I Received An Odd Trademark Infringement Notice Today.

[discobull]

I own a 4 letter domain. This morning, I received a notice from a company whose brand starts with a 'z' followed by the 4 letters of my .com. They claim that because my domain is incorporated in their name, that I am infringing on their trademark. Meanwhile, my domain is the name of a town in europe in addition to being a common word in a foreign language. I've done a trademark search and find no record of any trademark on my version of the name. Any suggestions about how to handle this? Do I respond? Ignore the request? Thanks in advance.

 

[Gerry]

Honestly, if all you say and claim is correct about their name and yours (and based solely on your description), I can not see any infringement at all. Whether a live site or a parked domains, just make sure NOTHING ever appears that can be remotely related to their name and product or service.

I have gotten similar statements in the past advising me of the potential confusion (ebay was notorious for this...ie, ChesapeakeBay.com...) claiming that their TM was part of my domain and I could not use it. In a heated exchange and battle with their legal team, I was able to prove that certain names and geo locations existed prior to ebay coming about and that ebay could not claim that any name or word containing the letters in the sequence e-b-a-y was NOT their property and NOT subjected to their infringement claim.

Many times an issue like this can be resolved but may take time and much effort.

 

[discobull]

Honestly, if all you say and claim is correct about their name and yours (and based solely on your description), I can not see any infringement at all. Whether a live site or a parked domains, just make sure NOTHING ever appears that can be remotely related to their name and product or service.

I have gotten similar statements in the past advising me of the potential confusion (ebay was notorious for this...ie, ChesapeakeBay.com...) claiming that their TM was part of my domain and I could not use it. In a heated exchange and battle with their legal team, I was able to prove that certain names and geo locations existed prior to ebay coming about and that ebay could not claim that any name or word containing the letters in the sequence e-b-a-y was NOT their property and NOT subjected to their infringement claim.

Many times an issue like this can be resolved but may take time and much effort.

Thanks very much for the input. I can't imagine that they have a claim. The domain points to a contact page and there's nothing even remotely relevant to their brand there. I politely rejected their request to turn over the domain and I guess we'll have to see what happens next. Thanks again.

 

[chipmeade]

I have gotten similar statements in the past advising me of the potential confusion (ebay was notorious for this...ie, ChesapeakeBay.com...) claiming that their TM was part of my domain and I could not use it. In a heated exchange and battle with their legal team, I was able to prove that certain names and geo locations existed prior to ebay coming about and that ebay could not claim that any name or word containing the letters in the sequence e-b-a-y was NOT their property and NOT subjected to their infringement claim..[/QUOTE

I ran into something similar with BlondeBeers (.) com and DeBeers. I simply responded that they were mistaken, I would vigorously defend my property and cease with any more threatening correspondence. Haven't heard from them since...4+ years ago.

 

[Johnn]

Take it off from parking as you have no control what type of links the parking company will put i the parking page.
If it's not developed yet then just put my picture on the site instead. I promise I will not sue you!

 

[Theo]

I love Canadians, they are so polite. And I mean that in a positive way.

But when you receive a C&D you need to whip out the hockey stick and whip hard. A response to a C&D letter must be done by a lawyer, containing strong language that shows you mean business.

 

[RUUR]

I would say in the majority of cases any simple response from the owner or attorney does the trick.

In fact the attorneys I know usually draw up a C&D letter free of charge as a favor to their client and used mostly as a scare tactic.

The last thing an attorney wants to do is take up their time, resources and worst of all their clients money fighting for a domain in court.

I love Canadians, they are so polite. And I mean that in a positive way.

But when you receive a C&D you need to whip out the hockey stick and whip hard. A response to a C&D letter must be done by a lawyer, containing strong language that shows you mean business.

 

[angel69]

It's the most absurd thing for any serious company (let alone an eBay or a DeBeers) to even attempt to pick a fight over ChesapeakeBay.com which is a geo area known to all, or BlondeBeers.com which is a perfectly acceptable product name. Those companies should fear this type of exposure they'll get later, they look both ignorant and arrogant. They're true bullies, jeez....does eBay think it owns the internet ? and DeBeers ? please..... Both examples defy logic

I agree the page for the OP's domain should not be parked since it may attract an ad that has nothing to do with the demandant's term but could get misconstrued

And Johnn.... after several years we finally see what ya look like in real life ! ... I'm sure you still like Johnny Depp tho...

 

[katherine]

It's because a lot of C&Ds are automated. DMCA takedown notices too. Yes, there are casualties sometimes.

 

[Jack Gordon]

Theo and Ruur are right... you should not communicate with opposing counsel. If you are in business, you should have a business attorney anyway. If you don't, find one. Even if you hardly ever need their services, this is one time that you do.

