What happens after a "Cease and Desist" letter if we don't "comply" ?

[angel69]

I just got yet another threat by yet another loser trying to take away yet another name of mine. He claims I'm guilty of TM infringement when the "term" (it's a hyphenated number) is not even TMd anywhere in any of the searches I made, it's an N-NN.com, a numerical is generic by definition and it's only parked. I did find those 3 digits w/o a hyphen (a real number) w/live TMs, numbers CAN be TMd also...? WTF...? We had a target price around $750 and he's offering just $300 cuz that's what he'll have to pay an IP lawyer to prepare an infamous "Cease and Desist" letter for me, he told me. I've never had one of those. It looks like he won't go up on the price and assuming I don't accept and they send us that C & D letter, what happens after if I don't "cease" utilizing the domain even if it's just parked, and if I don't "desist" from my intention to continue owning/parking it ?

Is a UDRP and WIPO litigation next ? (and is there a standard "UDRP form" anywhere ? WIPO and ICANN don't feature one on either site, or is that just what the process is called...?) their threat is serious, I can tell, either I sell for $300 or I get a C & D letter and then the rest ensues if I don't give in. Is there another phase following a C & D but before WIPO litigation ? (Another thread I had started about WIPO's costs of "mediation" was for yet another domain w/a different guy, that one is going to a UDRP and WIPO litigation will follow, I'll update that one) These new guys also threatened me to maybe start an ACPA and/or an FTDA, now I gotta fukcin read about 2 more processes I'm not familiar with !?
Fukcccccc !.... not even true numericals get away from stupid TM dispute claims ! :?:

 

[Dave Zan]

Actually, a C&D letter doesn't even have to be sent. Just that many people do that to hopefully resolve the issue without having to file a formal dispute action.

At this point, it's up to the complaining party. They can file a UDRP via WIPO or whoever provider, or even file a lawsuit in their jurisdiction (hint).

And sure, numbers can become trademarks also. Surely you heard of the convenience store chain 7-11? (unless that's the one?)

 

[Cartoonz]

..keep in mind, to even file a UDRP WIPO proceeding, just the fees are $1500
So, if he doesn't want to spend more than $300, doubful he'll spend that.

You *might* ask him to respond with the Registered Trademark number for his claim too.... that might make him go away. At least that way you'll have an idea of how strong a claim he might have, if any.

 

[StianStian is verified member.]

Since it's a N-NN.com and you're looking to get $750 for it from an enduser, I assume you haven't paid much for the domain to begin with?

I'd tell him to pay the $750 you're asking or go ahead and hire a lawyer. I'm sure what will happen is that he will either pay the $750 or never bother you again.

 

[Dave Zan]

I'd tell him to pay the $750 you're asking or go ahead and hire a lawyer.

Heh, a drawback to that is the complaining party can figuratively say, "All right, you told me to hire a lawyer. So I did, and am now suing you." Something like that.

I won't be surprised if it's indeed 7-11 after the OP's post gave some clues, namely the N-NN thing. Goes to show that some domainers have quite a broad definition of "generic", which often comes out (unsurprisingly) wrong.

 

[grcorp]

Not 7-11. That belongs to the convenience store chain.

Another example of a trademarked number is 32665 for Facebook (FBOOK on a T9 keypad).

If he was really "entitled" to the name, why would he offer you $300 for it? To me, that makes no sense.

Filing a UDRP case at WIPO is not at all cheap. He will easily spend $x,xxx in doing so, and that is still no guarantee of victory.

Tell him it's $750, and that's it.

