Question about a Semi-Generic Name

[MrGoodhost]

I have a question, which is borderline and in no way any form of bad faith on my behalf.

In June 2008, I purchased an expired domain name from an auction because it was DMOZ listed, expired, used to have an existing site and had a small PR. Thus, I assumed I could return the domain to a live site. Especially since prior sites/domains that are DMOZ listed are coveted. I had no idea there was a TM for a similar name. I find out today from a C&D that it is a TM and the attorney wants the name. The name I purchased from a TDAM auction is plural, compared to the one I was just informed of that contains the TM.

Per Alexa when I got the name, the prior site was online since 2006. I have had the domain since 6/2008, but the whois says 2006 since it that is the original registration date of the domain.

The TM holder for the nonplural version sells products in the same niche. But my products are different from theirs. In fact, I sell maternity pillows and baby feeding products, they sell maternity body supports that support womens hips and bellys. The name in question could virtually be used for either market.

I just got this C&D today, should I just respond and state my case as I have here. I really don't want to give up this name just because I got a C&D. They are stating I am infringing on the name and using same products, but they are not the same products. Yes they are in the same market, but not the same products.

Any advice or referenced posts or sites that faced similar actions? You can PM me if you'd like - Thank you in advance.

 

[fab]

You are best off e-mailing him.

 

[Yusio]

I'd probably just ignore it and say i never got it.. lol

 

[MrGoodhost]

thats' not the right thing to do - i contacted him and i thank him very much for looking at my response to the other party - i've been going back and forth on my own with the other party that sent me a tm infringment letter

communication is better than nothing

 

[Theo]

How did you end up responding?

 

[stewie]

update if you can please ...

:yo:

 

[MrGoodhost]

Update 9/22 - my last response to them was on 9/18, the originally C&D from them was on 8/21.

Response Summary 8/27:
Sent a response stating that I have no interest in infringing on their clients trademark.
Disclosed the products I sell on the website, stating they do not compete with their clients.
Included information about the old website that was on the domain and it had been in operation since May 2006 by another party, person or business.
Included a link to the old website that was in operation (alexa, wayback history on archive.org) before I purchased this domain name from an expired domain auction.
Included the previous owner information since they let it expire or the business went defunct.
Let them know how much I paid for it at
Showed them another domain with their keywords in it that was owned by someone else, which was a new reg with a live website.
Told them I didn't believe they had a claim.

Their Response 9/10:
They still disagree that the use of their name in my domain name is a violation of a trademark.
Think I am using their TM Marks.
They want me to cease and desist from using it.
Gave me a deadline.

My 2nd Response 9/18:
I still disagree, I am not competing with their client (TM Holder) and selling other products.
Just because I have an "S" in the domain doesn't make it a trademark violation.
The domain was a live website for 2 years before it went defunct, I purchased an asset of that other company, the domain from an auction.
Advised I do not use any marks of that other or their company, logo, images or content.
Advised they can purchase the domain for my costs if they want it.

Notes:
--What I notice in the archive.org - is that there is comments on the expired domain name I purchased, the domain used to be a reseller or dealer of the TM Holder's products. So clearly they must of let another company use that domain to resell their products.