Trademark Infringement!?

[linkreach]

I got this e-mail from the administrator of Proxify.com:

To Whom It May Concern:

I am president of UpsideOut, Inc. D.B.A. Proxify. Proxify operates an
anonymous proxy service at "http://proxify.com/"; and other addresses.
The "Proxify" name is our trademark and we have been doing business
under the Proxify name since 2003-04-14. Proxify has developed
extensive public recognition of its name as well as having acquired
substantial goodwill which is represented by the Proxify trademark.
As the owner of the Proxify trademark, Proxify has an obligation to
police the market and prevent unauthorized use of its trademarks.
Otherwise, it runs the risk of losing its rights to its trademarks.
Proxify has retained a law firm to actively pursure anyone who
misuses its valuable trademark rights.

We have recently become aware that you have registered the domain
name "proxyfire.net". This registration misappropriates the Proxify
trademark and represents a significant infringement of Proxify's
valuable trademark rights and diminishes Proxify's capacity to
identify and distinguish it's goods and services on the Internet. In
addition to pursuing whatever rights it may have under law, Proxify
demands that by the close of business on Tuesday, August 8, 2006 you
(1)transfer your registration of the domain name "proxyfire.net" to
Proxify and (2)cease and desist from all use of the Proxify mark or
any other confusingly similar marks. In consideration of your timely
compliance with the above, Proxify will waive any claim of damages it
may have against you for the above infringement.

1. Change all of contacts listed in whois for the domain to the
following:
Name: Proxify Administrator
Company: UpsideOut, Inc. D.B.A. Proxify
Address1: 1333A N. Ave. STE 315
Address2: New Rochelle, NY 10804
Phone: 1-877-PROXIFY
Email: webmaster@proxify.com


2. Change the nameservers for the domain to the following:
FRAK.UPSIDEOUT.COM
BLAST.UPSIDEOUT.COM


Finally, please be advised that this letter is not intended to be a
complete statement of the facts or legal issues regarding this
matter, nor as a waiver of any of Proxify's rights or remedies,
whether at law or at equity, all of which are expressly reserved.

Your swift and full cooperation would enable us to resolve this
matter quickly and on an amicable basis. Please contact me as soon as
possible, and no later than August 8, 2006, so that we may facilitate
a prompt resolution of this matter.

Signed,
Justin Schlecter, 2006-08-04
Proxify.com Administrator
1-877-PROXIFY

Is this a serious matter? I don't even have proxyfire.net developed at all.

[Tia Wood]

I don't see how it infringes on their trademark at all. It's similar, but not confusing. I'd investigate this further and consult with a lawyer.

[linkreach]

I don't have the money for a lawyer, but I paid for this domain as well. I replied to him asking how it infringes his trademark.

This is just freaking me out. I don't see how someone can try and bully you into giving them your domain that you paid for, when the domain does not have their company name in it (which is unique), and the domain is two dictionary words (and neither of these dictionary words are even in the trademarked name!).

I really don't know what to do here. I don't want to fold like a lawn chair because this guy sends me an e-mail saying I am infringing on his trademark...

[Dave Zan]

Unfortunately this is one reality current and eventual domain registrants must
be aware of.

If you really want to keep that name but can't afford an attorney, give them
a ring and hear their side. See if a little "meeting of the minds" won't hurt.

Hope for the best, but expect the worst.

[Leading Names]

Some of the bullyboy tactics that some companies use really disgusts me. There's no way any normal person could consider proxyfire.net *confusingly similar to proxify.com.

I would just ignore that email and you'll probably never hear from him again

He/they couldn't even afford to hire a proper lawyer to send you an official C&D.

"Proxify has retained a law firm to actively pursure anyone who
misuses its valuable trademark rights."

I suspect that's pure BS.

- Rob

*Assuming site design was different to theirs.

[DNQuest.com]

Some of the bullyboy tactics that some companies use really disgusts me. There's no way any normal person could consider proxyfire.net *confusingly similar to proxify.com.

I would just ignore that email and you'll probably never hear from him again

He/they couldn't even afford to hire a proper lawyer to send you an official C&D.

"Proxify has retained a law firm to actively pursure anyone who
misuses its valuable trademark rights."

I suspect that's pure BS.

- Rob

*Assuming site design was different to theirs.

I agree this could be overreaching and a bullying tactic, but the statement about the lawyer mystifies me. You do not need a lawyer to send a C+D, and if you ask me, this is well written and I suspect it is a form letter drafted by a lawyer which the company reuses.

Secondly, email is a form of communication and has been accept in court as such (we are in the modern era where email is acceptable). And yes, emails can be tracked.

As stated, the OP already responded, but should have waited until after he posted to do so. I believe proxify is over reaching and in no way would I confuse the 2. The only similarity is "prox" and in no way does proxify have rights to that name. This is one where I think you would prevail depending on how far you want to fight this. Then again, there may be other factors involved that we are not aware of.

One thing I would do in the future, if you place an under construction page, you should give a short statement of what your plans are for the site.

You may be able to get hep from of the the respectable attorneys here and it may not be as expense as you might think. I think one legal bark will back them down.

