16 year old .com trademark C&D

[bigfishion]

I recently bought an expired, 16 year old, two word .com. Let's call it TwoWords.com. This week I received a C&D letter from a company that has Two-Words.com. TwoWords.com had been used for 15 years to sell exactly the same product as Two-Words.com.

The owner of Two-Words.com has a trademark on the brand "Two Words", but the "Two Words" company is not famous and is only has around 20 brick and mortor stores in the US. The "Two Words" company was started at about the same time as TwoWords.com was registered.

I put an Amazon affiliate site on TwoWords.com to continue and sell the same merchandise as Two-Words.com, but Two-Words.com says that is now a breach of their trademark.

How was it possible for the earlier owner of TwoWords.com to sell the same product for 12 years, but I can't now?

Do I have any rights here based upon the history of the domain?

 

[ftaylor]

I can't follow that post. Can you distinguish between the 2 further by calling them two words a and two words b or by underlining to differentiate.

 

[stock_post]

Looks like they have a valid case.
if you are selling their products and they have a TM not much you can do other then asking them pay your expenses.

they may do that instead of other proceedings.

 

[ftaylor]

I read it again, and I agree, they probably have a valid case. What happened to the owners of TwoWords.com though?

 

[stock_post]

They just need hand the domain to the two-words.com owners.

 

[Fatbat]

Certainly do not just hand over the domain. If you are prepared to defend yourself I would kindly tell them to get stuffed and carry on doing what you've been doing. Let them make the next move.

 

[guile]

I recently bought an expired, 16 year old, two word .com

Did they have a trademark at the time that you bought the domain? I don't think it matters that the previous owner had it for 15 years before letting it expire. All that matters is that you bought it and are using it to make money off of their trademark, let alone the type in traffic that meant to go to the hypenated version of the "two-words".

 

[ohkus]

If they have 20 brick stores they can afford to buy the domain. Hold it and park it no where. Get a lawyer to send a letter back, should cost you about $300. Let them know your serious.

 

[Gerry]

The question here would be,

did the seller of your domain have the same problem(s)?

why did the claimant of the TM not attempt to secure the domian name?

and why on earth you would want to even come close to selling their same or like product (remember the term confusingly similar) to the TM is beyond me.

You seem to be wanting (and getting) close scrutiny and setting your self up to warrant legal action.

 

[Theo]

It all comes down to use of the domain. If you're using it to sell bananas and their mark is for underwear, you can do that. But since you weren't smart enough and decided to profit off their trademark via an Amazon affiliate id, they now have grounds to sue. What you do next depends on whether you're willing to fight the case in court or to negotiate something else. It can be as simple as explaining via an attorney that you did not intend to breach on their mark and that you won't do it again. This way you might be able to avoid a costly litigation and keep the domain, but use it wisely.

 

[Ilze]

If they have 20 brick stores they can afford to buy the domain. Hold it and park it no where. Get a lawyer to send a letter back, should cost you about $300. Let them know your serious.

Best advice ....however, if you have already been accused for parking...
and you are making money...you might as well keep making money until this is resolved. They probably already have a screenshot...

 

[Theo]

A C&D is a motion to indicate that unless you comply, we will proceed to protect our interests. So if you continue, rest assured that they will take the domain and claim damages.

 

[Gerry]

If they have 20 brick stores they can afford to buy the domain.

Quite a bold assumption.

One could also assume that if they can afford to buy it then they can afford to WIPO this whole shebang for about $1500, get the domain name for knocking off their site/products and case closed.

 

[Theo]

Good point, Gerry. The case is a lawyer's dream.

 

[mclovin]

Quite a bold assumption.

One could also assume that if they can afford to buy it then they can afford to WIPO this whole shebang for about $1500, get the domain name for knocking off their site/products and case closed.

Maybe try to sell it to the two-words company for less than $1,500. Make a win-win situation out of a totally screwed one.

 

[Gerry]

Maybe try to sell it to the two-words company for less than $1,500. Make a win-win situation out of a totally screwed one.

Risky.

This would further hammer the gavel that there was ill intent.

Lose-Lose for the domain holder.

Lose what ever he paid and lose the domain.

 

[mclovin]

Risky.

hammer the gavel

Now that you've put it that way... I can almost hear the *smack*

 

[laura90068]

I say negotiate and sell it to them. You bought it before they copywrote it. So actually, you had the name first. It would benefit them to buy it from you. Otherwise it will cost them more in the long run to take you to court. If you bought it after the fact I would say they have a case but since this isn't the problem. You have the rights. It wasn't stolen, and you did nothing wrong.

 

[jberryhilljberryhill is verified member.]

How was it possible for the earlier owner of TwoWords.com to sell the same product for 12 years, but I can't now?

I can think of a lot of ways that can happen.

Do I have any rights here based upon the history of the domain?

Maybe. Maybe not. I can imagine a lot of facts that could make it go one way or the other.

 

[Theo]

John, your last answer made me think of Pythia from the Greek mythology