Let them send the reply stating your position, on their letterhead. It will be taken more seriously, and will greatly reduce the chances that you commit one of the many blunders laypeople routinely commit when trying to be lawyers.

 

[discobull]

Thanks to everyone for the replies. Somehow, I wasn't receiving email notifications about new posts otherwise I would have acknowledged them sooner.

I get the impression that Katherine is right about the email being automated. Anyhow, I responded to them and haven't heard back. Let's hope it stays that way, but if I get a response I'll post an update.

Thanks again to all for the advice.

 

[TheLegendaryJP]

It will be taken more seriously, and will greatly reduce the chances that you commit one of the many blunders laypeople routinely commit when trying to be lawyers.

Like telling the truth.

 

[angel69]

What about all places in the English-speaking world that have legal entities named TheBay ? It could be a restaurant, store, some Hong Kong hotel, escort service in the SF Bay Area LMFAO ?.... and many of them could have TheBay.com or in any gTLD or in their ccTLD. Is the eBay automated C&D system go to full gear since they'll read it as TheBay.com ? Up until now I thought a JD had to approve sending C&D's on behalf of a company, or at least a human, not an automated system. Or will C&D's keep being sent on behalf of (because of possible violation to) the DMCA ?

Then there'll be complaints to some guy owning HollandeBeers.com, Hollande being a French last name and the French word for Holland. Or AndeBeers.com because someone liked naming his microbrewery "Ande". This is insane, and it never ends. The possibilities with proper names and domaining intersecting are endless since there are so many languages. I once read the worst possible combination is that of big business and government (for ex the Obama administration is not pro-business LOL, quoting the biggest understatement there ever was) In this case DeBeers and eBay are shameful examples of corporations (DeBeers being HQ'd in Luxembourg) taking advantage of legislations enacted by governments

I had a similar situation to discobull's, almost identical in fact. Except mine was the reverse, we owned a four-letter acronym (semi-pronounceable but did not make any sense and we had never heard of that so-called "business" half way around the world, and they could hardly speak any English) and the initials of that overseas boiler room were three of our letters. I answered with the plain truth, how I had acquired it, it had absolutely no conflict, why I still owned it and why we hadn't developed which is the main argument against domainers. They did offer to buy it for like $10 just to insult me, when I refused they took us to WIPO. The name was not worth nearly as much as what we would've spent on lawyers or hours wasted researching domain law to even make an argument. WIPO gave them my domain, they plainly stole it with lies, but some honest domainers/defendants have won without even presenting a case to NAF or WIPO, all they needed was not luck but an intellectually honest panelist. At least they had to spend $1,500 for it, and I hope their mouthpiece passing for lawyer wasn't doing it for free. What kills domainers is that nowadays (especially in the US) anyone can sue you for anything, literally. And unless you have time and intellect to spend fighting it yourself, you're likely to spend a lot on legal fees when you've done nothing wrong, and for a domain that may be worth much less than those legal costs

 

[manyagem]

I had a tussle once with a NYC record company whose name is the same as a river in Colombia. I actually liked their music and arranged to sell their labelled CDs in the UK. Since they hadn't registered the co.uk version of their name, I used it for what I thought would be mutual benefit. They got all stroppy so I said OK I'll stop selling your CDs but I'll use the site to blog about Colombia, and that's what I did. Nothing they could do about it. I got fed up after a few years and allowed the name to drop. They failed to pick it up so I thought Sod It, they obviously don't need it anyway so out of pique I've now re-registered it for sale. The river is a tributary of the Amazon. One day, perhaps that mighty river/company may want an online feed from this side of the Atlantic? That's what can happen when you choose a name that happens to be an existing geo. Tough.

 

[Gerry]

Unless someone is really paranoid or does not have any business experience, rushing to a lawyer for every letter, note, communication that has a negative tone is like rushing to police station to turn myself in every time I speed.

I do neither.

I put on my domainers cap, put on my professional business person's cap (one size fits all) and communicate with the sender my side and my perspective. I am not going to lay down and faint when ebay tells me that I can not use and I must delete the domain name ChesapeakeBaySeafood because it contains ebay. That is nothing more than "strong arm" tactics and does not require the services of a lawyer to compose a response. Plus, does anyone honestly think that this name is stealing traffic from ebay? Their legal team has software running that alerts them to new regs or existing regs with the letter e b a y. They are not right every time. They are just doing their job.

 

[Jack Gordon]

The OP did not describe a situation that is particularly comparable to ChesapeakeBaySeafood/ebay. We don't know the specifics, but with only 4 letters, it is probably not going to be that obvious.

If someone has never been through this before, it is best to go through an attorney. Any attempt to steer them away from that is irresponsible.

