Got a Cease & Desist Fight em?

[StockDoctor]

Picked up a dropped name two months ago. Got the dreaded letter by certified mail yesterday.

In part they say "We have been operating this web address for sometime as a link to our main site. FYI: the individual who had procurred the name for us inadvertently allowed it to slip back into the system ... however, that does not negate the fact that we own the copyright to ______ (under US law) since we had utilized it state, US and worldwide for over a year. Additionally, we have promoted it as such through our radio show and the Verizon Superpages. Blah - Blah - Blah Continuing --- long letter
I can assure you we can defend our rights (as we have had to in the past on other such issues. FYI - abusing parties in such matters must pay damages as well as return any income they happened to make from such violations). Blah - Blah - Blah continues
Therefore, we offer you $50 for your "out-of-pocket" expenses for the quick and friendly return of our property.

We will forgo any legal action for ten (10) days from your receipt of this OFFICIAL LEGAL NOTICE in order to give you time to respond in the positive."

I checked, no trademark, no prior site listed in the archives. I can show business in my area (finance) related to the term. I just listened to some of the radio show archives for fun.

Any thoughts on how I should respond?
Doc

 

[Duke]

Sounds like BS to me. I don't think I would even respond to this letter. If they do take any follow-up action after your non-response and if the name is worth defending, I would contact a domain name attorney like Ari Goldberger (forum member) and send him all correspondence from the other party for review. He can then advise you what to do.

 

[GeorgeK]

They seem like rank amateurs, for example confusing "copyrights" with "trademarks". I'd ignore the email, and just continue developing the domain until they send something less bogus.

 

[CoolHost.com]

As per usual, I generally agree with Duke! However, I WOULD respond to the C&D letter, at this time ... and most likely, via the route as recommended by Duke.

"Got the dreaded letter by certified mail yesterday."

Since you DID receive an official C&D letter! If you had received some obscure e-mail with the same facts, I'd probably recommend a 'wait-and-see attitude, as well. There COULD very well be some very pertinent info/facts within the contents of this C&D letter, ones that could potentially even help YOUR case. Seek legal assistance at this time ... would be my recommendation.
Good Luck.
PS. I ain't no lawyer.

 

[CoolHost.com]

"I'd ignore the email, and just continue developing the domain until they send something less bogus."

George - Ummm ... this was "certified mail"! Same recommendation? Thanks.

 

[GeorgeK]

Depends on the name, and its value. One could spend the $$$ on lawyers now, but it still seems a bit premature, unless the name is very valuable.

If I was going to write back, I'd say something brief like "Please provide us with the registration number of your claimed trademark, and we'll investigate the matter." If it's not registered, or is in a different field than Stocdoctor's usage, he need not give them the time of day. They said they only used it for a year, so it's not likely to be a very "famous" mark.

 

[DomainPairs]

Difficult to know how they could let it drop accidentally. Most registrars seem to send at least 3 copies of a renewal reminder at regular intervals during the last 3 months.

But then, didn't Microsoft let Hotmail.com drop

 

[CoolHost.com]

"Depends on the name, and its value. One could spend the $$$ on lawyers now, but it still seems a bit premature, unless the name is very valuable."

Fair enough. But, to me, since it WAS in certified mail form (and not simple e-mail form), I would still recommend as I did. "Value", or "perceived value" is irrelevant to me in this case. Just my opinion, of course.
Good Luck.

 

[Duke]

Originally posted by CoolHost
"I'd ignore the email, and just continue developing the domain until they send something less bogus."

George - Ummm ... this was "certified mail"! Same recommendation? Thanks.

Any one can send you something by certified mail. That only proves you got their letter - it doesn't make their claim any more valid or require that you answer it. Their claim looks so bogus I also would not waste any money on attorney's fees at this point. If they do file any sort of action you have plenty of time to bring out the heavy artillery.

