Help wanted donate 3000 DNF-Yahoo Trademark Infringement

**ngochoa** · 03-05-2008, 03:45 AM

Hello everyone!
I have just got a letter from Markmonitor claim about Yahoo trademark infringement.
I have a domain which is related to yahoo. Actually, I have paid alot for this plan.
I'm not USA resident.
Here is the letter:

Dear Sir or Madam:

I am writing to you on behalf of Yahoo!. It has recently come to our attention that you registered and/or are using the above-referenced domain name(s) in the United States, which is/are substantially identical and/or confusingly similar to the famous YAHOO! trademark.

As I'm confident you are aware, Yahoo! is a global Internet communications, commerce, and media company, offering a comprehensive branded network of searching, directory, information, communication, shopping, electronic commerce, and other online services to millions of Internet users daily. The YAHOO! website has long been one of the leading Internet destinations in terms of traffic, advertising, and household and business user reach, and the YAHOO! trademark is one of the most recognized brands in the world.

Specifically in the United States, your registration, use, and/or trafficking in the infringing domain name(s) constitutes cybersquatting in violation of 15 U.S.C. § 1125(d). You are also potentially in violation of laws in other jurisdictions as well. However, please note that Yahoo! wants to settle this matter amicably, but would expect that you address each of the following points by reply e-mail:

1) Compensate Yahoo! based upon any profits directly derived and reasonably ascertainable from the infringement, or affirmatively state in your response that there were no such profits;

2) Disclose under the penalties of perjury any other domain names that you have registered, directly or indirectly through a third-party, that includes either the component 'Yahoo' or any other trademark owned by Yahoo!, such as FLICKR, GEOCITIES, HOTJOBS, etc., or a confusingly similar variation of the same, or state that no other domain names exist in your possession, custody or control other than those referenced above;

3) Reasonably cooperate with Yahoo! and/or its agent TO TRANSFER (NOT CANCEL) all such infringing domain names to Yahoo!, in accordance with the instructions you will receive from Yahoo! shall you agree to cooperate;

4) Promise never to intentionally register, directly or indirectly, whether through an agent, affiliate, or successor in interest, confusingly similar domain names to the famous YAHOO! mark, or any other trademark owned by Yahoo!, such as FLICKR, GEOCITIES, HOTJOBS, etc.; and

5) Promise to take all reasonable steps and implement any necessary safeguards to avoid registering, directly or indirectly, whether through an agent, affiliate, or successor in interest, confusingly similar domain names to the famous YAHOO! mark, or any other trademark owned by Yahoo!, such as FLICKR, GEOCITIES, HOTJOBS, etc.

If you desire to resolve this matter along the above lines, please let me know by reply email. Absent a response all together, Yahoo! will assume you do not share its willingness to resolve this matter amicably, and will take appropriate action.

Of course, nothing herein shall waive any of Yahoo!'s legal rights or remedies, all of which are expressly reserved.

We thank you, in advance, for your anticipated cooperation.

Very truly yours,

Please help me. I'll donate all of my DNF money for one who give me the best solution!
Thank you very much!

**Gerry** · 03-05-2008, 04:18 AM

I got the same email yesterday.

The name on my email is a very prestigious lawyer with a law firm in New York dealing primarily with internet cyberlaw.

However, I have asked for verification of the identity of the sender before I comply with anything. I have not received a response.

This email came at approximately 330pm est at my residence. I would be curious to see how many others got the same email and and at about what time.

Anything is possible...it may be legit, but very suspicious. If it is a scam, very good ploy.

First, I can not see a lawyer or law firm asking for restitution. This usually comes from a court order. Secondly, most are happy that the domain is canceled, with the holder sending confirmation of the domain being canceled.

Look at the name of the signer.

Then Google that name.

Every thing appears impressive and legit but I am still very, very suspicious of this.

Ask for verification and confirmation regarding the validity of the claim. Look at the google info. Make sure that IF you get a response that a phone number and address is included and it matches the info from Google. Then, actually place a call to that number if they match.

Talking with a paralegal under this person may provide some insight.