[Onward]

There is no doubt this is a bully...who wants your lunch money.

I would hire an attorney for an hour or two (about $150-$300/hr) to write a response. This will most likely back this company off.

I also like the suggestion above about an 'under construction' page with what you intend for the site.

Do you know who owns proxyfire.com? What are they doing with the domain? If the aformentioned company owns and uses the .com...you may be in for dissapointment.

[Leading Names]

I agree this could be overreaching and a bullying tactic, but the statement about the lawyer mystifies me. You do not need a lawyer to send a C+D, and if you ask me, this is well written and I suspect it is a form letter drafted by a lawyer which the company reuses.

Secondly, email is a form of communication and has been accept in court as such (we are in the modern era where email is acceptable). And yes, emails can be tracked.

I know - I never said emails can't be used as evidence, or that you need a lawyer to send a C&D.

My comments were written in the context that he claims to have an attorney on retainer, I just don't buy that – he wouldn't be sending the C&D himself if that were the case. The fact that he sent the C&D himself suggests to me that he has limited financial resources, and it was a cost saving measure on his part.

{Removed - Incorrect information}

- Rob

[DNQuest.com]

So there is more to the story... if that is the case, then it could be an attempted reverse highjacking. As I said, it does seem to be over reaching.

[jberryhill]

My comments were written in the context that he claims to have an attorney on retainer, I just don't buy that – he wouldn't be sending the C&D himself if that were the case. The fact the he sent the C&D himself suggests to me that he has limited financial resources, and it was a cost saving measure on his part.

While it can be dangerous to generalize, because its the odd situations that will hang you, I do get a chuckle out of the c&d letters from individuals which refer vaguely to having an attorney. I have the same reaction.... "Does your attorney know how to write?"

[jdk]

While it can be dangerous to generalize, because its the odd situations that will hang you, I do get a chuckle out of the c&d letters from individuals which refer vaguely to having an attorney. I have the same reaction.... "Does your attorney know how to write?"

[linkreach]

Thank you for all of the responses. I have gotten a reply to an e-mail I sent to Mr. Justin at Proxify.com.

Hello. Thank you for acknowledging receipt of our notice to you. As
specified in our previous email, the "proxyfire.net" domain is
confusingly similar to the Proxify mark itself and to other domains
under which Proxify conducts business such as:

proxifyr.com
proxifier.net
proxyfive.com

As the owner of the Proxify trademark, Proxify has an obligation to
police the market and prevent unauthorized use of its trademarks.
Otherwise, it runs the risk of losing its rights to its trademarks.

Finally, please be advised that this letter is not intended to be a
complete statement of the facts or legal issues regarding this
matter, nor as a waiver of any of Proxify's rights or remedies,
whether at law or at equity, all of which are expressly reserved.

Your swift and full cooperation would enable us to resolve this
matter quickly and on an amicable basis.

Sincerely,

Justin Schlecter
Proxify.com Administrator

Looks like he is giving more reasons to his actions. Looks like two of the domains he mentioned were registered after I registered proxyfire.net.

I am not sure what my next course of action will be. Not sure I can afford $150/hour for a domain I paid $9 for. Though again I dont want to just hand it over to him. Is there lawyers that will just do letters pretty quick and not for a ton of money?

[gariben]

anyways.. do the same thing to him.

draft Justin a C&D letter and inform his Datacenter about his illegal activiites.

[dwrunyon]

poof.

[Ian]

In his respond he even sounds chicken like. How dare he threatens you while he actually knows that it is his name that infringes on yours. If I were you I would just ignore him save he choses to press ahead with charges that he will anyway lose. Otherwise ask him what he wants--if he is willing give you a few grands why not hand over the name and keep your profits.
good luck

[March2005]

He seems like a nice guy
http://www.schlecter.com/
who just got some bad advice somewhere about how to write a letter. I say forgive his tactless communication skills, sell him the name for $10 or for what you reasonably think you could have sold it for, and move on.

[denny007]

BTW once I subscribed to this proxy and it is horrible programmed proxy. Best is to install own poxyproxy.com

[DNQuest.com]

For clarification, there can't be infringement of a name unless you can prove you are afforded TM protection. Right now, proxyfire.net doesn't have that. But what he has is what us becoming a clear case of reverse-hijacking. I would write back stating your position of non-infringing, and then I would further that by stating that the domains proxyfive.com and proxifyr.com wre registered after you registered proxyfire.net and in cases such as this, there is no proof of bad faith registration since the names were not in exsistance at your time of registration. I would close by re-iterating your non-infringement claims and then happen to mention that the actions being presented are reverse hi-jacking attemps to claim a domain which he has no right.

[linkreach]

Thank you for your replies. I replied to Justin last night about how two of the three domains he mentioned were registered after mine. The day is coming tomorrow (Tuesday). I don't think I will be transferring the domain over to him.

I will keep everyone updated if I hear anything from him.

[pam]

Instead of assuming it will cost $150 an hour for an attorney to write a letter, why not contact a couple of the domain attorneys on this forum and ask them to quote you a price to write a professional letter in response to the C&D?