CigarAficionado.ORG - Trademark Violations - I'm picking a fight with a heavy weight

[Stormy Seas]

Hey Guys,

Let me say first that I might end up paying for this one here.... but I think its a problem I want. LOL. I spend alot of time online looking for situations exactly like this ... and I know I may get squashed like a bug but damn is this an interesting situation.

I own CIGARAFICIONADO.ORG.

I registered this domain name because I was speaking with a buddy in the Dominican Republic that sold Cigars.
I was recently looking for different liquors associated with the word Aficionado and luckily CigarAficionadRG was available.
I snapped it up.

Once I bought it... my curiosity made me type in the keyword into Google and it came up with the website ranking #1 for the keyword cigar aficionado is www.CigarAficionado.com

Now immediately I realized that the word Cigar Aficionado is a general term ... or a dictionary word and as far as my research has shown ... you can't trademark a general dictionary term. A cigar aficionado is a person with a fondness for cigars.

So I immediately recognized this as a vulnerability for this Magazine and I proceeded to start marketing the domain to Cigar Companies so they could rank their website right under the .com version of this domain name. And if I'm correct that is a vulnerability because they did not purchase all versions of their domain name. Further Cigar AFicionado is a Cigar magazine and any company that actually sells cigars instead of just talking about them is not in any way a trademark violation.

Last week I received exactly what I expected .... a letter telling me to cease and desist and they even tried to tell me to turn over the domain.
I laughed because I responded with saying that I'd show up to court without a lawyer. I feel i'm in the right here but would not of posted if I wasn't a little frightened of litigation but I know in my bones I'm right. They left themselves open for this by basing their company name on a generalized term and then not purchasing all relevant domain names. I simply just registered an available domain based on a keyword. So here's my stance ... even if they have TM over a general term ... which I doubt ... I still will make them take it all the way because I think I do have a good argument. I don't think I'd even sell that domain for even a million bux. Its almost worth more to me to just get into the cigar business and use that domain to sell cigars myself.

I welcome your opinions on this matter. I do not think they can take my domain. But boy are they pissed about this... I can almost feel it. So I know they are coming.

 

[Shane]

Did you contact them trying to sell it? It seems like there must be more to this story..

 

[Stormy Seas]

Yes I did contact them on Linkedin

 

[Cartoonz]

That was stupid. They don't have "a" trademark on "Cigar Aficionado"... they have FOUR of them, all dating back to 1997.
Had you NOT contacted them and tried to sell it, you *might* have been able to use the name for something. But since you have, you're screwed.
best case scenario: they offer you something (anything at all, really) for the name and you get out of it with a valuable lesson.
know this right out of the gate, if they file a UDRP, you'll lose. No question about it.
..and if they take you to court? Oh boy, let me know where I can sell the popcorn, 'cause you'll get eviscerated.

Make up all the justifications/excuses/etc. you like, the above is reality. Sorry.

 

[Shane]

Yes I did contact them on Linkedin

As Cartoonz said, that was a very poor decision.

 

[Stormy Seas]

I love how you are so quick to call someone STUPID Cartoonz. You guys so easily slam someone. Cartoonz... you clearly do not know what you are talking about. You are not a lawyer and never have been involved with a case like this. I wanted advise ... not getting told I'm stupid by people that have never been to court.

1. I contacted them so to get this exact result smart guys. So far this is going right along with what I want
2. You can not Trademark a general term.... They call this domain bullying and you can't just claim a word because named a business after it.
3. My gut tells me that you've never been to court. Going to court is no big deal. Losing a court decision is also no big deal. So getting eviscerated is just losing the case. Which I wouldn't' because its a general term. They do not own the copyright on a word just because they've named their business after a generalized term.

I was looking for advise and a conversation. But to just tell someone they are stupid without even backing it up .... is even more STUPID

I believe it was rather smart for me to pick up that domain name and even smarter to message them. Again you can not TradeMark a genera term. YOu can not Cybersquat if its a generic term. Don't you think they'd of gotten a clue if I ranked the site.

GEEZ READ THIS LINK TO GET A CLUE: https://www.techdirt.com/articles/20100805/18101410519.shtml

 

[Shane]

The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), is an American law enacted in 1999 and that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name.

You demonstrated bad faith by trying to sell the trademark owner the domain.