 

[angel69]

Thanks for the comments, guys. Dave Zan : NO, it is NOT 7-11.com (7-Eleven, Inc) I'm sort of a noob for legal disputes since I just got my 1st threat in May 2012 but not dumb enough to mess w/such obvious TMs, we stay away from them and that's why the 3 different TM infringement accusations we're having simultaneously right now are so maddening, this N-NN.com we liked cuz it had a nice sequence, it didn't mean anything to us then and still does not. And it is not something like 4-09.com (409 the cleaner spray) or 5-29.com (college savings plan) or even 9-11.com (September 11) We thought a straight numeric (6, 17, 398, 6346, 46552, etc) could NOT be TMd since they're real generics, and if these aren't true generics, can somebody tell me what a generic looks like ? (other than a dictionary word) Now I know some true numbers have actually been successfully TMd, my N-NN.com has never been TMd but the real corresponding number, ie my N-NN.com WITHOUT a hyphen, has a few live TMs. And no, Dave Zan, the TS, ie myself, does not have such a "broad definition of generic which often comes out (unsurprisindly) wrong", I'm not a domain pro like you may be but I'm not that big a noob either. (RJ (Ron James) had made you a mod on NamePros before Bodis bought it, right ? so I imagine you do know some stuff)

Let's say the disputed domain is 9-87.com, 987.com has a few live TMs but not 9-87.com or 98-7.com. This jerk (Complainant) says I cannot even have the info on what term of his it is I'm infringing on, that it is too soon for that, so I still don't know if it's a similar domain or just a trade name for his biz or website (non-TM), or what, he says I will only see that info when he takes me before WIPO if I don't sell. I'll keep searchng different combinations to see if it's maybe in word form or he owns one of the NNN.com TMs corresponding to my N-NN.com (for example, if the domain is 9-87.com then NineEighty-Seven.com, Nine-EightySeven.com, NineEightySeven.com, Nine-Eighty-Seven.com as well as 987.com and 98-7.com are all possibilities) I googled him but he has a very common name, he keeps it all a secret, even if you do a search of domain owners w/his name it won't yield any results, and why should I go thru this ? the other 2 that came at me since last May are real assholes too but both said upfront what the term I was "guilty of infringing" was. I also wanted to compare my date of acquisition for "9-87.com" in auction years ago with his date of obtaining this mysterious TM, it may also be he just has a project he wants to call that, or a business, website, trade name, etc. There does not even have to be a TM involved to trigger a domain dispute fight from what I've read.

The domain we own isn't worth much in today's market and since we need the $ we might just take his $300 rather than risk losing the domain at WIPO (he is going there for sure if I don't sell, that is certain, he didn't "intimidate me" in the strict sense but he has experience in UDRP, WIPO, ICANN, etc so I have to do the math, and he may be rich...) I'll be ecstatic if he spens $300 for the C & D, $1,500 or MORE for the WIPO process, AND several thousands for his domain lawyers' hefty fees, seeing that would be priceless. The downside is I won't see a penny if I lose, although some guys have won UDRPs w/o a lawyer. Some Respondents have won WITHOUT even putting up a defense in fact, let alone w/o a lawyer. I don't like the domain all that much, we didn't pay much for it years ago and it's not earning any $ in parking. I'm tryin to bring him up to $500, he's stubborn and despises domainers, he thinks if you don't develop or "add value w/ a domain" you should let them expire for someone else to use, we've been fighting thru email cuz he just doesn't understand why domainers trade/invest, he says we're ALL squatters just like there are patent trolls.

I'm glad he contacted us thru the WHOIS and did not send a C & D letter at once, I would've been more irritated w/a C&D out of the blue. Or worse, he could've just begun the UDRP process against me at once. His reasoning is he was ready to pay his IP lawyer $300 for a C&D, that I'd be intimidated and give him the name. So he decided to offer me $300 and save the C&D hassle. I could sell for $300 if he won't go for $500, that's where we are right now, I feel he won't go up which means if he can't get it for $300 he's filing a UDRP. He is surprisingly familiar w/procedures of C&D, UDRP and WIPO litigation, so he didn't just google all this yesterday, maybe he "buys" names he wants at $1,500 thru WIPO whether there's a willing seller or not. Some people hate domainers so much that would rather spend several thousands fighting for a name (which they may not get if they lose) rather than paying a fraction of all that money to the owner. I'm seeing the exact same thing in another case where they're filing a UDRP and I can't afford a lawyer so I'll defend myself or just let it go. That's why I'll probably give in on this case of the N-NN.com, that way I can deal w/all the problems the other one is causing (the 3rd one is dormant for now) I need the $ anyway, and even $300 ain't that bad since not many offers had been received, $500 would be super. Better swallow hard and take $300-$500 and maybe he's all a big bluff than getting $0 and watch him take the domain from me thanks to some WIPO panelist.

