Help... C & D letter

[daniel]

All

I own the domain name Overtrue.com and just received this C&D letter. I have no issue giving this name up, just curious on the law and if I HAVE to do it? Any feedback appreciated.
---------------------------------------------------------------------We serve as litigation counsel to Overture Services, Inc. (hereinafter "Overture"). Overture is one of the world leaders in the Internet search field and is the owner of all trademark rights, and other proprietary rights, in the mark OVERTURE (the "OVERTURE Trademark").

Based on the foregoing rights, it is a violation of federal and state law to advertise, utilize, offer for sale, and/or engage in services utilizing the OVERTURE Trademark without the express written permission of Overture. Notwithstanding Overture's rights, it has come to our attention that you have registered the domain name OVERTRUE.COM, and you are exploiting the OVERTURE Trademark by providing competitive search engine and advertising services to consumers who arrive at the web site located at the domain name.

Overture contends that your registration and use of the OVERTRUE.COM domain name is in violation of federal and state law. Specifically, your exploitation of the OVERTURE Trademark constitutes trademark infringement and unfair competition in that users of your services and consumers who become aware of the OVERTRUE.COM domain name may erroneously believe that your services and/or online activities are licensed, sponsored, or authorized by Overture. In addition, your use of the OVERTRUE.COM domain name dilutes the distinctiveness of the OVERTURE Trademark by trading upon the goodwill and reputation which the public associates with the OVERTURE Trademark.

Your actions violate the Anticybersquatting Consumer Protection Act, which provides civil sanctions against those who engage in the bad faith registration or use of infringing domain names. The statute provides for recovery of statutory damages of no less than $1,000.00 and up to $100,000.00 per infringing domain name. 15 U.S.C. § 1125(d).

In addition to your potential liability under the Anticybersquatting statute, numerous courts have restrained individuals from the use of infringing and diluting domain names and ordered the deletion and/or transfer of the domain names. See e.g., Jews for Jesus v. Brodsky, 993 F. Supp. 282, 293 (E.D.N.J), aff'd, 159 F.3d 1351 (3d Cir. 1998); Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998); Playboy Enter., Inc. v. Calvin Designer Label, 985 F. Supp. 1221, 1219 (N.D. Cal. 1997); Teletech Customer Care Management (California), Inc. v. Teletech Communications, Inc., 977 F. Supp. 1407, 1415 (C.D. Cal. 1997); Toys "R" Us, Inc. v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836, 1840 (N.D. Cal. 1996); Fujisankei Communications, Int'l v. Claxton, 1998 U.S. Dist. LEXIS 1790 * 2 (S.D.N.Y. 1998); Toys "R" US, Inc. v. Abir, 45 U.S.P.Q.2d (BNA) 1944, 1949 (S.D.N.Y. 1997); Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d (BNA) 1430, 1441 (S.D.N.Y. 1997), aff'd, 1998 U.S. App. LEXIS 22179 (2d Cir.), cert. denied, 119 S. Ct. 90, (1998); Green Prods. Co. v. Independence Corn By-Prods. Co., 992 F.Supp.1070, 1080 (N.D. Iowa 1997); Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q.2d (BNA) 1479, 1480 (W.D. Wash 1996).

Through receipt of this letter, you have actual notice that your actions constitute cybersquatting, trademark dilution, trademark infringement, and unfair competition. Based on your trademark infringement and unfair competition, Overture is entitled to treble damages and attorneys' fees under 15 U.S.C. § 1117. See Cardservice Int'l, Inc. v. McGee, 1997 U.S. Dist. LEXIS 552 (E.D. Vir. January 16, 1997). Based on your cybersquatting, Overture is also entitled to $100,000.00 for your infringing conduct under 15 U.S.C. § 1125(d).

We hereby demand that you agree to the following: (1) cease registering domain names which infringe the above-described rights of Overture and (2) transfer the OVERTRUE.COM domain name to Overture.