 

[Shane]

The following factors will be considered in determining whether a domain name has been registered in bad faith. The first four would count against a determination of bad faith while the remainder would weigh in favor of a bad faith determination.

1. If registrant has any trademark or other intellectual property rights in the name.
   
2. If this is the legal or nickname of the registrant.
   
3. The registrant's prior use of the domain name in connection with the good faith offering of goods and services.
   1. According to the legislative history the defendant will have the burden of introducing evidence of lawful use. Note that while the UDRP provides a defense if the domain name registrant has made demonstrable preparations to use the domain name in a bona fide offering of goods or services, the legislation only provides a defense if there is prior use - not simply preparation to use.
      
4. Lawful noncommercial or fair use of the mark in a web site under the domain name.
   1. According to the legislative history fair use includes comparative advertising, comment, criticism, or parody - even where done for profit. However, simply establishing a web site with a fair use, if the actual intent is to sell, will not allow a cybersquatter to avoid a bad faith determination.
      
5. Intent to divert to a site that could harm the trademark owner's goodwill - either for commercial gain or with intent to tarnish by creating likelihood of confusion as to source, sponsorship or affiliation, or endorsement of the site.
   
6. Offer to sell the domain name without having used, or having an intent to use, it in the bona fide offering of goods or services, or a prior pattern of such conduct.
   1. Language in the legislative history specifically indicates that this section is not supposed to apply to a party who registers a name with the bona fide intent to launch a new product or company but then abandons that plan and sells the name to a trademark holder.
      
7. Intentional provision of misleading contact information in the domain name registration application or the history of such conduct.
   
8. Warehousing of multiple domain names known to be identical or confusingly similar to distinctive marks or dilutive of famous marks, without regard to the goods or services of the parties.
   1. According to the legislative history, cybersquatters have been able to avoid liability by not being the one to initiate or offer to sell. Now, sitting on such marks is sufficient evidence of bad faith and an offer to sell is not required.
      
9. The extent to which a mark is distinctive or famous.
   1. Under the legislative history, the more distinctive or famous a mark is, the more likely the Trademark owner will deserve relief.

Check out number 6.

 

[chipmeade]

The good news is that you seem to be taking it all in stride with an eye towards rebellion. Here are few things you are facing: You are liable for up to $100K in fines if they file an ACPA rather than a UDRP. If convicted even with the minimum fine of $1000, you would have a Class E felony conviction. You could also be barred from using a computer and or internet services to make a living or conducting any sort of business. It sounds as if you don't really understand how TM infractions occur. Infringement is based solely on if there is likely confusion between your property and that of the TM holder and even more so if you are profiting from that confusion. Based on all your actions, you have been reckless and are clearly in violation. You back story on how you came to register the name, regardless of how as weak, flimsy and implausible as it actually is, holds zero bearing on whether a violation has occurred or not. Good luck.

 

[Stormy Seas]

All of this is true but you all are forgetting one thing.....

YOU CAN NOT TRADEMARK A GENERAL TERM. You can register it and try to enforce it but any judge would clearly see that the word cigar aficionado is a description of a person. But you'd have to go to court to enforce it and I'm perfectly willing to go to court.

If you name your business after a generalized term you open yourself up for this. Who cares the reason how I came to this domain and I dont' really care how its interpreted. Everything I've expressed is true. I want them to come after me for this domain. I am picking a fight but what I know is that the term cigar aficionado is simply that a term and if I don't build a cigar magazine then i'm not infringing on their Trademark. They made the mistake of not registering all of their domains. Its a mistake I've taken advantage on a few other occasions. Hoping to get fined soon because yes I am picking a fight but I'd not do it if I so easily lose.
I can build anything but a cigar magazine and that is not TM violation. I can sell cigars. YOu can't buy a cigar on the .com
YOU can not dilute someone's brand by owning a generalized keyword and selling a completely different product. You say see ... selling cigars and talking about them are different products. I want them to know what I'm doing. I want them to try to intimidate me by saying I will get fined $100k.