I won't be surprised if it's indeed 7-11 after the OP's post gave some clues, namely the N-NN thing. Goes to show that some domainers have quite a broad definition of "generic", which often comes out (unsurprisingly) wrong.

 

[Cartoonz]

...This jerk (Complainant) says I cannot even have the info on what term of his it is I'm infringing on, that it is too soon for that, so I still don't know if it's a similar domain or just a trade name for his biz or website (non-TM), or what, he says I will only see that info when he takes me before WIPO if I don't sell.

He's bluffing. If he truly has a TM on that term, he would show you that TM. Think about it... he won't spend $750 but will spend multiples of that to *try* to take it from you? Nonsense, he's full of hot air.

Seriously, tell him to either show you the Registered Trademark or go ahead and file a UDRP. If he had a TM (which he does not) it makes absolutely no sense for him to not reveal that now.

...The domain we own isn't worth much in today's market and since we need the $ we might just take his $300 rather than risk losing the domain at WIPO (he is going there for sure if I don't sell, that is certain, he didn't "intimidate me" in the strict sense but he has experience in UDRP, WIPO, ICANN, etc so I have to do the math, and he may be rich...)

That's exactly what he wants you to think. He IS intimidating you, admit it or not, he is... otherwise you'd have already told him to get stuffed.

I'm glad he contacted us thru the WHOIS and did not send a C & D letter at once, I would've been more irritated w/a C&D out of the blue. Or worse, he could've just begun the UDRP process against me at once. His reasoning is he was ready to pay his IP lawyer $300 for a C&D, that I'd be intimidated and give him the name. So he decided to offer me $300 and save the C&D hassle. I could sell for $300 if he won't go for $500, that's where we are right now, I feel he won't go up which means if he can't get it for $300 he's filing a UDRP. He is surprisingly familiar w/procedures of C&D, UDRP and WIPO litigation, so he didn't just google all this yesterday, maybe he "buys" names he wants at $1,500 thru WIPO whether there's a willing seller or not. Some people hate domainers so much that would rather spend several thousands fighting for a name (which they may not get if they lose) rather than paying a fraction of all that money to the owner. I'm seeing the exact same thing in another case where they're filing a UDRP and I can't afford a lawyer so I'll defend myself or just let it go. That's why I'll probably give in on this case of the N-NN.com, that way I can deal w/all the problems the other one is causing (the 3rd one is dormant for now) I need the $ anyway, and even $300 ain't that bad since not many offers had been received, $500 would be super. Better swallow hard and take $300-$500 and maybe he's all a big bluff than getting $0 and watch him take the domain from me thanks to some WIPO panelist.

Seriously? You're just going to roll over for this? Don't be a fool. Oh, if you do roll over... send me a list of your best domains so I can bully you out of them with absolutely no valid claim.

Stop. A C&D has no power whatsoever other than try to intimidate you. The twisted load of bull cr*p he is trying to feed you is ridiculous. If he has a valid TM, he can show it to you. The BS about only showing it in UDRP is complete nonsense, there is no advantage to that. He's completely full of cr*p. DO NOT stand for it.

Tell him he can either:
1. Show you the Registered Trademark
2. Pay you $1,000.00 for the domain (because he's been such a prick and taken up your valuable time)
3. Bugger off

He won't file the UDRP because he HAS NO VALID CLAIM. How is it that you can't see this?