We expect that you will agree to our demands. However, should you fail to comply with this letter by the close of business on February 11, 2003, we will be forced to recommend that Overture immediately take further legal action, which may include seeking the maximum allowable damages available under the Anticybersquatting Consumer Protection Act.

This letter is not a complete statement of Overture's rights in connection with this matter, and nothing contained herein constitutes an express or implied waiver of any

rights, remedies, or defenses of Overture in connection with this matter, all of which are expressly reserved.

Very truly yours,

/s/

Dennis L. Wilson
Keats McFarland & Wilson LLP

DLW:vkh
cc: Overture Services, Inc.

 

[draqon]

if you don't give them the name, they will most likely file a WIPO UDRP suit against you. If that happens, you would need to write up a competent response if you have any hope of keeping the name. You would probably lose as your domain is being used for something so similar to overture. I recommend handing over the name, its not worth fighting for even if you did have a slim chance of winning.

 

[pljones]

Well, I looked at your site. Of course you don't HAVE to do anything, but because you are offering similar services to Overture and the similarity of the names, Overture could easily bring a case (either under the UDRP or in federal court) against your registration of Overtrue.com.

I would consider contacting Mr. Wilson to resolve your ownership of the name. This isn't a close case.

 

[KatieBeez]

Ugh, that C&D is SO long. Talk about wordy and repetitive.

 

[RON2]

You could have quietly made a small fortune directing traffic to Overture.com with their affiliate program, and had a legitimate claim to use the domain.

However, your competing search engine has sealed your fate. You will lose the domain one way or another now. It's up to you whether to just hand it over now, or let it go to UDRP where you WILL lose for certain (but it might be good learning experience). Best of luck either way.

 

[DomainGoon]

Originally posted by -RJ-
You could have quietly made a small fortune directing traffic to Overture.com with their affiliate program, and had a legitimate claim to use the domain.

I doubt Overture would agree. Why would they want to pay every month for the traffic when they can just WIPO and get the name for themselves?

 

[RON2]

I doubt Overture would agree. Why would they want to pay every month for the traffic when they can just WIPO and get the
name for themselves?

1) Affiliate use of a domain is not automatically determined to be 'bad faith' use of a name. It would be more difficult to prove that the affiliate was using the name in bad faith and not putting it to a legitimate use.

2) They have less reason to care about someone using an infringing domain to drive visitors directly to their sites than someone using it to confuse visitors into visiting a competetor.

3) Less noticeable -- Visitors typing in Overtrue.com into their browser by mistake and ending up at Overture.com would think nothing of it and have no reason to complain to Overture.

4) Cost -- UDRP is $1500 + lawyer expenses and maybe not worth the trouble to them.

You are right, it depends on the company. I'm not familiar with Overture's policies in particular, but I make decent commissions from typo domains of companies that have no problems with it.

 

[namedropper]

I agree with the posters above. Running it as a competing search engine threw away the slim chance you could have held onto it.

And, honestly, you had to have purposefully registered it because it sounded like Overture and not because it had inherent value on its own, right? So, do the right thing and ask them what steps you need to take to turn it over.

If you do nothing they may UDRP it, in which case you'd almost certainly lose with no harm to you other than the name being gone and a strike against you for futrure disputes. On the other hand, you are in the U.S., so they could take it to court, and then you'd be in a world of hurt financially. So don't hope to be spared from the storm, take steps to comply with their wishes now before they lay down the smack on you.

 

[daniel]

Thanks for all the replies. I am working with them now to turn over the name. I think I have made more from my search feed affililiate program then I would have by sending the traffic directly to overture, hard to say.. I am not going to fight this, they have a very valid case against me. Google has helped, we have been very lucky at getting most of our domains in top ranking positions with them

Thanks again

 

[dtobias]

Now, if you had taken the trouble to set up a site making plausible use of your name, like one devoted to things that are overly true (whatever that might mean... maybe it would be devoted to cliched truisms or something?), then you might have stood a chance.

 

[HOWARD]

You'd better make sure that you get a release from them when you turn it over. If not, you could still be sued under the federal ACPA and have a judgment against you of up to $100.000.