Its amazing but we are all throwing links and I know none of your have been involved with a case like this. So you let a lawyer send you a letter and you'd back down based on an email ... Get some guts. Its hilarious cause if I lost the domain and even got fined $100k .... I go home and register www.cigaraficionado2.com
and on and on. I'd pay the fine just enough each month to not go to jail ... which is $1.
See if you've never dealt with the actual court system or any system ... much of it is based on threat. How many of you here have ever been sued? It happens and most ppl simply dont' want to go thru the trouble of showing up.... I have no issue with that. Taking the domain and getting fined doesn't frighten me off so easily. I challenge anyone that tries to sue me over the use of a general word. Much of your responses have been based on fear because none of you have experienced having a domain name taken.
I have another company send me a cease and desist letter for using the term artful home on my website. I laughed because I immediately when and registered www.Artfulhome.co and tried to sell it to them. So eventually I will build a site on it and rank it.

Registering a Word Mark is easy and faily inexpensive.... LOL .... enforcing it ... it a whole other thing

 

[Shane]

You started this thread asking for advice but have failed to heed the words of much smarter men.

Your bravado makes me sick and I hope your unethical business practices lead to a felony conviction.

 

[Stormy Seas]

A smarter man would know the law better than just sending link from a webpage that he copied to make a point
A smarter man would advise from a point of experience.
I have not been contacted by any smarter men

Do any of you know anyone that has gotten a felony conviction because they registered a domain name , LOL ? I doubt it.
To think you are smarter because you think you know this law shows even more bravado. You don't know what you are talking about simply because you've never been in this situation.
You guys started off by telling me I'm stupid and talking to me as if what i'm doing is stupid and if you had of responded with a bit more respect... I'd have no issue ... But the fact is ... none that have responded have ever been in this situation. I would think because I'm on this DNForum... I'd run into people that have better expertise then some wannabes that can recite a law verbatim online and think that means someone can just take a domain I registered. Like I said get some Guts.
You don't like my style Beards... So what... I dont' like that fact that you are calling yourself a smarter man and that by no means is even remotely true. If you were a smarter man then you'd at least been through this exact situation ... so you are advising on something you really know nothing about. You'd let someone take something from you just because they sent an email. Yeah you are a smarter guy. More like a yes man.
Even now you still don't realize that you can not trademark a general term. So hate my style all you want .... I'm right on this one and no one can just take it.

Here's a ruling where toyota took a company to court for using the word lexus in their domain name.
Toyota Domain Case Ruling -- Lexus keyword in a domain name

This company didn't even hire a lawyer and won the case. Here is a situation where there is a clear TradeMark and Huge company hired a team of lawyers and the defendant didn't hire anyone... and showed up to court with just themselves and won. Such a precedent would not be ignored .... especially for a generalized term.
I really thought I'd find someone that knew what they were talking about or had been in this situation before. But no ... I got some yahoo named Beards and his pal Cartoonz that responded to my post telling me I'm stupid and hoping for my down fall. Calling my tactics in question over a general keyword. Come on man... I think you need a nap brother. You ain't going to get me to get scared over some gray area of the law. I may lose the domain if it goes to court but why are you mad ? Shouldn't I be the angry one ? I'm sorry that this company named their business after a generalized keyword. I'm sorry that I'm exploiting that vulnerability but that is business. Most likely this is going to work out in my favor. Your responses show me that all of you could be knocked off your point with just a little scare tactic. How many of you know someone that actually got fined $100k or someone that even lost their domain ? Or are you just looking online for stories to support your point like I've done ? Because we can do that all day long but the only difference is if you've gone to court. Advise is wanted from knowledgeable people not yahoos with an just an internet connection cause I've already got that.

Wishing for my down fall is not going to get me to get rid of this domain either but I know the more attention I get on it ... the more they will have to come after me. So Beards ... please hate away. Viral is the word here and I'm an online marketer ... I love the fact that you hate what I'm doing. LOL

I feel your hate and it works best to drive traffic and ultimately sales. Negative attention Beards ... negative attention.

"Strike me down with all of your hatred, and your journey to the Dark Side will be complete!"

 

[Cartoonz]

...I have not been contacted by any smarter men..

You have, you're just too ignorant to realize it. Yes, NOW I'm calling you ignorant.
Before, I just commented that the act of contacting the TM holder & trying to sell the domain to them was a stupid thing to do, which it was.

For starters, go take a look at the actual TM's this company holds for that exact term. They are not only all valid & well aged, they are in multiple categories and...wait for it... they also have a "STANDARD CHARACTER MARK" on that exact term (you know, the one you seem to think they cannot possibly have). Put that in your pipe and smoke it, Einstein.

