Options after: cease and forever desist using domain name

[blaze]

In a letter from some TM lawyers they requested:

That your company will immediately cease and forever desist from using the domain name blablabla.com.au

What does this actually mean?

Do i have to deregister?

Can i just run another site on there?

Please help, I need options?

[DomainDame]

Sounds like "Cease and forever desist" means don't use it at all. Don't put a site on there...that's using it.

I was served with a C&D a couple of years ago. When I talked to the attorney thay said to let the domain drop.

[blaze]

What about if i was to let the www drop but keep the email so it kept recieving emails? Or at least kept it up to autorespond a message with my new email address?

[aZooZa]

Are they actually claiming TM infringement? How strong is their case? Although a C&D usually has weight behind it, you might consider not capitulating until you have taken legal advice if the name is valuable to you. If the claim is strong, you will probably need to get rid of it and that means email too.

[blaze]

Well, the claim is reasonably strong. They have a class 42 trademark for "electronic products" or something vague for the name "Cadence." If we had a trademark it would be under class 42: web design - so im not sure what that means for us?

We have "Cadence Innovations Pty Ltd" as a company name and have the cadence.com.au domain here in Australia. This is the domain in question.

Cadence Design Systems have cadence.com and a bunch of trademarks.

They are claiming we passed off as them which we never did - we were always a web design company. But the similarities are there I guess. I can just see myself getting annihilated at court if I even try.

[aZooZa]

They seem to be IC manufacturers, not web designers. You seem to have a lot of work in your site. Your company name also has the word "cadence" in it. Your company is Australian and you are using the appropriate extension. You are obviously not "passing off" so that appears to be a false claim on their part.

In view of the investment you already have in your company and domain name I would suggest that you contact a lawyer. I don't see any obvious similarities between what you and they are doing and if I were you, I certainly wouldn't drop the domain without taking advice first. Smacks of a reverse hijack to me.

I am NOT a lawyer. Hopefully one will respond here.

Good luck!

[blaze]

Very interesting aZooZa, thanks for the advice. I'll look into this further.

[DomainDame]

Blaze...you're situation is totally different from mine. I think the recommendation for lawyer advice is the best idea.

[Beachie]

blaze, i'm in australia and can possibly offer some advice (although i'm no expert) and point you in the direction of a good solicitor.

my first impression is that there is little an american company can do to stop you using an australian domain. it does seem that they have an australian trademark for "cadence - software for the design of integrated circuits (1997)", but that wouldn't be enough to take the name if you have a company registration and you're not infringing their TM (ie you're not selling CAD software). however, there are three "cadence pty ltd" companies listed on ASIC.gov.au and one "cadence australia pty ltd". if one of those is the australian branch of the america company you might have problems. if you registered your company before they did you'd have a reasonable case..

[DNQuest.com]

Without knowing timelines here, the best example I can give is Apple Corp and Apple Records.. both are internationally known and both have rights to the TM name "Apple". They are in different ccatagories and both have legal claim to the name. It is obvious that you have a legitamate interest in the name and did not register the name in bad faith.

So the real sticking point may be the "passing off" line. They would have to prove you have done so (and I have no idea whether you have or not). If you truely feel you have not, then I would defend the domain and obtain legal representation. If there is a case for reverse hijacking (again, I do not know if this would be the case), then you can claim legal fees from them along with punitive damages.

[GoPC]

I'd say send them a note back, politely describing to them Who you are, your company name and that your domain is invaluably connected to your business... a Business that has little or nothing to do with their services.

Then, point out that discontinuing the use of YOUR domain would be extremely financially harmful, if not detrimental, to your business. That it would be the equivilent of selling your business to them and unless they are willing to PAY for it, you can't see any reason why you should have to simply choose to end your business.

It's really as simple as that. You can download a C&D document from Microsofts website that looks mean, nasty and official... but does that mean it's for real or just a cheap attempt at stealing a domain?

Consider that the C&D tactic is ALSO used for scams.

Legal advice is always best, but there is no harm in simply trying to work with and open a dialog with whomever is bothering you.

GoPC

[labrocca]

Can you post the entire email please?

[blaze]

Well, it was actually a 4 page letter by registered/express mail from some laywers in melbourne who look like they are being paid well.

You cant forget this company is worth billions of dollars and has registered the trademark since 1997. I am unsure if they have a registered company but as Beachie pointed out theres some possible Australian companies it could be (in which case it would make it harder for us) - however they are only ever referenced to their american Inc in all correspondence from their lawyers.

From my reading of reverse hijacking I doubt this is the case.

I would say your advice GoPC would be the smartest way to go but unfortunately we have already filed a response. We have actually basically asked for compensation for what they have done to our business so we'll see how that goes. I'll post progress as it happens.

Thanks for all the comments, appreciate everyone's help.