For Sale Legal challenge - need advice

[dobes399]

I've received a letter from an attorney claiming to represent a company laying claim to a dotca domain I own. Their claim is that it infringes on their trademark. In my opinion the name is generic and commonly found in the dictionary and does not infringe. I've actually never had to deal with this before so would appreciate any advice as to how to respond and whether I should use a lawyer at this point.

P.S. Not sure if this is the right forum to post this in but it is regarding a ca domain.

 

[Namefox]

PM sent

 

[DN BROKER]

send me a pm with the domain name and I will tell you if you are being threatened with a tm or not.

 

[Ilze]

pm me ..

 

[DropWizard.com]

QM you can pm me the details if you like. I've been through a dozen or so claims and won all so I have a pretty good idea what flies and doesn't.


G.

 

[Ilze]

G, ...i meant for Dobes399 to pm me so I can give him advice. At the moment, I am cdrp and c and d free

 

[DropWizard.com]

QM ROFLMAO I'm fighting a cold my brain isn't functioning

That should have been to Dobes399

G.

 

[Namefox]

G, ...i meant for Dobes399 to pm me so I can give him advice. At the moment, I am cdrp and c and d free

Sounds like you need to see a doctor

 

[draggar]

If it is a generic and you are using it in a way other than their TM then you should be clear.

Apple is a good example. To use it to promote the fruit and products related to the fruit (pie, sauce, tarts, etc..) then you're in the clear. Anything else you're in trouble (since Apple Computers has pretty much cornered the market).

Also, if it is a .ca and they do not have at least a presence in Canada then they may not have any rights to the name.

 

[DropWizard.com]

Sounds like you need to see a doctor

A cute nurse would be much more appreciated

 

[Ilze]

G, for you maybe...not for for me!!! I like my medical assistance to be of the Male gender!!! And yes, Domaining is for sure a disease for me

 

[dobes399]

DropWizard - Those of us that are not sick would like that kind of medical attention as well. Let's us know you make out getting OHIP (or you local medical plan) to cover it. :blush:

 

[Vanster]

I think draggar is right, but it's hard to know without seeing the name. A couple of ideas:

Check the Canadian Trade-Mark database first (duh http://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/bscSrch.do?lang=eng . If the term or phrase is not listed or the mark has been expunged or abandoned, then you should be clear.

You must not be seen to be "passing off", ie. you are using the domain to trick visitors into thinking that you are the owner of the mark, and selling their product or a competing one.

If you registered the domain before the mark was issued, then they can't say that you registered it in bad faith.

If you do find 1 or more (always look for all the marks as many companies have multiple trade-marks of the same term, but issued at different times and often covering new wares or services), then be sure to check what wares and/or services the mark is good for. They can't have a blanket trade-mark that covers all wares and services. The registrant must declare which wares (products) and/or services the mark covers.

Don't try to sell the domain to the mark owner as that could open an can of CDRP worms :shy: If they approach you, that is a different story (I believe).

Register the domain/name as your own trade-mark within your own services and/or wares category, if you have the dough and it makes sense

Don't let a lawyer intimidate you, they want you to think that you are guilty, when you most likely aren't!

 

[dobes399]

A touchy situation. Some great advice - thanks everyone! Enjoy what's left of the year.