Be cautious as not to disclose too much information. You want to prompt them to provide the information you are looking for. If this is an ongoing investigation, then they should be happy to talk to you.

I am actually looking forward to who they claim they are and who they claim their agent of transfer is. This could get amusing.

Keep your 3000 DNF$

**ngochoa** · 03-05-2008, 04:32 AM

thank you very much for your advice!
It's very nice of you.
but I've just wonder that the email is come from:

From ipenforcement@yahoo-inc.com
date Tue, 4 Mar 2008 20:30:07 UT
subject Trademark Infringement - yahoocupid.com
mailed-by markmonitor.com

**afloat.com** · 03-05-2008, 04:37 AM

Originally Posted by ngochoa

thank you very much for your advice!
It's very nice of you.
but I've just wonder that the email is come from:

From ipenforcement@yahoo-inc.com
date Tue, 4 Mar 2008 20:30:07 UT
subject Trademark Infringement - yahoocupid.com
mailed-by markmonitor.com

lol, just hand it over

**stock_post** · 03-05-2008, 06:23 AM

one can make it look the email came from any one.
Conforming is the best thing to do.

**afloat.com** · 03-05-2008, 06:25 AM

Originally Posted by stock_post

one can make it look the email came from any one.

why would "anyone" bother?

**ngochoa** · 03-05-2008, 07:20 AM

Please take a look:

yahoo.ca .com .ca .cc .ch .ck .cl .cn .cx .cy .cz Whois Form

Organization: Yahoo! (TMA571707)
Description:
Admin-Name: Jonathan Matkowsky
Admin-Title: Domain Administration
Admin-Postal: Yahoo Canada Co.
106 Front St. East, 2nd floor
Toronto ON M5A 1E1 Canada
Admin-Phone: 1 416 3415280
Admin-Fax: 1 416 3418800
Admin-Mailbox: domainadmin@yahoo-inc.com
Tech-Name: Jonathan Matkowsky
Tech-Title: Domain Administration
Tech-Postal: Yahoo Canada Co.
106 Front St. East, 2nd floor
Toronto ON M5A 1E1 Canada
Tech-Phone: 1 416 3415280
Tech-Fax: 1 416 3418800
Tech-Mailbox: domainadmin@yahoo-inc.com
NS1-Hostname: ns1.yahoo.com
NS1-Netaddress: 66.218.71.63
NS2-Hostname: ns2.yahoo.com
NS2-Netaddress: 66.163.169.170
NS3-Hostname: ns3.yahoo.com
NS3-Netaddress: 217.12.4.104
NS4-Hostname: ns5.yahoo.com
NS4-Netaddress: 216.109.116.17
NS5-Hostname: ns7.yahoo.com
NS5-Netaddress: 68.142.226.82

The admin name of yahoo.ca is the person who sent the letter to me!

and here about the email came from.

yahoo.net .com .net .org Whois Form

Registrant:
Domain Administrator
Yahoo! Inc.
701 First Avenue
Sunnyvale CA 94089
US
domainadmin@yahoo-inc.com +1.4083493300 Fax: +1.4083493301

Domain Name: yahoo.net

Registrar Name: Markmonitor.com
Registrar Whois: whois.markmonitor.com
Registrar Homepage: http://www.markmonitor.com

Administrative Contact:
Domain Administrator
Yahoo! Inc.
701 First Avenue
Sunnyvale CA 94089
US
domainadmin@yahoo-inc.com +1.4083493300 Fax: +1.4083493301
Technical Contact, Zone Contact:
Domain Administrator
Yahoo! Inc.
701 First Avenue
Sunnyvale CA 94089
US
domainadmin@yahoo-inc.com +1.4083493300 Fax: +1.4083493301

Created on..............: 1996-11-04.
Expires on..............: 2012-11-02.

Domain servers in listed order:

ns2.yahoo.com
ns5.yahoo.com
ns3.yahoo.com
ns4.yahoo.com
ns1.yahoo.com

MarkMonitor.com - The Leader in Corporate Domain Management
----------------------------------------------------------
For Global Domain Consolidation, Research & Intelligence,
and Enterprise DNS, go to: www.markmonitor.com
------------------------------------------------

Should i use this information to compare?