 

[angel69]

Yeah, Catoonz, you're so right, and you know so much about domain case law, before last May we had only heard of this, since we go out of our way to stay away from TMs we didn't think this could happen to us so soon, then we got 3 in a row in < 90 days, the only one I don't have a thread on is actually the worst one (another domain, not this N-NN.com), where the UDRP was already sent to me by the Complainant (and Go Daddy got a copy and fukcing charged me $70 to "receive" it, can you believe those jerks ?? I'm fighting that)....that one is by far the worst in that I can't pay a lawyer for the WIPO stage, as you see I wouldn't defend myself properly to say the least, but we might give it a shot, a no show by the accused can be viewed as admission of guilt, but some domainers have won w/o even putting a defense, I had started a thread on that one on DNF but a domainer told me to edit it since WIPO may have readers here and I said things that could hurt me, I don't think I did, but since DNF doesn't let you edit posts in legal forums the mod had to delete it, but I'd like to share w/all of you what they're doing to me, they came at me w/all their guns for a name not worth much, dunno if starting a thread --even if I don't mention the domain or the Complainant's name-- would be recommended in an ongoing WIPO process (Amazingly I have not heard from WIPO directly on that other one, it was the Complainant who sent me the huge motion they've begun and they sent a copy to Go Daddy, I'm scratching my head as to when I could start sending WIPO my defense arguments if I go for it, this is weird)


Anyway, as for this moron and this N-NN.com case (this thread), I've been lettin him have it, it's not like he calls me a fukcing squatter and I let him, here's some of what he said:


....since you seem to have taken it personally, tell me how you are not squatting? In a real property world, a squatter employs abandoned or unused property whereas cos. like yours that buy up domains are actually keeping them from being used, or placing an artificial tariff on using the domain. This tariff hurts development and the market in the same way that a squatter must be cleared from an abandoned building when the rightful owners decided to put the property to work - I really do see the similarities.......you need to be compensated for it, but honestly, what value are you adding? .... It is not personal for me at all. Remember, you are the one that is all offended about my squatting characterization of the practice. You are the one acting like you want pick a grade school fight. Get over it......

......I am wholly confident this domain can be obtained due to its trademark infringement and your use of the domain - I would much rather pay $1-2K to pursue UDRP arbitration or to even start an ACPA and FTDA claim than to pay a squatter the $1k. My $300 offer is what it would cost to have an attorney send a C&D letter..... I do have considerable contempt for the practice that is shared with other market killers such as patent trolls. It is this contempt that had motivated me to acquire domains without paying exorbitant prices. My cost benefit analysis looks at a picture larger than just this transaction. The more companies stand up against domain squatters, patent trolls, and the like, the more the market will be corrected. I know what an injunction agaist a north american company for alleged trademark infringement will cost. I know what a UDRP process will cost.....The situation along with some of your comments do give me enough to pursue a claim in good faith. The strength of that claim would depend on what is found in discovery. The trademark is for a product that is presented in numerical form. A C&D letter is a formality that we should do to show the court we attempted to resolve the matter prior to civil action. I am sure the emails we have exchanged would suffice. We will provide details of the trademark when asked to do so through discovery requests. Until then it is not available for your review due do the confidential nature of the project.....

......you can serve me with your civil action at XXXXXXXXXX, there is both law for malicious prosecution and for making false representations to the court. There is no authority to rely upon to seek damages of "emotional distress, loss of work, etc".....My offer of $300 is still available.....


