generic name but trademarked - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**asti** · 06-30-2004, 01:30 AM

Hi there,

First post for me on this forum.

I bought and started using what I thought was a generic domain name, but as it turns out it was a trademarked name.

I received a cease and desist letter this week wanting me to shut down my site and to transfer it across to the company with the trademark. i have taken down my site and have offered to transfer it to them.

My site by the way is an affiliate site which directs visitors to one of the trademarked company's competitors so I am also being threatened with being sued for damages.

The attorneys are now asking about my relationship with the merchant I am affiliated with... so what I am wondering is if I should be worried about them suing me for the affiliate money i have earned through my site and also could they sue me for the total amount of sales that I have sent to the competing company.

I think I should seek legal advice, does anyone know of an attorney either online or in the Vancouver area.

signed... very worried

**dax** · 06-30-2004, 03:28 AM

If its a generic domain name, then you should not worry that much. F.e. if you have computers.com and you direct it to dell.com instead to hp.com , there is no possible way that you damaged someone. You have legal rights to use generic domain names any way you like. Infact, you have the right to sue them for threats and emotional pains. If its generic (common)!
If it is typo of a TM (f.e. delll.com), then hand over the domain name and appologise, and hope they'll forget it.

**asti** · 06-30-2004, 03:35 AM

it seems generic but it is a tradmarked name, so I don't really have a leg to stand on there. i just need to know if they can sue me for my earnings that I have made while using this name.

**dax** · 06-30-2004, 08:49 AM

Quote:

Originally Posted by asti

it seems generic but it is a tradmarked name, so I don't really have a leg to stand on there. i just need to know if they can sue me for my earnings that I have made while using this name.

Sorry, i cant tell you for sure if i dont know the name. I can only speculate...

**actnow** · 06-30-2004, 09:32 AM

Asti,

I suggest you have a discussion with one of the trademark lawyers on this forum.
(You can find them by looking at a couple of the other threads in this section.)

Otherwise, you are opening yourself up to legal problems.

I suggest you Act Now!

And, stop immediately communicating with the complainant's lawyer UNTIL you seek
legal advise.

**Nodnarb** · 06-30-2004, 09:37 AM

Bad move sending traffic away from them. That is malicious intent, purposely inflicting damage.

What I would do is send the traffic immediately to the company that you violated, and then point out your immediate cooperation once you were made aware of a problem. Ask them for written release from all past, present and future liability associated with your brief ownership of the name, citing your immediate response and continued cooperation in transferring the name back to them, as the reason for granting the release.

From there, respond accordingly. Hopefully, they'll grant you that. Say your prayers though!

**actnow** · 06-30-2004, 09:54 AM

Quote:

Originally Posted by Nodnarb

Bad move sending traffic away from them. That is malicious intent, purposely inflicting damage.

It has not been established that the name is actually violating a trademark.

You are assuming he is guilty because of the "cease and deceit".

However, if he admits guilt without legal counsel. Then, he is making a big
mistake.

**Nodnarb** · 06-30-2004, 10:25 AM

Actually, my advice was to plead ignorance, not guilt. "I had no clue that this would be a problem and never even thought of a trademark issue."

As the same time, Asti said she was sending affiliate traffic to the competitor of the TM company. That will not be perceived as an innocent action. Probably took some research to figure out what would sell on the TM domain name that Asti owns. It was just a mistake or an oversight that she wasn't aware of a TM issue. And, based on the limited information provided here, that's what I would do...

She says she thinks she should seek legal advice, and she should. If her priority is to settle the matter, then what I posted may work for her. If she wants to keep the domain name, spend money for legal fees, and fight with a company that owns a TM, then she should get on the phone with an attorney -- not post here! Personally, I'd try to make it go away without legal fomalities.

**namedropper** · 07-01-2004, 07:16 AM

Seek professional legal advice.

Though I am real curious to find out what this term is that you thought was generic that you pointed to a competitor in the same field... it's either generic to the field or not.

**asti** · 07-01-2004, 10:51 AM

Thanks for the advice guys. I'm a she not a he by the way.

I am currently seeking out legal advice. It was not malicious intent. It was just a stupid mistake on my part. I don't care about losing the name, I can build traffic using any name. I don't feel I should mention the name here, but it's very generic sounding In the country I come from the store doesn't exist, but it is well known in the US - everyone I have told has agreed that it sounds generic but it's not... I have pleaded ignorance and have offered to give them the name, but I will seek legal advice before writing them again in case I inadvertently say something that gets me into hotter water.