**Banned: domain newbie** · 03-05-2008, 07:29 AM

reply to them whatever and wait for respond, then transfer the names

**afloat.com** · 03-05-2008, 07:35 AM

Originally Posted by ngochoa

The admin name of yahoo.ca is the person who sent the letter to me!

no shit?

**Acro** · 03-05-2008, 08:28 AM

Best solution: comply with their request to relinquish the domain.

**KING dot NET** · 03-05-2008, 08:39 AM

Let it go and your stress will go away. This is obvious trademark issue, you can't win about it.

Good luck,
em

**jberryhill** · 03-05-2008, 09:59 AM

First, I can not see a lawyer or law firm asking for restitution. This usually comes from a court order. Secondly, most are happy that the domain is canceled, with the holder sending confirmation of the domain being canceled.

It is becoming quite normal for c&d letters to make a monetary demand, because they are tired of dealing with people who mass-cybersquat domain names, waste attorney time and fees on chasing them down, and then hand over the domain names while going out to register more.

Some companies have adopted a 'bounty' basis with their attorneys. Basically, the company provides the attorney a list of names, pays a flat fee, and authorizes the attorney to collect whatever he can. The attorney will make an initial monetary demand. If you do not pay it, then the attorney will file a form complaint with a court along with a request for TRO and preliminary injunction transferring the name. You will receive a second demand at that point. If you don't pay it, the attorney will move for a default, get a judgment, and then sell the judgment to a debt collector. Maybe it gets collected, maybe for dimes on the dollar, and maybe not at all. But by that time, you are dealing with the judgment broker, and neither the TM claimant nor the attorney is interested in whether you want to verify who they are.

I've seen this a couple of times. Tell me more about what you usually see.

What is "normal" has always been evolving since the late 90's. Basically the TM claimants adopt a strategy, the bad faith domain registrants adapt to that strategy, and then the TM claimants modify their strategy, and so on. It is the irresponsible a-holes in this business that are driving the bus.

**fab** · 03-05-2008, 10:23 AM

Like everyone else said, just tell them you've had relatively no income, and are willing to comply, just have them affirm that they have no other claims against you. Not worth fighting monsters.

**ngochoa** · 03-05-2008, 10:43 AM

I've found this, but actually, I'm not US resident. Do I still under control of this section?

In a case involving a violation of section 43(d)(1) [15 USC 1125(d)(1)], the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $ 1,000 and not more than $ 100,000 per domain name, as the court considers just.
15 USC 1125(d)
(1)
(A)
A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person--
(i)
has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii)
registers, traffics in, or uses a domain name that--
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or (III) is a trademark, word, or name protected by reason of section 706 of title 18, United States Code, or section 220506 of title 36, United States Code.
(B)
(i)
In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to--
(I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct; (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of section 43 [subsec. (c)(1) of this section].
(ii)
Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.
(C)
In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.
(D)
A person shall be liable for using a domain name under subparagraph (A) only if that person is the domain name registrant or that registrant's authorized licensee.
(E)
As used in this paragraph, the term "traffics in" refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.

**Focus** · 03-05-2008, 11:13 AM

It's a "let you off the hook give us the domain" letter ...reply back asking how and where to transfer the domain and volunteer nothing more..you are not required to answer any questions or agree to anything. Just give them the domain and you'll avoid brain damage.

**katherine** · 03-05-2008, 11:28 AM

Just because you are not US resident, does not mean you are not subject to US juridiction

Do you really think it's worth fighting for ? Then go ahead, prepare for a possible WIPO and your name will be recorded as labeled cybersquatter. Next time you get hit with a UDRP no matter who is right, the panel may not look at your case favorably.

**Shobhit** · 03-05-2008, 11:58 AM

You should cancel the domain and register a new one for your project.

Next time go for some Privacy Protection option when registering such potential trouble maker domains.