Once some relevant experience has been gained (often through living with the consequences of bad decisions and hardship), then the equation may change, and there is more room for individual judgment calls.

Before that wisdom is earned, going it alone against corporate attorneys is a terrible idea. Frankly, I find it somewhat shocking that you would encourage it.

 

[Gerry]

The OP did not describe a situation that is particularly comparable to ChesapeakeBaySeafood/ebay. We don't know the specifics, but with only 4 letters, it is probably not going to be that obvious.

If someone has never been through this before, it is best to go through an attorney. Any attempt to steer them away from that is irresponsible.

Once some relevant experience has been gained (often through living with the consequences of bad decisions and hardship), then the equation may change, and there is more room for individual judgment calls.

Before that wisdom is earned, going it alone against corporate attorneys is a terrible idea. Frankly, I find it somewhat shocking that you would encourage it.

The likelihood of finding an attorney with the wherewithall to properly defend a domain name is remote...except on forums like this.

If I thought for a moment that I needed an attorney, I would get legal advice PRIOR to hiring an attorney.

Now, if you want to rush out to an attorney because you got a letter discouraging usage, then fine.

No, we are not talking about my name. I would not hire an attorney to fight such a fight because a).I am not emotionally attached to the name b).the name hold no monetary value to my portfolio c).traffic is very limited d). all the above.

BTW, for you to assume that I would be comparing my insignificant name to the OP's is, as you put it, irresponsible. Do you think I do not have relevant experience to even make such a claim? In all my years of domaining and doing any professional business dealings, do you think I have not worked diligently with attorney's in legal matters, threatening letters, and the like? Typically, most attorneys (including numerous friends) would tell me to attempt to reach a resolution on my own prior to hiring an attorney. Only once in all my years have I had to hire an attorney to send a letter to a threatening party, one who threatened to put a lien on my property. Yes, of course I won.

I know which battles to fight and I know which battles to seek resources. Having the capacity to know the difference is paramount. Like the saying goes...know when to hold them; know when to fold them.

Experience counts.

 

[manyagem]

I have to agree with Gerry on that one. Common sense can be mighty powerful when it comes to legal issues. But then, I'm a country that isn't (yet) nearly as litigious as the USA. Did you know, it's estimated there are more lawyers in the USA than the rest of the world put together. It doesn't take much brain power to work out that they're all fighting to scratch a living.

 

[Jack Gordon]

Experience does count. You may have enough to be able to handle a situation like this much differently than the OP.

My point was that he does not appear to have that level of experience, and at this stage he would be foolish to go it alone.

 

[angel69]

Jack, it may come down to whether a domainer can afford an IP lawyer to respond to the claimant and registrar the moment he gets a C&D. There are two great lawyers who have subforums on DNF (Muscovitch and Berryhill) I'd love to go to them at the 1st sign of threat. But do average domainers like me have the means to do this ? I'd somehow find the funds if the domain had a high resale value. But domainers are often short of money. Ideally, what you suggested is the right way to do things. But most of us would have to agree with Gerry. Because we just cannot pay for a lawyer at that stage lol. You can, and maybe Gerry can, but others can't. And that's what I've always found frustrating, decent domainers are at the mercy of some big scumbag (individual or company) who knows how to bully people. And if it goes to NAF/WIPO the situation is even more dire. Not to mention that a domainer prevaling at WIPO/NAF does not spell clear victory. IE, he can still get sued in civil court and they can attempt to steal his domain that way. And that's a sad thing.....

Domainers unlucky enough to have one WIPO/NAF challenge are not likely to forget it, ever. But I also had a retard who in the end did not file a UDRP but managed to upend my life for a while. He accused me of violating all digital acts known to men by owning a hyphened numeric domain I could not sell for $5 and would've dropped at the next renewal. He threatened me directly and also managed to turn the registrar against me WITHOUT EVER NAMING THE TERM/MARK OF HIS I WAS SUPPOSEDLY VIOLATING. Hard to believe, and I was not taking him seriously but then I saw how the registrar listened to him and forced me to answer a "C&D" that did not even name the TM I was supposedly infringing on. That registrar makes $20 from the domainer for just receiving anything that might resemble a C&D. Had he gone to UDRP they would've made an additional $70 and frozen my domain for him. I raised hell since the domain in question was never disclosed (the idiot kept saying it was his secret project ?!) but the registrar still took him seriously and made money from me while at it. I should've hired a lawyer just to make him reveal the mystery mark/term since the registrar showed more respect to the scumbag than to me, I'm a really good client. But I did not have the money. Had it gone to UDRP I would've had to decide. As I said, only he wanted my domain, I listed it everywhere for years and I never got any offers for even $10. The funny part is the moron actually offered me a decent amount for it, but out of anger and spite for how he did things and the trouble he caused us, we just could not let him have it