't like promoting anything other than his with his stuff on it. I doubt they had the cash to use the song, none the less change it to sell their games.

People walking on trademark lines themselves need to be very careful in pointing fingers.

[dotNetKing]

This has possibly been discussed exhaustively elsewhere, but isn't half of one of the requirements for a UDRP case to succeed that that complainant proves that the domain name was registered in bad faith.

If Mr.Domains didn't registrar the domain in bad faith, a UDRP case, should theoretically fail, if the complaintant can't reasonably prove that the domain was registered in bad faith?

(The other half of the requirement is that the complainant has to additionally prove that the domain is actually being used in bad faith. I'm not saying that this joint requirement seems to be "right", but this seems to be what is required).

[Mr.Domains]

Originally Posted by GeorgeK

You're not in the US (WHOIS says France, your avatar here says UK).

Yes, I'm a British expat, currently living in France. I don't have an attorney, or any money to hire one, so I guess this is fairly cut & dried. I will have to hand over my domain... Damn!

Thanks for your feedback guys.

[DNjet]

certainly try to recover your investment from them first by asking for what you have invested before turning over the domain , it is costly to do the UDRP and they could possibly actually save money.

[007]

The email did have some obvious errors... I'm not saying it's not legit, but generally lawyers are very careful about grammar.. The following mistakes would worry me:

consult and attorney - should be consult an attorney

And then there is the ISP reference. ISP is not the same as host.. A trademark lawyer dealing with the online world would know this..

I would make 100% sure the email was from you they claim to be before doing anything. People try to rip people's domains off through fake C&D's all the time.

I'm not saying you should point fingers and "call their bluff," but you should be sure to make 100% sure you know it is a real letter.

[carlton]

The trademark is defensible. Along with what 007 said, there appear to be some odd grammatical errors including the mistaken trademark registration number in which he omits the digit "1". It's actually 2558921, not 255892.

[007]

Another good catch carlton. Yes I would definitely be careful with this one..

[Mr.Domains]

Okay, now I don't know what to do! ;-) I am a small time player in the domain game, I don't turn a profit, and I cetainly don't have the funds to cover an attorney and court costs, let alone the flight to the US.

I was pleased that one of my sites had started attracting visitors, but now that it has gone bad, I think I am out of my league.

I know that this happens all the time, but this is my first C&D, and I don't have the knowledge or funds to fight back.

I wish I could contest it, (and it's sad that after 5 years my best site is an 10 new sign-ups a day domain that is about to be taken from me), but I think I am going to have to cease and desist.

[sasquatch]

Originally Posted by Mr.Domains

Okay, now I don't know what to do!

Carry on. The letter is obviously pure bullshit since:

1. Real lawyer should be able to write in language other than street English.

2. You were not offered compensation for registration costs.

3. "HappyEmpire" is just a dinkey place run by two guys and they certainly have no money to employ staff lawyer (which is implied since "he" writes from HappyEmpire email address).

4. "HappyEmpire" has history of asking for "millions" for one of his domains, so they are no strangers to receiving C&D letters themselves.

http://arbiter.wipo.int/domains/deci...2003-0180.html

Originally Posted by Mr.Domains

I think I am going to have to cease and desist.

Sucker born every minute.

[Focus]

First of all let them spend the money and then worst case scenario ICANN rules for them and you lose the name, for now dont do sh*t, trust me I have been thru this with porsche usa, a REAL company and I told them to stick it and that was the end of it...if the domain has no obvious benefits to them other than the fact that they might get it for free, trust me when I tell you they most certainly won't spend mid $x,xxx or more range to get it from you in court, etc..CALL HIM AND OFFER A SALE, dont put it in writing in an email or anything or it proves bad faith reg possibly..(if it went there which it wont im nearly certain) fyi - I got a big legal packet with hand signed letters from porsche and their lawyers about "buy 911 dot com" and that was the end of it..they didnt get sh*t, neither should these dorks..I'm in south FL and I could go stop by and check them out if you want..

Chris

[namestrands]

Write Back and tell them That you are willing to let it go to UDRP.. Call there Bluff.. The fact that the letter hold incorrect information and Spelling mistakes.

Consider the fact that this person owns the copyright though.

That aside the trademark is somewhat Diluted as you are correct that the Term PimpWare is used in so many other sites and verticals.

You have 3 Choices.

1. Hand it over.
2. Call there Bluff
3. Offer it to them at $1000

At least that would be cheaper than a UDRP and Attorney Fees.

You do not need to pay any Attorney Fees and if they want to Take you to Court then well it will cost them Thousands as your are outside the US.

This is of course an irresponsible attitude.. but hey... I think this is a case of Reverse Hijacking Regardless of the TradeMark..

A trademark does not give ANYONE absolute rights to a name of the same name or similar. Thats up to the courts to decide.

FIGHT IT... you only have the domain to loose nothing else.. P

[Mr.Domains]

Thanks Sasquatch for the info, and Chris for your kind words of encouragement. The fact is I had already secured a new domain for my site which doesn't infringe on their so-called trade mark, and migrated my users over to the new URL.

My new domain isn't nearly as generic as this one was, so I doubt I will get as many signups, but my users seem to have taken to the move, (traffic hasn't dropped really, only the signups). I didn't have that much choice though, because my hosts deleted the site and the virtual server without warning on receipt of the C&D. Good job I make regular backups!

Anyway, I was planning on complying with their C&D, although I haven't acknowledged the receipt of the letter, or handed over the domain, as yet. I quite like the idea of calling him and making an offer, except a) I'm on a different continent in a different timezone, and b) I'm not overly confident on the phone at the best of times. The idea of "cold calling" sends me "cold". lol ;-)

Perhaps I will hold on to it and see what happens...
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Thanks Namestrands too, I only just saw your response!

[sasquatch]

Originally Posted by Mr.Domains

Perhaps I will hold on to it and see what happens...

They certainly won't pursue any action, and they certainly don't care about your domain enough to pay money for it (why would they, they already have Pimpwar). They just wanted to get it for free so that they could use your residual traffic for themselves.

Hold it because nothing will happen. Ignore any further notices from them.

[Duncan]

Mr Domains, I just got your email about the Pimp Game, I had forgotten that I was a member of it.

Best of luck,

[Gerakus]

I wouldnt email them back, as matter of fact i would just ignored them, put some info content related to pimp wars stuff while this case freeze... and take away the script of that site, then if i really get a call? hand it over...

At least i would prove the site wasnt use for bad faith other than provide information related to all the pimp war games around the globe...

pimp war game its in a way a sentence... that could be use for a good purpose.

Then if nothing happend after some months, script back =).

Plus like sas said it, a lawyer wouldnt make so many mistakes on a C&D letter... i would consider that as spamn and sent it to trash . Plus move the domain to a cheap hosting... dont risk the future of your other sites... just for one... But dont let them win so easy as well. Oops i kind up late on this one... if they actually call the hosting provider and got your domain deleted from the virtual server, dont hang it over so easy now! but forget about the cheap hosting idea, it would not work... was more as backup in case happend what in fact did happended..


So you stay secure and so the rest of your domains .

Btw maybe i am wrong on my ideas, but well hope it helps...