You came in here and asked for advice.
Just because you may not like the advice you're getting, does not mean we don't know what we're talking about.
There's a reason we're all telling you the same thing, because it is the truth.
For you to make assumptions about what we know, where we've been, how we've learned what we know... that's just asinine, at best.
If you're so damned brilliant and convinced that you know it all already, why bother to even ask in the first place?
As for your assertions that if we were actually "smart" like you, we'd have been in the same situation you've put yourself in... That is absurd.
Ever stop to consider that perhaps we are smart enough to know that when you have a domain that directly conflicts with a TM, we don't go running to the TM holder and try to sell it to them! All of us have had or do have domains that could be seen as infringing on some TM. Unless its really an egregious violation, most of those domains can be used for some other purpose, or even marketed to another niche or industry... but never to the TM holder. That's common sense (and Law) 101.
But no... only a mental giant, such as yourself, would approach the TM holder and offer the domain for sale... yeah, that's brilliant logic... not.

The again, it appears you like living dangerously Roger.
I suppose you've contacted the TM holders about buying BARCLAYSCREDITCARD.ORG & BELLAGIOHOTEL.ORG too?
You own those. So why have you not contacted Barclay's or the Bellagio?

That said, do let us know if you make it into Federal Court. I was serious, I'd like to watch this. Especially now that you've shown us all what a genius you are.

 

[Stormy Seas]

Just because a company gets registered doesn't mean it will hold up in Court. Again Cartoonz you and your cohort don't know what you are talking about . Calling me names and telling me how ignorant I am only shows your ignorance. It seems the only way you can express yourself is with insults. You are not worthy of offering any advice on this subject which is why I'm telling you to F*** Off

All who have responded only got their responses from an web link.... How stupid to weigh in on a conversation and you have no actual practical experience. And again.... the other domains you mentioned ... yes I'm picking a fight and no one has been able to take a single domain from me and I sell so called TM domains quite often and I always contact the companies exactly this way. I've sold so many domains this way. You ppl don't know spit about real deal making.

Please trademark words and letters and think because someone registered it that the Gov will take it. They are just as clueless at this game as you are. No one can just take your domain and I don't care what words you use. You people don't know anyone that has actually had a domain taken so you are all ignorant and blatantly talking out of your ass.
I didn't come here asking for your advice Cartoonz.... you've never dealt with something like this so you are answering because you like to think you are providing useful info but you are ignorant of the law because you need to learn about it from an internet link.
I've been to court on a frivalious lawsuit. Gotten more than 50 cease and desist letter from huge companies like the Bellagio and none have sued ... all have sent letters. You are talking all this smack and you don't know sh** about this.

 

[Stormy Seas]

Please raise your hand if you've been to court !!! .... No takers ?
Please raise your hand if you've had a domain taken legally !!!

Oh you don't have what it takes to offer information that you have no experience using.
I hear alot of ppl online talking about this TM domain thing. I show you a case where a company took a domain holder to court and lost.
Yet you dont' even want to hear that.

NO ONE CAN JUST COME ALONG AND TAKE A DOMAIN YOU REGISTERED.

GETTING A DOMAIN TAKEN IS RARE And REQUIRES MANY COURT PROCEEDINGS TO DO IT. NONE OF YOU EVEN KNOW FROM A NON-NOVICE POINT OF VIEW. YOu are coming from the outside looking in. Just reading crap online and making a opinion. Love it.

You are quick to call someone names Cartoonz and you are the one that is completely ignorant ... Please detail your expertise in legal proceedings.
When was the last time you actually went to court on a domain name proceeding? You are a fool to speak the way you do and you are a fool to call someone ignorant when you need to heed your own advice.

Even if I had expertise on this issue ... I would reply with respect ... I would offer my info but i would offer it respectfully. I don't just shoot my mouth off like an ass and then actually believe i'm offering something anyone would listen too.

ALL THE THINGS YOU'VE SAID ABOUT ME ARE ONLY APPLICABLE TO YOU. I respect ppl I communcate with. I do not call them ignorant , stupid or assinine because I read an internet link and think I know. I at least make space for the fact that I could be incorrect and you are incorrect Cartoonz because there are people that beat this trademark violation claim. So if you didn't read the link about the company that beat Toyota then the actual definition of ignorance is exactly what you are displaying.


