Legal threats from company with no trademark or service mark

**Sole Designer** · 07-15-2011, 03:04 PM

Ok so a friend has a domain (Companyname.co) that resembles exactly the .com of a company in Canada and she plans to use it for a blog. She is in the united states. The company has no trademarks in Canada, US or any other country we checked. They say that they will file a UDRP against her which i don't think is possible if they don't own or never owned a trademark at all. Here is what they wrote her:

I believe you do not understand the legal and business implications of my last email.

We effectively and undisputedly own the name and more specifically the domain name www.companyname.com and will pursue any legal actions to safeguard our corporate and business interests for that matter. This means if you register or try to register any domain name with the word COMPANYNAME this is considered a domain name infringement (cybersquatting) subject to the filing of a UDRP procedure. You can find some information of what this procedure is at http://www.icann.org/en/udrp/udrp.htm

This constitute our last warning.

Govern yourself accordingly,

I know a little about the UDRP process but would like to know if she has some power in keeping the domain. Any suggestions would be helpful.

SD

**Adam Dicker** · 07-15-2011, 03:06 PM

Is it a generic name or a specific company name?

-=DCG=-

**Sole Designer** · 07-15-2011, 03:13 PM

Lets put it this way. It consists of 2 three letter dictionary words to make up one word which they are using as their company name. Example: GuySun, Letsit

It is a specific company name but like i said its made up of two dictionary words.

**Adam Dicker** · 07-15-2011, 03:17 PM

Have your friend consult zak@muscovitch.com, it will be worth the couple hundred bucks.

-=DCG=-

**draggar** · 07-15-2011, 03:21 PM

If they don't have a TM then they'll have to prove that their presence is well known in the USA.

But - if the two keywords don't make much sense together (Micro (meaning small) Soft (meaning the opposite of hard)) then it may be harder to prove your friend didn't intend to infringe on their presence.

**Sole Designer** · 07-15-2011, 03:28 PM

I will give such a suggestion if it comes to them actually filing against her. Thanks DCG!

Originally Posted by DotComGod

Have your friend consult zak@muscovitch.com, it will be worth the couple hundred bucks.

-=DCG=-

---------- Post added at 03:28 PM ---------- Previous post was at 03:24 PM ----------

The two words are related actually. I never really thought much on it when i first saw them but both words to work towards a certain subject for her blog. I suppose we will have to see how things progress and hope for the best. If anything i will keep you all updated on this one.

Originally Posted by draggar

If they don't have a TM then they'll have to prove that their presence is well known in the USA.

But - if the two keywords don't make much sense together (Micro (meaning small) Soft (meaning the opposite of hard)) then it may be harder to prove your friend didn't intend to infringe on their presence.

**Acro** · 07-15-2011, 03:33 PM

Blogging constitutes "fair use". Tell her to blog often!

**Sole Designer** · 07-15-2011, 03:35 PM

Thanks ACRO. Will suggest that.

Originally Posted by Acro

Blogging constitutes "fair use". Tell her to blog often!

**Dave Zan** · 07-15-2011, 08:20 PM

Originally Posted by Sole Designer

The company has no trademarks in Canada, US or any other country we checked. They say that they will file a UDRP against her which i don't think is possible if they don't own or never owned a trademark at all.

That's essentially the question there. Trademarks don't have to be registered, and UDRP gives complainants a chance to prove
"common law" trademark rights instead if they can.

If your friend's intended (and demonstrable) use is either completely unrelated to that of the potential mark holder, or if it does
not show any hint of commercial use, your friend might...might...have a chance. And that's also assuming your friend has not
said anything else that might give the other party a book to throw later on.

And second DCG's suggestion to contact Zak Muskovitch. You can also visit his site dnattorney.com.

Good luck to your friend.

**domainduck** · 07-19-2011, 08:35 PM

In the administrative proceeding, the complainant must prove that each of these three elements are present.