I have had occasion to send many certified letters (primarily in disputes with landlords when I had retail stores). They were used primarily just to establish a record of contact and what was said in case I ever did wind up in court with them (in fact on one occasion I did and I won the case requiring the landlord who initiated the action to pay me instead of collecting himself )

 

[Sportacle]

Originally posted by DomainPairs
Difficult to know how they could let it drop accidentally. Most registrars seem to send at least 3 copies of a renewal reminder at regular intervals during the last 3 months.

But then, didn't Microsoft let Hotmail.com drop

No, actually it didn't drop. Just someone saw that an invoice was outstanding and went online and paid it. The media took this story way out of proportion and made it look like someone saved Microsoft from losing the domain. I remember that Microsoft sent the guy a cheque and then he auctioned the Microsoft cheque on EBAY for charity.

 

[Drewbert]

It wasn't hotmail.com, it was passport.com

But they're still idiots.

 

[timechange.com]

Where did you look up the trademark? One can register a tm anywhere around the globe. If it's not in the USPTO web site it does not mean there is no trademark for it. Furthermore, a trademark can be established without the need for a registration of the mark.

PS I am not a lawyer.

 

[namedropper]

I still don't know why people don't mention the actual name when they ask questions like this. PM me with it if you are afraid of mentioning it.

Anyone who sends a C&D letter and screws up by calling it a copyright is just full of bluster. If it's generic and you have a legit right to use it, do so. And I recommend putting something up fast, just so you show you do intend to use it and aren't trying to sell it to them.

And if the simple act of using a domain name for a year meant that you owned all rights to it forever nobody would have to renew any name, so that's total BS too.

I'd just say, "I agree that claims of this nature are serious and will endeavor to make a good faith effort to clear up the situation. In order to do this I will need to have my legal representation examine your claims further. Please send copies of all your written documentation that would support your claims to ownership of this intellectual property. I am told that duplicates of your trademark filings would be most important. You can forward this material to the address listed in the whois for the name at your convenience. Please allow 2 or more weeks for a considered response. "

The blustery types may give it up if they know you won't cave.

And don't offer to sell it to them at any price, they'd just try to twist that.

--
Dan Norder - Savanna.com, FineGold.com, etc.
High profile and niche domain names for sale

 

[consumernet]

x

 

[DrWho]

2003: a trademark can be established without the need for a registration of the mark.

This would make it very difficult/expensive to prevail in a court of law.

 

[StockDoctor]

Originally posted by namedropper
I still don't know why people don't mention the actual name when they ask questions like this. PM me with it if you are afraid of mentioning it.

Thanks for your post namedropper. I am a bit shy to mention names as suggested, because I've had the the unfortunate experience of having a member here (3 letter name) get ticked because I purchased a name that he wanted and wouldn't sell it to him at his price.

He proceeded to locate a company that was applying for a trademark (not approved) of the name, copied my posts and contacted them in hopes they would start a WIPO against me.

He then sent me copies of his correspondence with them, cursed me and wished me luck in court. I thought I was very generous in not posting his name here and merely have put him on my ignore list.

Does that answer your question?

 

[namedropper]

OK, yeah, that answers that.... though you could still PM me with the domain name if you wanted... or the name of this jerk so I can avoid him too.

 

[heatfan]

Originally posted by stocdoctor


Thanks for your post namedropper. I am a bit shy to mention names as suggested, because I've had the the unfortunate experience of having a member here (3 letter name) get ticked because I purchased a name that he wanted and wouldn't sell it to him at his price.

He proceeded to locate a company that was applying for a trademark (not approved) of the name, copied my posts and contacted them in hopes they would start a WIPO against me.

He then sent me copies of his correspondence with them, cursed me and wished me luck in court. I thought I was very generous in not posting his name here and merely have put him on my ignore list.

Does that answer your question?

(what happened to this world ?)

 

[lliang]

I can assure you we can defend our rights (as we have had to in the past on other such issues. FYI - abusing parties in such matters must pay damages as well as return any income they happened to make from such violations).

Does the statement above sounds more like a "threat" than "FYI"? Just wondering...