Should I response to this threatening letter?

[.biz]

B & R
Counselors At Law

blah....

Demand is hereby made upon you for the immediate return of the domain name happytolive.com [assumed name]. Please be advised that my client is prepared to initiate and pursue any court action necessary to protect its legal interests. Any such action would obviously include naming USA.biz as a party defendant and Happy Tolive would be seeking compensation for all damages that have been caused by these events.

blah....

They claim that they have trademark, but from the TESS database, they have "To-Live Happy" as the trademark. They own this name before and it dropped. The owner of .net is in California, the owner of the .biz is in Canada and the owner of the hyphenated happy-tolive.com is in New Hampshire. This guy is from Massachusetts.

It's so obvious that many companies use the same name and it's widely used.

What is your advice? Should I not response at all ? If I should response, what kinds of response should I make?


PS: Domains given above are just examples, but close to the real names.

Thank you.

[Source]

Sorry to be abrupt, but offer him $500 to settle and dump the pos. That's the minimum he'll have to pay to a barister.

.Biz I will never wish on anybody the luck that you've has over the last few months.

Heres to better fortune to you... (tilting brewski)

[INFORG]

My first response to these type of things is usually something to the affect of "Who me, what?" Remember, I am not a lawyer, but I have only given up one domain that I was clearly in violation on, and have never had a UDRP or lawsuit despite numerous letters of this sort.

-----sample email-----
Mr. XXXXX,

I registered the domain happytolive.com on [date]. At that time the name was available to register, so I am unclear about how you come to claim ownership of the name. I own this name in accordance with all laws and regulations concerning domain names.

I am a web developer and registered this name for [purpose]. Being a web developer, I am very familiar with intellectual property laws and procedures involving domain names. Based upon my extensive research prior to registering names, I find you do not have any valid claim to demand anything from me.

I would be happy to discuss it further with you or your client and make every attempt to be reasonable, but I will not be threatened in this manner where I am clearly in the right. Any attempt to extort this name from me through litigation or the threat thereof will be met with a vigorous and successful defense to include a counterclaim for my expenses.

Sincerely,
.biz

cc: a big name domain attorney that I may later retain

------end sample------

I would try to copy the guy who hired the attorney if you have a contact email in the hope that he would contact you directly to try and save any possible deal.

It's always a gamble, but worth a try if you feel your position is solid. My goal is to get the communication over toward the phone as opposed to written and force them to mention money first.

[.biz]

thank you guys for your advice. it's a pretty good letter. the attorney sent a postal mail, so i don't have any of their e-mail, i have to response by either phone or fax or letter.

[INFORG]

I would phone them as a first option and see how much they know about domain names and go from there. Quite possible they will make an offer.

A few tips I would recommend:

1. Never give any merit to their claims or agree with any legal points they try to make. Just say "I am not going to argue the finer legal points with you, but I know my position is correct"

2. If they want to make an offer, ask for a written offer - then counter-offer based upon that. "I don't have much interest in selling, but will consider a written offer from your client"

3. Be careful when they use terms like "return" or "give back" and make sure you point out that nothing was taken to be "returned" or "given back". The name was available for anyone to register at the time you registered it.

I try not to give away too many points that I would make at a UDRP proceeding like who else uses the name, lack of a registered mark, etc. etc. Just come off as though you know you already have the upper hand.

Good Luck!

[.biz]

2gajgops, you're pretty good at this. i guessed you have been involved in many of these cases. Thanks a lot for your advice. I appreciated it.

[jberryhill]

"cc: a big name domain attorney that I may later retain "


That's a bad idea for several reasons. If you are going to respond yourself, then respond yourself. If your communication indicates that you are represented by counsel, then the attorney on the other side must cease communicating with you, and then contact the attorney you name. Attorneys are not allowed to directly communicate with a represented party.

Secondly, let's say that you later retain this attorney. How you now waived confidentiality in your communications with that attorney? Why make it an issue?

I've seen letters where the principal of a company writes to me and cc's some attorney. The immediate impression I get is, "If this guy has an attorney, then why am I not hearing from the attorney". What I do is pick up the phone, call the named attorney, and 99% of the time the attorney has no idea what on earth I am talking about, and is usually ticked off that someone used his/her name without even contacting him/her.

[INFORG]

Good point John. I will defer to your expertise on the cc: issue.