To all that is reading this... I'm more than willing to have a conversation on this subject but if you think you can call a person stupid or ignorant or asinine because you think you know then you are exhibiting the exact traits you are claiming.

You ppl hiding behind your computer and saying anything you want without respect will learn quickly with me that I do not Katow and I bite back.
I love the guy that will give you the finger in a car but if you met that same guy in person ... they'd fold like a deck of cards. That's you Cartoonz and Beards

I know Cartoonz and this Beards guy are spinless chumps hiding behind their computers and offering advise on subjects in which they have no expertise in.

Get off my Thread Cartoonz and Beards.

 

[loupe]

Actually you're right, a generic term / word cannot be trademarked AND demand the exclusive right to use it.

Take Apple for example. If a farmer registers a domain with Apple in it or it might even be part of his business name then Apple (the computer giant) won't be able to do much about it. Unless and correct me if i'm wrong the so called farmer starts to sell the same products.

It's an interesting discussion and i hope to see some more constructive input.

 

[Cartoonz]

Let us know how you fare in court.
Again, you have no idea what I know or how I know it.
You might want to do a little research on your own... see what happened to people at the hands of Verizon and Microsoft.
As for your Toyota suit... that has absolutely no similarity to your own situation, the merits of that case are completely different entirely.
Just because you don't understand that, does not make it different.

 

[Stormy Seas]

Thank you Loupe.... i"m not saying that because you agree with me .... I'm saying that you because your response was very respectful.
It doesn't hurt that you agree with me at least a bit if not 100%

Its like one of the most obvious things in the world .... you can not trademark a generic term... you can try but it won't stand up in a court situation.
This is why these lawyers send out such threatening letters. It's their big gun.

They do this to scare the heck out of you in the hopes you'd back down. Also it works most of the time.... but not in this case. Also all the laws in this regard ... 100k fine and I even got a response from a person saying that i could get blocked from using the internet. I laugh becuase these fines would far outside the realm of logic and considering most of these guys don't know anyone that have gotten a domain taken or fined.... they are blowing hot air.

I've been to court before .. I been sued and I've sued other people. Most of these guys responding barely even got a traffic ticket and they are advising me saying I will get fined $100k like I'm going to just shoved my domain away just based on potential fines.

I have many domains that are actually real trademark violations and even then I haven't had one domain taken and Iv'e been selling domains for 3 years now.

This the one thing I know. "YOU CAN NOT TRADEMARK A GENERIC WORD" Cigar Aficionado is a description of a person with a fondness for cigars.... you can not trademark that no matter if you registered it as a Trademark. TESS will take your money and give you a Word Mark all day long. I can get one for all of my sites but if I did its no different than throwing $365 bux to the wind because

Its so easy to send a threatening email. Its so easy to copy a law verbatim. Its not so easy to use your brain to come up with a logical conclusion.

Thanks for the understand Loupe

 

[Shane]

Just so you know, I did forward this thread to the owners of CigarAficionado.com and recommended going the ACPA route.

You've openly admitted to being a cybersquatter.. So good luck in court.

 

[Stormy Seas]

Thank you Beards. You are doing exactly what I hoped someone would do. You are helping me with your ignorance.

If you can't Trademark a Generic Term... You can't Cyber Squat on it either .... Wow thank you Beards.

This is proceeding exactly as I want. Everything you naysayers are expressing is exactly true if you could TradeMark a generic term. But alas... you can't so again ... no rules have been broken for me to let the whole world know I own this domain and if the ppl at Cigar Aficionado is listening.... YOU CAN NOT TRADEMARK A GENERIC TERM. A cigar aficionado is a person with a fondness for cigars. Sorry guys you don't own that word.
I'm certain there is a company out there that tried to trademark the word cheese pizza and may even of gotten the trademark but you can't trademark something that is not only specific to you. I can find a Cigar Aficionado in every town in every city of the world... hence making it a generic term that actually describes a person. A dictionary term can not be trademarked for $365.

I didn't really want your advice ... what I wanted ... Beards has just given me..... ATTENTION.
You don't like me Beards. Both you guys have taken this so personal. I love it. I'm laughing as I type because you've taken a personal stance to be wrong and will you put forth the same amount of energy when I have built on site domain and have it ranked right under the .com ? Or even better ... outrank them completely ?