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

**Sole Designer** · 08-14-2011, 01:40 PM

Ok so after a month of contact with my friend, the company filed for a trademark sometime last week. Previous to any kind of trademark filing, the company claimed trademark rights and stressed that they had one and would file suit. So after my friend had a lawyer write them a letter detailing the lies and deception they were throwing towards her, they started $x,xxx which my friend rejected. Since she rejected they started saying a court case is going to cost her way more than x,xxx in attorney fees.

The company i am referring to is very powerful and wealthy and in actuality they only own only the .com version of their website. Not sure what to make of the latest events but they must have gotten weak if their offering to buy now.

SD

**Aristo** · 08-14-2011, 01:46 PM

So then who owns .net , .org, or even international extensions? are they still available?

and did you friend get the .co name during landrush period? Was your friend the only bidder?

**Sole Designer** · 08-14-2011, 02:05 PM

Originally Posted by Aristo

So then who owns .net , .org, or even international extensions? are they still available?

and did you friend get the .co name during landrush period? Was your friend the only bidder?

The .net and org is not owned by them. the .co was registered by my friend about a month ago, who did so after searching for any trademarks. she uses the name as a blog and blog often. The company offered her over 3k for the name but she doesn't want to sell. Not sure what to tell her to do from here on out since they might file a UDRP dispute.

SD

**David G** · 08-14-2011, 02:19 PM

Even lacking a registered trademark they may still be able to successfully litigate the name if used in the same category, based on its fame and use.

**Sole Designer** · 08-14-2011, 02:42 PM

Originally Posted by David G

Even lacking a registered trademark they may still be able to successfully litigate the name if used in the same category, based on its fame and use.

I understand that David but the domain blog is not even remotely related. They filed to register a trademark last week as i said but the domain was registered before any such filing. Its not used in bad faith and i was sure blogs constitute to fair use.

SD

**Onward** · 08-14-2011, 03:30 PM

A 3k offer for two unrelated words .co that was hand regged a month ago - really?? Am I understanding this correctly? Tell the soon to be blogger to take the money and run - seriously.

For 3k they can get a decent domain.

**eeedc** · 08-14-2011, 03:39 PM

I would take the $3K for a .co and upgrade to a .com or even a .org if it's a nonprofit blog and not think twice about it.

I haven't looked this week, but you can usually pick up a good one-word .org for a thousand dollars or less.

**Sole Designer** · 08-14-2011, 03:56 PM

Originally Posted by eeedc

I would take the $3K for a .co and upgrade to a .com or even a .org if it's a nonprofit blog and not think twice about it.

I haven't looked this week, but you can usually pick up a good one-word .org for a thousand dollars or less.

Well she is not worried about the money she said. It not about money for her but i will tell her to consider changing it. I actually just spoke with her and i guess the last offer was $5k now. If she considers selling cant the company use that as bad faith or is she ok to consider the offer when i convince her to sell?

SD

**Onward** · 08-14-2011, 04:24 PM

This "powerful & wealthy " company does not appear to be very sophisticated.

**eeedc** · 08-14-2011, 04:37 PM

Originally Posted by Sole Designer

Well she is not worried about the money she said. It not about money for her but i will tell her to consider changing it. I actually just spoke with her and i guess the last offer was $5k now. If she considers selling cant the company use that as bad faith or is she ok to consider the offer when i convince her to sell?

SD

Accept the $5K offer (today if I were you) and you have a legal contract for a sale.

It sounds like the standard boiler-plate language (you have no case, you are wrong, we will win) is spooking your friend.

Anything is possible, but unless she brought up selling the name first (advertised it elsewhere) and had no intention of blogging, I don't see how anyone would take a claim of bad faith sersiously.

If she has been blogging for a while and has some readers, ask for a redirect from badname.co to great.org or soso.com for half a year or less.

It sounds like she needs some basic advice on domain names. Here is a somewhat dated ebook I wrote a while ago:
http://www.seemly.com/book.pdf

If a company is willing to pay her $5K for a hundred percent chance of winning, I would worry more about them paying their lawyers to take legal action if she declines the $5K.