I've received a C&D email - need advice

[WhoWhere]

Hello,

I run a small free forum Hosting service at mybb dot info. Recently I've received a C&D email from "MyBB Group" (their website is at mybboard.com) asking me to:

- stop using the terms "MyBB" and "MyBulletinBoard" because they are trademarked as of July 2004. (I've done a search at uspto.gov but couldn't find anything. Maybe someone with more experience on this issue can help.)

- surrender the domain mybb dot info to them.

Facts: They DON'T own mybb.com (for sale at BD for $x,xxx), mybb.net, mybb.org, mybb.us nor mybb.biz. They DON'T own mybulletinboard.com and the .net, .org, etc. are unregistered. Are they entitled to claim ownership of mybb.info from me?

IF "MyBB" and "MyBulletinBoard" turn out to be copyrighted terms I will gladly change the name of the website to "MYBB.INFO" instead of "MYBB" and rebrand "MYBB" as "My Big Board", "My Business Board", or etc. You get the picture but I don't like the idea of handing over the domain name for the above outlined reasons.

Yours thoughts, please? This is my first C&D.

Thank you.

[Adam Dicker]

I also find no US trademarks under either of those.

-=DCG=-

[actnow]

Since, they are located in Australia.

Could the TM be registered there?

I also looked thru the US. PTO. And, could not
find anything close.

[WhoWhere]

They mention both US and AU trademark laws: "The terms\"MyBB\" and \"MyBulletinBoard\" are trademarked terms as of July 2004. By running your website, myBB.info located at [...] you\'re in direct violation of both United States (US) and Australian (AU) trademark laws."

[actnow]

I don't see anything the Australian TM site.

http://www.ipaustralia.gov.au/tradem...ch_index.shtml

Good luck.

[WhoWhere]

Thanks. So I guess they're just trying to "intimidate" me.

[DNGeeks]

I would respond back and ask them for clarification on their trademark. Ask them for filing numbers etc. Just because you don't see the TM, doesn't mean it doesn't exist.

Also, was your site created before their TM date? That can have standing as well if it comes to a UDRP.

[muzie]

In a case like this, where it appears to be groundless, is it ok to ignore the c&D letter? Or is it always better to respond in some way? I know there have been well thought out "form/answer" type letters posted on here that some of you have created to respond to this kind of stuff.

[Domagon]

MyBulletinBoard appears like an inferior copy of vBulletin - I'm surprised anyone would run MyBB, but then I guess many folks are too cheap to do it right ... in saving money now, many of them will have to deal with their server being hacked, etc due to bugs that vBulletin doesn't have and/or fixed long ago; MyBB just released another security patch the other day to fix a SQL injection problem that's already burnt some folks running MyBB software - one gets what they pay for.

With all that said, you could likely just ignore the whole thing since it appears, in my view, that the owners of MyBulletinBoard are bluffing and aren't trully ready to pony up the money, along with effort, it will take for them to get your domain.

If they choose to fight, which as I said above I feel is unlikely, they could actually have a decent basis - even though their mark isn't registered, they may still prevail in a UDRP challenge by claiming they have a common law mark - and doing searches on Google and elsewhere shows that MyBB, on the internet, is most often associated with their MyBulletinBoard software - that alone may not be a problem since mybb itself is only an acroynm, but how you're using the mybb.info domain ultimately could be the deciding factor against you - your site could be construed by the panelist(s) as being confusingly similar; registered in bad faith.

So in a nutshell, in my opinion, if you intend to use MyBB to identify a product/service, make sure it doesn't appear confusingly similar to what MyBulletinBoard ... otherwise choose a different name/domain.

If you choose to keep using the name MyBB, assuming you make sure it's not confusingly similar to the MyBB software, zap on over to BuyDomains and pick up the mybb.com - $2688, while not exactly not a bargain, may be worthwhile spending if developing a service/business focused on the name MyBB.

Ron

[Honan]

Since, they are located in Australia.

Could the TM be registered there?

I also looked thru the US. PTO. And, could not
find anything close.

It appears to me to be a fake whois
Incorrect phone number sequence
Fake post code
No street or other unique identifier

[seeker]

This seems like a strategy that some people follow to intimidate people into giving up their domains.
I would not take them seriously.

[WhoWhere]

Very valuable advice, thanks everyone. I've sent them an email asking for clarifications / documents / more info. on their TMs and I've also suggested to them that they are not entitled to ask for the domain name since they don't own the "mybb" name in any extension.

No reply yet.

[namestrands]

your trademark does not need to be registered. MyBB Group is well known for MyBulletinBoard, the term MyBB is used throughout, and does actually constitute as a common law trademark.