And Cartoonz, I'm not all that gullible, or a pushover, at least not in the real world, I was just trying to be practical (pragmatic), take what I can get and let this one go, I would not have done that for a domain I value highly or just do not want to sell, the fact that he doesn't disclose the "thing" of his I'm "violating" was fishy, I know, I've kept asking him many times, but later I just assumed perhaps he and his lawyer think they have a decent case because I just have it parked, that works against domainers big time at WIPO and they could actually take my domain if WIPO sides w/them, if in fact there was a trade name/biz/website or some "name" they use they don't wanna mention....w/those 3 digits. As disgusting as this sounds we need the money given all we've lost and no one had made good offers for this N-NN.com lately, he might say yes to the $500, he hasn't answered my last email, my instinct was to stay put and call his bluff....and do I want to ask him for $1,000, tell him to show me the TM and fukc off if he doesn't agree ? YES, all I was tryin to do was cover all bases if I could and maybe get him to pay me some $ for the domain


It may have been that getting the other real UDRP (for another domain) at exactly the same time made me think "get $300-500 for the numerical and be done w/it" the jerk here had also mentioned a plain lawsuit at some point as an alternative to the UDRP) he's in a different state, bluffing ? maybe, the thing is if he surprises us and there's something there and he wins whatever motion I'll be left with zero since we can't afford an IP lawyer, I know you think it's all phony stuff what he's saying. As far as spending thousands trying to win the name when he could give me a small fraction of that, what I thought was he may be rich and can afford to get a name paying more money as long as the domain holder gets nothing, he may have been scammed by someone in domaining or wronged in some way


Thanks again, Cartoonz, I really value your opinion, I've read some of your posts in legal threads and you sure know a lot of stuff, I just hope you didn't learn it by appearing before WIPO too often LMFAO

 

[grcorp]

Tell him he can have it for $1,000.

Best that can happen: He pays it

Worst that can happen: He'll actually go ahead with the UDRP against you, which he will most likely lose

From the way it sounds, this guy will literally go to virtually any length to NOT pay you.

That said, you should keep it in mind that he may never pay you, and as a result, the $300 may be the best offer you ever get.

For me, I'm too proud to just hand it over on his terms. He wrote to you. Tell him to "come and get it".

Feel free to use this breakdown with the guy...

Logically speaking, there are 1,000 possible N-NN combinations out there (0-00 through 9-99).

Much in the same way that in a gated community, there might be 1,000 homes.

Within that gated community, there will be the lousy homes, right next to the waste processing facility. And there will be the nice homes, facing south for lots of sunlight, close to the gate so that getting out is not at all difficult, and across the way from the community's parkette where you can go and walk your dog.

All the homes have the same structure, and the same square footage; identical properties to one another, just like all N-NN domains have identical properties to one another.

However, the qualitative differences, such as the location, will make all the difference as to the value of the homes.

In the same way, a chain of digits such as 0-23 does not have much meaning to it, whereas a chain of digits such as 9-11 has significant meaning to it.

This qualitative difference will make 9-11.com worth much more than 0-23.com, just as the premium location of a home in a gated community will make it worth more than a home in a lousy location.

So, if you wanted to have the nice home in the gated community, and I wanted $50,000 more for it than I did for the lousy home, what's wrong with wanting a premium for a thing which is premium?

You've got plenty of alternatives at a lesser price. You'll just be watching garbage trucks drive in and out of the waste facility, and have a higher electric bill because you don't get as much sunlight as the nicer home does.

You get what you pay for. And in an open market such as domain names, everybody has a fair chance at them. Just like real estate is an open market, everybody has a fair chance at it.

Remember, I don't have to sell this domain name. I'm perfectly happy to hold onto it. If you're willing to pay what I think it's worth, then let's make a deal at $1,000. Otherwise, don't email me again.

 

[Theo]

Send the a note that you're willing to educate them on what constitutes domain investing and why it's a perfectly legitimate business - for $300 an hour. Watch the little worm squirm.

 

[Cartoonz]

.......since you seem to have taken it personally, tell me how you are not squatting? In a real property world, a squatter employs abandoned or unused property whereas cos. like yours that buy up domains are actually keeping them from being used, or placing an artificial tariff on using the domain. This tariff hurts development and the market in the same way that a squatter must be cleared from an abandoned building when the rightful owners decided to put the property to work - I really do see the similarities.......you need to be compensated for it, but honestly, what value are you adding?

Tell the guy to f*ck off.

In his warped perception of his *real world* scenario above, he is omitting an important factor. You did not just move onto someone else's property, you BOUGHT it. You have the right to use - or not use - that property however you see fit. While he may feel he has a superior use in mind, the key fact is that it is not his property to begin with.

Seriously, I would definitely tell this guy to #$%$# himself and to stop communicating with him altogether. He's having fun preaching his pious, distorted, directives at you. The more you engage him, the more garbage he will spew.

As I told you before, there is absolutely no reason he would not produce a valid Registered TM if he had anything like that.... Obviously, he does not and he is trying to bully you.

Do not engage in any further communications with the guy. At all. Nothing.

If it were me, my price just went up to $3000.00
Every further unwanted BS attack from him would double my ask.

 

[Cartoonz]

Oh, and for the record...
While I've certainly had to respond to more than a few idiots like this guy, and also to a handful of C&D's... I've not lost a domain nor been the recipient of a UDRP filing.
...maybe nobody wants my domains> lol

 

[blacknight]

Ask them for details of the trademark. If they have a legitimate claim they'll be able to produce the details. If they don't then it will be quite hard for them to continue claiming infringement without specifying

 

[Cartoonz]

ask them for details of the trademark. If they have a legitimate claim they'll be able to produce the details. If they don't then it will be quite hard for them to continue claiming infringement without specifying

exactly.

 

[dvdrip]

Any serious TM holder would have send the registration number in a C&D and not haggle through emails.
TMs cost a lot of money. Even C&Ds cost more than $300 in serious IP lawyers.
I wouldn't accept the $300 on principle alone. I don't respond well to threats, especially empty ones.
A C&D is really nothing. Threatening you with this is kinda of funny.

 

[Theo]

So he emailed you a long drivel, I would ignore him and let him put the money where his mouth is. If you want some more accurate assessment, PM me the domain in question.

 

[Bill F.]

I agree with Cartoonz above. To start with, I have never heard of a trademark holder who refuses to divulge exactly what the trademark is they're protecting. That would be bizarre and pointless - unless, of course, they don't have the trademark at all. And he doesn't reveal his name??

2nd, this guy is a joker. No professional is going to waste this much time in free banter. And a professional would state his name up front.

3rd, he's a cheap bastard, and probably short on funds. He goes through all this to save a few hundred bucks?

4th, he's a jackass. On principle, I might now refuse to sell the name even at the original $750. Even if he has to go the UDRP route, and even if he wins, I'd rather lose the $300 and see him pay many multiples of that for being a jerk.

Guys like this love having someone, anyone, take them seriously. Disengage, and tell him you'll expose him for what he is if he takes it another step. If, on the off chance, he actually files a UDRP, he will have to reveal his name. Then you can have fun.

 

[Cartoonz]

S...PM me the domain in question.

cc me that PM too
Now I'm pissed off at this guy and I'm not even a party... lol

See, the thing is... @sshats like this guy need to get stopped. It would seem that perhaps he's pulled this kind of cr*p before and been successful. To allow him to succeed here is a disservice to all domain holders everywhere, as it gives him more chutzpah to do it again to someone else. This guy is even lower than the pond scum TM Trolls - at least they have a TM on something!

 

[dvdrip]

Biggest mistake domainers do is get into a back and forth conversation with people that email them threats of litigation or UDRP procedures. If they have nothing to fear of course.
One simple email explaining that your registration and use was not done in bad faith is enough.

angel69 make sure your PPC use is not displaying any ads that have to do with the TM holder. In this case it's possible that he doesn't have a TM but nevertheless.
Here you don't know what the TM is so your best bet is to display a generic directory or link portal.